A company filed for the registration of the mark HEMP FREEZE; on the same day, the domain name HempFreeze.com was registered.
Was that a coincidence, or intentional?
Founders Wellness LLC filed a UDRP alleging that the Respondent was aware of their brand or mark application.
The difference of a few hours between the mark’s application filing and the domain’s registration could indicate that the domain’s registrant and Respondent in this UDRP was aware of the filing, somehow.
The Forum panelist noted that as the USPTO does not share data of fresh registrations this could not be intentional, opting for a “coincidental” case. The Respondent’s lack of a response did not help shed any light on the case either.
Final decision: Deny transfer of the domain name HempFreeze.com to the Complainant.
The domain transfer was denied.
Founders Wellness LLC v. LaTisha Adams
Claim Number: FA2302002032543
PARTIESComplainant is Founders Wellness LLC (“Complainant”), represented by Connor J. Christensen of Tuggle Duggins P.A., North Carolina, USA. Respondent is LaTisha Adams (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hempfreeze.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 20, 2023; Forum received payment on February 20, 2023.
On February 21, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the hempfreeze.com domain name is registered with it and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by its registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hempfreeze.com. Also on February 27, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights in HEMP FREEZE, for which it holds a national registration. Complainant contends that the disputed domain name is identical to its trademark for the purposes of the Policy.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant further alleges that the Respondent registered and used the disputed domain name in bad faith. Respondent’s opportunistic bad faith is said to be evidenced by registration of the disputed domain name on the same day Complainant filed application to register the trademark. Respondent also uses the domain name in bad faith since it resolves to a website with links to goods directly competing with those sold by Complainant under the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant sells products which contain hemp and cannabidiol by reference to the trademark, HEMP FREEZE;
2. Complainant is the current owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 6,182,466 for HEMP FREEZE (“Registration”), assigned to Complainant on January 19, 2021;
3. the Registration was registered on October 27, 2020;
4. the disputed domain name was registered on April 26, 2018;
5. the disputed domain name resolves to a website that displays links to third parties who sell hemp goods in direct competition with Complainant; and
6. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant is the owner of the Registration and, since the USPTO is a national trademark authority, the Panel finds that Complainant has trademark rights in HEMP FREEZE.
The gTLD, “.com”, can be disregarded for the purposes of that comparison (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel finds that the disputed domain name is legally identical to the trademark and accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Without detracting from those findings, the Panel here observes that the disputed domain name was created on April 26, 2018, before both the registration date (October 27, 2020) and the filing date (December 20, 2018) of the Registration. Panelists confronted with this timing issue have in the past considered the implications under the remaining aspects of the Policy and the Panel here endorses and follows that approach, finding on this occasion it convenient to assess the matter under paragraph 4(a)(iii) of the Policy.
Rights or Legitimate Interests
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary.
Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant prove, on the balance of probabilities, both that the disputed domain name was registered in bad faith and used in bad faith. Since, on the face of it, the domain name creation predates the Registration a question arises as to whether Respondent could have registered the domain name in bad faith.
As stated earlier, Complainant’s submission is that bad faith registration is shown by creation of the disputed domain name on the same day the application for the Registration was made.
The Registration certificate issued by the USPTO states that foundation application serial no. 87-895,678 was filed December 20, 2018. Further, that the first use and first use in commerce date is also December 20, 2018. In the absence of other evidence, it therefore seems unlikely that on April 26, 2018, Respondent could have acted in bad faith. However, the Complaint states that the application for Registration was made on April 26, 2018, in contradiction of the USPTO certificate.
The evidence supporting the Complaint includes the “Filing Jacket TSDR” for the Registration which shows a new application as having been filed on April 26, 2018. On November 27, 2018 correspondence on behalf of the applicant was received by the USPTO wherein it was advised that the trademark was first used “as early as May 21, 2018” and first used in commerce “as early as May 31, 2018”. The Panel observes that both dates still postdate the creation date of the domain name.
A USPTO office action dated May 28, 2018, provisionally refused registration of the trademark because “the applied-for mark was not in lawful use in commerce as of the filing date of the application.” In particular, the trademark applicant at the time was advised that “the items or activities to which the proposed mark are applied were unlawful under the federal Controlled Substances Act, as of April 26, 2018, the date on which the application was filed.”
The application for the Registration unsuccessfully sought to traverse the refusal. The USPTO wrote, taking a slightly different position, stating that “[b]ecause the identified goods consist of or include items or activities that were prohibited under the Controlled Substances Act at the time of the use dates, the applicant did not have a valid use dates. Due to the changed circumstances and the potential lawfulness of certain products and activities that meet the definition of the Agricultural Marketing Act of 1946, as amended (AMA), applicant may request to amend the use dates of the current application to be December 20, 2018.”
That amendment was requested with the result that the Registration properly carries a filing date of December 20, 2018. In the result, there is no implication of creation of the domain name in bad faith since the trademark rights postdates the domain name by many months.
None of this is revealed directly by the Complainant. Instead, it states that it:
…is aware that under Section 3.8.1 of the WIPO Jurisprudential Overview 3.0, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” However, the evidence presented in the instant complaint requires a finding that Respondent’s actions fall within an exception of the rule, namely that the domain name was registered in anticipation of Complainant acquiring trademark rights as evidenced by the Respondent buying the disputed domain name the very same day that Complainant submitted their trademark application for HEMP FREEZE. WIPO Jurisprudential Overview 3.0 Section 3.8.2 (“Such scenarios include registration of a domain name: . . . (iv) following the complainant’s filing of a trademark application.”) As it is evident that Respondent attempted to unfairly capitalize on Complainant’s nascent trademark rights, Respondent should be found to have acted in bad faith.
The question before the Panel is whether the domain name was registered in anticipation of Complainant’s nascent trademark rights? The Panel finds, on the evidence as presented, that it was not. The unamended first use dates, assuming them to be correct, postdate creation of the domain name. To the Panel’s best knowledge, new applications to the USPTO are not advertised on the day of filing. Albeit that it may seem an extraordinary coincidence that the domain name was created that same day, the coincidence may be innocent, or the explanation may lay elsewhere, for example, by reason of some press release on the day of filing. However, there is no evidence of that, or of anything else to suggest mischief. In the circumstances and decided on the basis of what is before the Panel, the finding is that paragraph 4(a)(iii) of the Policy has not been established.
DECISION
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief be DENIED.
Accordingly, it is ORDERED that the hempfreeze.com domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 10, 2023
