WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FLRish IP, LLC v. Elegance Seaxdoll, Elegance Sexdoll

Case No. D2019-1691

1. The Parties

The Complainant is FLRish IP, LLC, United States of America (“United States”), represented by Evoke Law, PC, United States.

The Respondent is Elegance Seaxdoll, Elegance Sexdoll, South Africa.

2. The Domain Name and Registrar

The disputed domain name <shopharbzorside.com> is registered with OpenTLD B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2019.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.

The Center appointed George R. F. Souter as the sole panelist in this matter on August 26, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company operating cannabis dispensaries, delivery services, manufacturing, and cultivating pursuant to California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act. The Complainant owns numerous trademark registrations for HARBORSIDE, including United States registration No. 5509269 registered on July 3, 2018, for goods and services in classes 25, 35, 41, and 44, and also owns registrations of its HARBORSIDE trademark in Australia, Canada, the European Union, and Israel. Since August 2016, it has also operated a website “shopharborside.com”, which operates as the homepage for all information relating to the Complainant’s business.

Details of “favorable” coverage of the Complainant’s activities in a variety of media, such as USA Today, NBC News, Reuters, and the New York Times have been supplied to the Panel.

The disputed domain name was registered on May 2, 2019. The Respondent operates a website under the disputed domain name, using the Complainant’s HARBORSIDE trademark, and offering cannabis products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its HARBORSIDE trademark, differing from that trademark by only a single letter, with the insertion of a letter “z” after the letter “b” in HARBORSIDE, and is a victim of the unfair trade practice known as “typosquatting”.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the Complainant’s best knowledge, it is not generally known by the disputed domain name, and that the Complainant has never granted permission to the Respondent to use its HARBORSIDE trademark in connection with registration of a domain name or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering goods and services competing with its own.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established in decisions under the UDRP that generic Top-Level Domains (“gTLD”) (e.g.) “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD “.com” to be irrelevant in the present case.

The Panel is persuaded that the Complainant has sufficient trademark rights in its HARBORSIDE trademark for the purposes of these proceedings.

It has been well-established in prior decisions under the UDRP that a domain name which wholly contains a complainant’s trademark together with an inconsequential addition is to be regarded as confusingly similar to said trademark. In the circumstances of the present case, the Panel finds that the mere addition of a letter “z” to the trademark HARBORSIDE, which is the overwhelmingly dominant portion of the disputed domain name, is inconsequential, and may even lead to confusion through typographical error, typically referred to as “typosquatting”. It is also well established in prior decisions under the Policy, with which the Panel also agrees, that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel regards the added element “shop” as clearly being a descriptive or non-distinctive element, The differences between the Complainant’s HARBORSIDE trademark and the disputed domain name are, in the Panel’s opinion, sufficiently inconsequential as to justify a finding of confusing similarity between the Complainant’s trademark and the disputed domain name, and so finds.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s HARBORSIDE trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant will generally be sufficient for a complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided a respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and a complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the descriptive or non-distinctive element “shop” used in the Respondent’s website operated under the disputed domain name is also used in the Complainant’s “shopharborside.com” website, leading the Panel to believe that the adoption of the disputed domain name was a deliberate attempt to compete in bad faith with the Complainant, are such that the Panel concludes that a finding of registration in bad faith is appropriate, and finds accordingly.

It is well-established in prior decisions under the Policy that the use of a disputed domain name found to be similar to a complainant’s trademark in connection with a website offering similar goods to those traded in by the complainant under its trademark constitutes use of the disputed domain name in bad faith. The Panel agrees with these decisions and, accordingly, finds that the disputed domain name in this case is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <shopharbzorside.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
September 9, 2019