Swisher International, Inc. v. Hempire State Smoke Shop
Claim Number: FA2106001952939
Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is Hempire State Smoke Shop (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hempirestatesmokeshop.com>, registered with Tucows Domains Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2021; the Forum received payment on June 28, 2021.
On June 29, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hempirestatesmokeshop.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 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@hempirestatesmokeshop.com. Also on June 29, 2021, 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.
A timely Response was received and determined to be complete on July 19, 2021.
On July 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On July 26, 2021, Complainant submitted a Supplementary Written Submission.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Swisher International, Inc., is an international cigar company founded in the United States in 1861. Today it is a leader in the tobacco business and also sells a variety of related products such as rolling papers. Complainant has rights in trademark HEMPIRE based on its use in commerce since 2005 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2010. Respondent’s <hempirestatesmokeshop.com> domain name, registered in 2014, is identical or confusingly similar to the mark as it incorporates the HEMPIRE mark in its entirety, adding the generic and/or descriptive terms “state,” “smoke” and “shop,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <hempirestatesmokeshop.com> domain name. Respondent is not commonly known by the disputed domain name, is not affiliated with Complainant, nor is it licensed to use Complainant’s HEMPIRE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, because Respondent intends to divert Complainant’s consumers and tarnish the trademark.
Respondent registered and uses the <hempirestatesmokeshop.com> domain name in bad faith because Respondent uses a confusingly similar domain name to promote, advertise, and sell competing smoking products bearing Complainant’s HEMPIRE mark. Additionally, Respondent acted in bad faith when it failed to comply with a 2018 cease-and-desist demand. Complainant has orally notified Respondent of its rights in the mark, yet Respondent has not ceased using the mark in the disputed domain name. Lastly, Respondent registered the <hempirestatesmokeshop.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the HEMPIRE mark based on the fame of the mark and Respondent’s use of Complainant’s mark on the website to sell competing products for commercial gain.
B. Respondent
Respondent, HempireState Smoke Shop, sells hemp and tobacco products through its shop located in Rochester, New York. Respondent has used the <hempirestatesmokeshop.com> domain name in its business since 2014.
Respondent has rights and legitimate interests in the <hempirestatesmokeshop.com> domain name. Respondent is commonly known by the disputed domain name since it has been doing business under the name “Hempire State Smoke Shop” for many years without any action by Complainant.
On or about March 15, 2017, Respondent received a phone call from a representative for Complainant during which the representative said they had no problem with Respondent using the name. Complainant has failed to demonstrate bad faith since Respondent has been using the disputed domain name for its business for a number of years without any further action by Complainant. Further, the word “hempire” is commonly used in the expanding industry for hemp-derived products in which Complainant and Respondent are involved.
C. Complainant’s Additional Submission
Complainant acknowledges that a phone call took place on or about March 15, 2017 but, during the call, Complainant’s representative never approved of the use of the disputed domain name. Further, Respondent has not identified any specific third-party use of the word “hempire” in the hemp products industry and, in any event, Complainant has been making a diligent effort to stop any such uses through cease and desist letters and UDRP complaints.
Finally, HEMPIRE is the #1 hemp rolling paper brand by volume and sales have increased by 11.9% in the last year. Various website articles have commented on the product’s leadership in the industry.
The Panel declines to make any specific findings in this case as the dispute between the parties presents evidentiary and legal issues that are beyond the scope of the Policy.
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.
Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”) As a result of this narrow remit, the Policy only provides rather limited evidentiary tools. In certain cases Panels may not equipped to make fine judgements on the veracity of conflicting statements and such disputes are better suited to resolution through the courts with their more robust evidentiary rules and procedures (e.g., exchange of documents in discovery, witness depositions, cross-examination, questions addressed to the parties by a judge, etc.)
Complainant has submitted a copy of its 2010 USPTO registration certificate for the HEMPIRE mark claiming cigarette rolling papers and also submitted a copy of its currently-pending 2018 trademark application of the mark in relation to various items of apparel such as shirts, pants, hats, gloves, belts, and other items. It also submits copies of USPTO office actions indicating that its HEMPIRE registration has been cited as an obstacle to subsequently filed applications for the marks HEMPIRE CO., BOSTON HEMPIRE, and HEMPIRE HUT CBD DISPENSARY HO OH H H & Design, for various CBD products, on the grounds that they would cause a likelihood of confusion with Complainant’s mark. Respondent claims that it has operated a brick-and-mortar shop since 2014 selling hemp-derived products under the name HEMPIRE STATE SMOKE SHOP and it submits photographs of its storefront sign and logo displaying that name against a silhouette of the State of New York and ringed with the words “ROCHESTER NEW YORK”. It also submits images of the same logo imprinted on smoking devices, key lanyards, and trivets. It is apparent that the word “Hempire” appears as the first element in Respondent’s <hempirestatesmokeshop.com> domain name. However, the Panel is cognizant of the fact that this is a play on the nickname of New York as the “Empire State”.
Complainant claims that it has acquired a substantial reputation under common law by virtue of its substantially exclusive and continuous use of its well-known mark since at least as early as 2005. In support, it submits current screenshots from its www.hempire.com website showing images of its rolling paper products. While this shows current promotion of the HEMPIRE mark, the Panel cannot confirm, from this evidence, the history of the mark or whether Complainant enjoys exclusive use thereof. In its Supplementary Written Submission, Complainant does provide copies of other pages from its website as well as a number of third-party articles commenting on its company and its HEMPIRE rolling papers. The Panel notes that such supporting evidence could have been provided as part of the original Complaint and so it is reluctant to consider it as part of an additional submission. In any event, these web pages and articles are dated to between 2019 and 2021 and do not speak to the scope or reputation of Complainant’s mark at the time Respondent registered the disputed domain name in 2014.
In its Response, Respondent states that “[t]he word Hempire is used so much in this industry which is growing so fast today as you probably can see.” In its Supplementary Written Submission Complainant provides copies of five additional recent UDRP decisions against other domain names that incorporate the word “hempire”. While one of these involved active participation by a respondent, four of them were decided on the respondents’ default and none of them involve facts that are similar to those in the current case relating to the duration of Respondent’s use and statements regarding use of the mark made by a representative of Complainant’s. Further, as with the other supplemental evidence presented by Complainant, most of these decisions could have been presented with the original Complaint.
The competing statements by the parties create a number of factual disputes such as whether Respondent is commonly known by the name Hempire State Smoke Shop after operating its brick-and-mortar shop for seven years, and the extent to which the term “hempire” is used in the industry and, thus, the scope of Complainant’s rights in its claimed mark. A more well developed evidentiary record may provide both parties with an opportunity to better support their respective claims.
Next, Complainant asserts that Respondent was aware or should have been aware of Complainant’s well-known mark. It specifically claims that Respondent had an “affirmative duty to conduct trademark clearance activities before adopting the subject domain. Indeed, a simple trademark scan of the records of the United States Patent and Trademark Office would have made Complainant’s registration known to Respondent.” The assertion of such a duty may inform a claim of trademark infringement brought in an appropriate court venue.
Further, in its Supplementary Written Submission Complainant claims that “[a]ctual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii).” While actual knowledge may form a solid foundation upon which a case for bad faith may be built, such knowledge, in the abstract, does not create a per se finding of bad faith and even a presumption thereof may be overcome by a respondent based on all of the available facts. Upon consideration of all of the facts and statements in this case, there appears to be significant room for further factual investigation of what Respondent knew or should have known at the time that it registered the disputed domain name.
Complainant also states that Respondent “was officially informed of Complainant’s rights in the HEMPIRE mark. In an oral conversation with Respondent in or around June of 2018, Complainant’s attorney communicated Complainant’s objections to Respondent’s use of the mark Hempire on Respondent’s products, its store name and domain name. While Respondent acknowledged Complainant’s rights in the mark HEMPIRE and stopped using HEMPIRE on its goods, Respondent has failed to fully comply with Complainant’s objections”. However, Respondent states that “[o]n or about March 15, 2017 I received a phone call from … a person representing Hempire rolling papers telling us that they own the name HEMPIRE and we are using the name without contacting them and stated that they had no problem with us using the name as we did and even joked that we sell their Hempire rolling papers so of course it’s ok.” The Panel notes that, in its Supplementary Written Submission Complainant does acknowledge that a phone call “took place on or about March 15, 2017” but no indication is given as to why this is different from the June 2018 date mentioned in the Complaint. Respondent goes on to say that “it was a very short conversation and that was the last time hearing anything about it until June 29 th 2021. I never gave it to much thought and proceeded to build my business , which after 7 years is being somewhat successful.” He concludes by saying “after … being told 5 years ago in a very short and non-threatening way that no worries about using the word as we have and never hearing from [Complainant’s representative] or anyone again about the matter.” These competing statements from the parties create significant factual disputes as to the date of the phone call and what was said during the conversation. Depending on how these disputes are resolved, Complainant may be able to better support its claim that Respondent had actual knowledge of the HEMPIRE mark. Further, in the proper forum, Respondent may have the opportunity to assert defenses of acquiescence and laches in response to what really amounts to Complainant’s claim of trademark infringement that involves Respondent’s shop and products, and thus extends beyond the disputed domain name.
The above-mentioned evidentiary and legal issues, as well as others raised by this dispute, are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools. As such, the Panel finds it to be more likely than not that the present dispute is outside the scope of the Policy and that the status quo of the disputed domain name should be maintained until the parties can have its fate adjudicated through an appropriate forum.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hempirestatesmokeshop.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: July 27, 2021
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