Shire City Herbals, Inc. v. Charles McMillian
Claim Number: FA1509001638192
Complainant is Shire City Herbals, Inc. (“Complainant”), represented by Morgen M. Bowers of Law Office of Sonya Del Peral, New York, USA. Respondent is Charles McMillian (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shirecityherbals.com>, registered with Domain.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2015; the Forum received payment on September 17, 2015.
On September 17, 2015, Domain.com, LLC confirmed by e-mail to the Forum that the <shirecityherbals.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 September 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 2015 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@shirecityherbals.com. Also on September 18, 2015, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Shire City Herbals, owns common law trademark rights to the SHIRE CITY HERBALS mark, since as early as January 20, 2011. Complainant uses the SHIRE CITY HERBALS mark in connection with the sale of apple cider vinegar-based dietary supplement drinks. Respondent’s domain name <shirecityherbals.com> is identical to Complainant’s mark. The disputed domain name merely inserts the generic top-level domain (“gTLD”) “.com.”
Respondent should be considered as having no rights or legitimate interests in respect of the <shirecityherbals.com> domain name. Respondent is not commonly known by the <shirecityherbals.com> domain name. Additionally, Respondent has not established a bona fide offering of goods or services, or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to attack Complainant through its blog.
Respondent has registered the disputed domain name in bad faith. Respondent uses the disputed domain name primarily for the purpose of disrupting Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Policy does not require Complainant’s trademark be registered by a government authority or agency to establish rights in the mark under ¶4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Therefore, the Panel analyzes Complainant’s rights in the SHIRE CITY HERBALS under the common law.
Complainant, Shire City Herbals, claims it owns common law trademark rights to the SHIRE CITY HERBALS mark commencing as early as January 20, 2011. Complainant uses the SHIRE CITY HERBALS mark in connection with the sale of apple cider vinegar-based dietary supplement drinks. Complainant does not explicitly contend its mark has acquired secondary meaning and does not provide very much evidence of a secondary meaning. Complainant has provided evidence it was registered as “Shire City Herbals Inc.” with the state of Massachusetts on January 20, 2011. Complainant claims to sell apple cider vinegar-based dietary supplement drinks. This is about the bare minimum Complainant must prove to support its contention. Complainant has included wholesale price sheets dating back to 2012. Based upon the uncontroverted evidence, the Panel finds Complainant’s continuous use of the SHIRE CITY HERBALS mark is just barely sufficient to establish rights in the mark. Therefore, Complainant owns common law rights in the mark, satisfying the initial requirement of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶4(a)(i)).
Respondent’s domain name <shirecityherbals.com> is identical to Complainant’s mark. The disputed domain name merely inserts the gTLD “.com.” The addition of a gTLD to a complainant’s complete mark is irrelevant to a Policy ¶4(a)(i) analysis because a TLD is required by domain name syntax. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). This Panel concludes <shirecityherbals.com> is identical to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests regarding the <shirecityherbals.com> domain name. This Panel would agree. Respondent is not commonly known by the <shirecityherbals.com> domain name. The current WHOIS information for the disputed domain name refers to “Charles McMillian” as the registrant of record. Lacking a response from Respondent, there is no evidence which would support a finding Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant claims Respondent has not established a bona fide offering of goods or services, or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to attack Complainant through its blog. Respondent has made a variety of statements about Complainant on the disputed domain name, such as,
“This website is not associated with a company by the same name, who have attempted to trademark the term ‘fire cider’ as their own business entity, forcing others to not use the term for commercial purposes. This web domain was purchased independently, to share freely information about fire cider, as it should be.”
Although respondents are entitled to free speech, they are not entitled to use an infringing domain name to retaliate against a complainant. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”). In this case, Respondent is not using the disputed domain name to talk about Complainant’s products. According to the web site, Respondent is using the domain name to retaliate against Complainant. Respondent’s use of the disputed domain name does not give rise to rights or legitimate interests in the <shirecityherbals.com> domain name.
Furthermore, the disputed domain name was registered using a privacy service. This means Respondent has not publicly associated itself with the domain name, meaning Respondent has not acquired any rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain name in bad faith. Based upon the web site itself, Respondent uses the disputed domain name primarily for the purpose of disrupting Complainant’s business because Complainant registered the Fire Cider trademark. While Respondent may fairly comment on Complainant’s products, Respondent is not doing that. Respondent is not saying Complainant’s products are of poor quality or don’t buy Complainant’s products. Respondent is retaliating because of an action Complainant took, rather than pursuing the matter before the United States Patent and Trademark Office. The domain name here has nothing to do with the “Fire Cider” mark. This Proceedings has to do with the SHIRE CITY HERBALS mark. Respondent knew about the mark and deliberately tried to damage it in retaliation because Complainant exercised its legal rights. This Panel must conclude Respondent has registered and is using the disputed domain name in bad faith under the penumbra of Policy ¶4(b). UDRP Policy ¶4(b)(iii) is not applicable because there was no showing Respondent competes with Complainant.
Respondent registered the domain name using a privacy service. In a commercial context, this raises the rebuttable presumption of bard faith registration and use. Respondent has done nothing to rebut that presumption. For that reason alone, this Panel would find bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <shirecityherbals.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 20, 2015
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