Procana Laboratories Inc. v. Robert Anderson / DDB Solutions LLC / Daniel Bragg
Claim Number: FA1812001820435
Complainant is Procana Laboratories, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Robert Anderson / DDB Solutions LLC / Daniel Bragg (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <procannacbd.net>, <procannacbdoil.com>, and <pro-canna.net> (“Domain Names”), registered with Name.com, Inc.; NameSilo, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2018; the Forum received payment on December 11, 2018.
On December 11, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <procannacbd.net>, <procannacbdoil.com> domain names are registered with it. Name.com, Inc also verified that Respondent is bound by the Name.com, 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 December 11, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <pro-canna.net> domain name is registered with it. NameSilo, LLC also verified that Respondent is bound by the NameSilo, LLC, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2019 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@procannacbd.net, postmaster@procannacbdoil.com, postmaster@pro-canna.net. Also on December 19, 2018, 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 January 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the named entities which control the domain names at issue (in the case of <procannacbd.net> and <procannacbdoil.com> Robert Anderson and in the case of <pro-canna.net> DDB Solutions LLC / Daniel Bragg ) are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s mark PROCANA, 2) the Domain Names were registered within a 2 day period, and 3) each of the websites to which the Domain Names resolve (‘Respondent’s Websites’) is for the same purpose, namely to sell (or purport to sell) a particular product that competes with Complainant, described as Pro Canna. The product, as displayed on the Respondent’s Websites, appears to have a distinctly different label than Complainant’s PROCANA product. Points 2 and 3 are, in the Panel’s opinion, strong circumstantial evidence to suggest that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that the Domain Names would have been registered so close to one another and offer the identical (alleged in the Complaint) infringing product.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for the remainder of the Decision.
A. Complainant
Complainant enjoys rights in the PROCANA mark in connection with its business with dietary beverage supplements containing Cannabidiol (“CBD”) for therapeutic purposes. Complainant has rights in the PROCANA mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,643,694, registered Nov. 25, 2014). Respondent’s <procannacbd.net>, <procannacbdoil.com>, and <pro-canna.net> domain names are confusingly similar to Complainant’s PROCANA mark as Respondent merely adds a second “n” in each of the disputed domain names, adds generic terms “cbd” and “oil,” a hyphen, and/or a generic top-level domain (“gTLD”) (“.com” or “.net”).
Respondent has no rights or legitimate interests in the <procannacbd.net>, <procannacbdoil.com>, and <pro-canna.net> domain names. Respondent is not authorized to use Complainant’s PROCANA mark and is not commonly known by any of the Domain Names. Additionally, Respondent fails to use the Domain Names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Domain Names are used for sites that purport to sell competing CBD supplements under the name PRO CANNA.
Respondent registered and uses the <procannacbd.net>, <procannacbdoil.com>, and <pro-canna.net> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the Domain Names where it directly competes with Complainant’s business. Further, Respondent had actual and/or constructive knowledge of Complainant’s rights in the PROCANA mark prior to registering and subsequent use of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PROCANA mark. Each of the Domain Names is confusingly similar to Complainant’s PROCANA mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 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 (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).
Complainant has rights in the PROCANA mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,643,694, registered Nov. 25, 2014). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the PROCANA mark. The <pro-canna.net> domain name contains the PROCANA mark in its entirety, adding an extra “n”, a hyphen and a gTLD. The <procannacbd.net>, <procannacbdoil.com>, domain names also contain the PROCANA mark and add a descriptive term, a hyphen and a gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the PROCANA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Robert Anderson / DDB Solutions LLC / Daniel Bragg” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve or have resolved to websites advertising CBD oil, in direct competition with Complainant. Furthermore the CBD oil is branded with a mark that is almost identical to the PROCANA Mark, which creates a false impression that Respondent’s Websites are the official websites of, or associated with, Complainant. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between July 9 and July 11, 2018, Respondent had actual knowledge of Complainant’s PROCANA mark. Each of the Domain Names resolve or have resolved to websites selling CBD oil in direct competition with Complainant under a mark almost identical to Complainant’s PROCANA mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s PROCANA Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites purporting to sell competing products under an almost identical mark. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b) (iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <procannacbd.net>, <procannacbdoil.com>, and <pro-canna.net> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 13, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page