Swisher International, Inc. v. kirby mastrangelo
Claim Number: FA2110001969097
Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is kirby mastrangelo (“Respondent”), represented by Steven J. Marullo of Law Offices of Steven J. Marullo, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teamhempire.com>, registered with GoDaddy.com, 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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2021; the Forum received payment on October 14, 2021.
On October 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <teamhempire.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@teamhempire.com. Also on October 19, 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 November 8, 2021.
On November 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
On November 15, 2021 a Supplementary Written Submission was received by the Panel in accordance with the Forum’s Supplemental Rule 7.
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. Complainant is a leader in the tobacco business, accounting for one third of the United States’ cigar sales and is America’s largest exporter of cigars.
Complainant has rights in the HEMPIRE mark based upon trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,845,267, registered Sept. 7, 2010) in connection with cigarette papers and cigarette rolling papers. See Amend Compl. Ex. 4. It alleges that it has been using the HEMPIRE mark for rolling papers since 2005. Complainant contends that its trademark HEMPIRE is well-known and enjoys a reputation for high quality goods in the field of cigars, tobacco and related products. It also cites to five recent UDRP cases in the past year where it was successfully able to receive transfer of HEMPIRE-related domain names.
Complainant operates a website under the domain name <hempire.com>, which was created in 1997.
Respondent’s <teamhempire.com> domain name is confusingly similar to Complainant’s HEMPIRE mark since it incorporates the entirety of the mark, simply adding the descriptive term “team” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <teamhempire.com> domain name because it is not commonly known by the domain name and Complainant did not license Respondent to use the HEMPIRE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent trades off Complainant’s goodwill to sell related products.
Respondent registered and uses the <teamhempire.com> domain name in bad faith. Respondent trades off Complainant’s goodwill to attract users to its website where it offers related products for sale. Additionally, Respondent was aware of Complainant’s rights in the HEMPIRE mark when it registered the disputed domain name. Respondent had an affirmative duty to conduct a trademark clearance search before registering the disputed domain name. In addition, a brief search on the Internet would have made Complainant’s widespread use of the HEMPIRE mark and its domain name <hempire.com> known to Respondent.
Complainant officially informed Respondent of its rights in the HEMPIRE mark in August of 2018 objecting to Respondent’s use of the name HEMPIRE LLC and its domain name, <teamhempire.com>. Respondent acknowledged Complainant’s rights in the mark HEMPIRE in relation to rolling papers and committed to stop using the mark HEMPIRE on its rolling papers. However, Respondent did not fully comply with Complainant’s cease and desist letter and kept using the store name and domain name. Complainant’s attorney sent another letter on July 9, 2021, but Respondent replied that it would not discontinue its use of the name HEMPIRE nor would it cease using the disputed domain name. Complainant asserts that failure to fully comply with Complainant’s demands is also bad faith.
B. Respondent
Respondent, Kirby Mastrangelo, is the sole owner of the hemp boutique “Hempire LLC,” which was established in December 2017. Hempire, LLC began originally as a brick-and-mortar CBD retail shop in Methuen, Massachusetts, but then expanded to a second Massachusetts location as well as to two locations in New Hampshire. During the COVID-19 pandemic, Respondent closed two of the locations and moved its business to primarily online. Respondent claims that the inspiration for the name “HEMPIRE” came from a game called “Hempire”. After conducting a name search with the Office of the Secretary of State for the Commonwealth of Massachusetts, and not finding an entity with that name, Respondent registered Hempire LLC as the official name of her business in December 2017.
Respondent asserts that its business is different than that of the Complainant. It asserts that the Complainant sells rolling papers, which are not provided by Respondent. Respondent provides only CBD products, oils, and creams containing hemp or hemp extract. Respondent has a small base of customers located in Massachusetts and New Hampshire.
Respondent also claims that the term “Hempire” is generic and used by a number of businesses. She chose the domain name <teamhempire.com> to emphasize its company’s “team approach to its customers” and registered the domain name on December 17, 2021. Respondent asserts that its use of the domain name was prior to its notice of a dispute concerning that domain name and that it has rights and legitimate interests in the <teamhempire.com> domain name because it has used the name for its related business for years. Respondent’s use of the domain to sell CBD products is a legitimate use because it relates to the established meaning of the name and Respondent sells different goods than Complainant.
Respondent claims that it has been making a fair use of the domain name, “without intent for commercial gain to divert consumers away from the Complainant, compete with the Complainant, or to tarnish the trademark or service mark at issue.” See Response at p. 6.
Respondent’s domain name registration and use is not in bad faith since Respondent uses the domain for a legitimate use and doesn’t violate any of the Policy ¶ 4(b) circumstances for bad faith.
Respondent admits to getting a letter from Complainant’s counsel on August 8, 2018 stating that Swisher sold rolling papers under the trademark HEMPIRE throughout the United States and that Respondent must dispose of all inventories of rolling papers bearing the name “HEMPIRE” and not use the word HEMPIRE for rolling papers in the future. It also demanded that Respondent cease using the name HEMPIRE for the name of its store. On August 17, 2018, Respondent’s attorney responded to Complainant stating that it would comply with Complainant’s demand to dispose of rolling papers and not use the name HEMPIRE for rolling papers. However, Respondent also stated that it would not cease using the name HEMPIRE for the name of its business as it was not causing a likelihood of confusion with Complainant’s products.
Finally, Respondent claims that the doctrine of Laches applies in this case because the Complainant “unreasonably delayed in asserting his rights to the detriment of the accused.” See Response at p. 8.
C. Additional Submissions
Complainant submitted an additional Supplementary Written Submission on November 15, 2021, pursuant to the Forum’s Supplementary Rule 7. In general, a Supplementary Written Submission should not seek to rehash arguments that Complainant’s could have made in its original submission, but rather to refute any new arguments raised by the Respondent which were not reasonably foreseeable at the time the Complaint was submitted. Although much of the additional material relates to rehashing its original argument, the Panel does accept for consideration the following additional arguments and responses.
First, Complainant argues that “a newcomer to the industry has a duty to avoid likelihood of confusion and should conduct proper trademark availability searches.” Respondent’s search of the Massachusetts corporate database is not the same thing. Next, Complainant argues that although its trademark registration for HEMPIRE only identifies rolling papers, this “ignores basic principles of trademark law that related goods which cause a likelihood of confusion constitute trademark infringement.”
Third Complainant claims that the mark HEMPIRE is not generic and although Respondent argues that it is, that analysis does not relate to whether the domain name is “confusingly similar” to the domain name under Paragraph 4(a)(i) of the Policy, but rather goes to the issue of whether the Respondent has legitimate rights or interest in the domain name and/or whether the domain name has been registered and used in bad faith under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
Finally, Complainant asserts that laches is not available for UDRP proceedings and even if it were available, Complainant raised an issue with the Respondent about its use of the domain name in 2018 and filed this action three and a half years after the domain name was registered, which is not an unreasonable delay.
Respondent contends that Complainant’s delay in filing this action is unfair and deceptive and prejudices the Respondent. It claims that the present action should therefore be dismissed. Respondent cites a few previous cases where Panels have recognized that the defense of laches is available when a particularly compelling set of facts so warrants. Se The New York Times Company v. Name Administration Inc. (BVI), FA 1009001349045 (Forum Nov. 17, 2010).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), however, Panels have widely recognized that the mere delay between the registration of a domain name and the filing of a complaint does not bar a complainant from filing a case, nor from prevailing on the merits. See WIPO Jurisprudential Overview 3.0 at § 4.17.
The Panel agrees with the consensus of WIPO Panels that laches should neither bar the filing of a Complaint nor being able to prevail on the merits. However, as other Panels have noted, a long delay in filing a Complaint, where there is such a delay, can be used as a factor where a Respondent claims a bona fide use of the domain name and where the Respondent can demonstrate a detrimental reliance on the delay. Id.
This issue will be examined further in the “Discussion” section below.
1. Complainant Swisher International, Inc. is an international cigar company founded in 1861 and is a leading supplier of cigars and other tobacco products. Complainant trademark rights in the mark “HEMPIRE” in connection with cigarette papers and cigarette rolling papers through its registration of the mark with the USPTO (e.g., Reg. No. 3,845,267 registered on September 7, 2010). The registration has a first use in commerce date of October 31, 2005.
2. Respondent, the owner of a small business called Hempire, LLC, registered the disputed domain name <teamhempire.com> on December 31, 2017. The disputed domain name is being used by the Respondent in connection with CBD products, oils, and creams containing hemp or hemp extract.
3. Respondent’s Disputed Domain is identical or confusingly similar to Complainant’s HEMPIRE mark according to Policy § 4(a)(i).
4. The Panel makes no findings as to: (a) whether the Respondent has rights or legitimate interests in the disputed domain name under Policy § 4(a)(ii); or (b) whether Respondent registered and used the domain name in bad faith under § 4(a)(iii) of the Policy. The UDRP is intended to address the abusive registration and use of a domain name and is not intended to address complex cases involving potential trademark infringement. Such issues are reserved for national courts which involve discovery, the presentation of evidence, and the cross examination of witnesses.
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.
Complainant asserts rights in the HEMPIRE mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i).. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 3,845,267, registered Sep. 7, 2010). See Amend Compl. Ex. 4. Therefore, the Panel may find that Complainant has rights in the HEMPIRE mark under Policy¶ 4(a)(i).
Complainant argues that Respondent’s <teamhempire.com> domain name is confusingly similar to Complainant’s HEMPIRE mark since it incorporates the entirety of the mark, simply adding the descriptive term “team” and the “.com” gTLD. Per Policy ¶ 4(a)(i), the addition of a generic or descriptive term and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and the mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent argues that the domain name is not identical or confusingly similar to the HEMPIRE mark because: (a) it does not compete with Complainant’s use of the HEMPIRE mark in connection with cigarette rolling paper, (b) the Respondent’s sales are to customers located within two US states, and (c) the website does not refer to any affiliation with the Complainant at all.
The Panel agrees with the Complainant – namely, that for the purposes of the Policy (as opposed to how it would be treated under trademark law), the disputed domain name, <teamhempire.com> is identical or confusingly similar to the Complainant’s mark. For the purposes of Policy 4(a)(i), this first element functional primarily as a standing requirement and requires only a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Jurisprudence Overview 3.0 at § 1.7. Where the dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Respondent’s arguments as to why the domain name is not confusingly similar to the mark are actually arguments as to both why it claims to have rights and/or legitimate interests in and to the domain name under Policy ¶ 4(a)(i), and why it has not registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii) as opposed to objections to the standing requirement. Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the HEMPIRE mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the Disputed Domains are identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Even if it can make such a case, the Complainant must also establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent under Policy ¶ 4(a)(iii).
Complainant cites a number of cases in its filings where it was successfully able to prove both of these elements.[i] It is worth noting that in all but one of those cases, the Respondent failed to submit a response and therefore defaulted. In the one case that was contested, Swisher International, Inc. v. Michael Brooks, FA 1945660 (Forum June 28, 2021), the Panel was not persuaded that the Respondent actually owned a CBD Dispensary and was known by the disputed domain name. In short, that one contested case does not share similar facts as this one.
However, the Panel notes that an additional more recent case which was not cited by the Complainant, Swisher International, Inc. v. Hempire State Smoke Shop, FA2106001952939 (July 27, 2021)(“Hempire State”), is more on point with this case. In Hempire State, like this one, there is evidence presented by the Respondent that is has been using the disputed domain name in connection with its small retail shop that sells hemp and tobacco products since 2014. Respondent in that case claimed that it was commonly known by that name incorporating the HEMPIRE mark and that the term HEMPIRE is commonly used in the expanding industry for hemp-derived products in which both the Respondent and Complainant were involved.
In Hempire State, the esteemed Panelist, Steven M. Levy, concluded that the dispute exceeded the scope of the UDRP and therefore denied relief. For very similar reasons, this Panel finds that this case too involves complex trademark legal issues which are more suitable for the courts to decide as opposed to being decided under the UDRP. As Mr. Levy rightfully points out, “the Policy’s purpose is to combat abusive domain name registrations and not provide a prescriptive code for resolving more complex trademark disputes” Id. (quoting Luvilon Industries NV v. Top Serve Tennis Pty Ltd, DAU2005-0004 (WIPO September 6, 2005). Although Luvilon was decided under the .au Dispute Resolution Policy, the .au Dispute Resolution Policy is substantially the same as the UDRP with respect to its purpose. 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.”)
In Hampire State the Panelist correctly observes that because of the limited evidentiary tools made available to the parties and to the panels, Panels are not equipped to make 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.).
In the present action, Complainant has submitted the following documents to support its case: (a) a copy of its 2010 USPTO registration certificate for the HEMPIRE mark claiming cigarette rolling papers, (b) A copy of its currently-pending Intent-to-Use 2018 trademark application of the mark in relation to various items of apparel such as shirts, pants, hats, gloves, belts, and other items, and (c) an Intent-to-use trademark application filed on April 7, 2021 of the mark in connection with wraps made from hemp paper for smoking herbs; smokable hemp products, namely, herbs for smoking in the nature of hemp sticks and hemp cones, all the foregoing derived from hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis. The most recent application according to the USPTO has been suspended do to an examiner’s finding of a likelihood of confusion with a number of other previously filed trademark applications.
Respondent claims that Hempire, LLC began originally as a brick-and-mortar CBD retail shop in Methuen, Massachusetts in December 2017, but then expanded to a second Massachusetts location as well as two locations in New Hampshire. During the COVID-19 pandemic, Respondent closed two of the locations and moved its business to primarily online. After conducting a name search with the Office of the Secretary of State for the Commonwealth of Massachusetts, and not finding an entity with that name, Respondent registered Hempire LLC as the official name of her business in December 2017. It also provides several news articles in 2019 referring the Respondent’s Hempire business.
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 a video and images of its rolling paper products. The website contains articles dated to between 2019 and 2021 but provides no evidence of use prior to Respondent’s registration of the disputed domain name.
Respondent makes the argument that Complainant’s trademark rights in the mark HEMPIRE extend only to the use of the term in connection with rolling papers and not to the products offered by the Respondent including CBD products, oils and creams containing hemp or hemp extract. Complainant, however, argues that these products should be considered “related products” which cause a likelihood of confusion under United States trademark law. In essence it makes the argument that these products are within the natural zone of expansion of the products already offered by the Complainant.
These issues, including the fundamental question of whether Complainant indeed has trademark rights with respect to CBD products, oils and creams in general or through a zone of natural explanation involves a complex set of legal and factual questions that can only be resolved by a court or law that has a more well-developed evidentiary record that provides both parties with an opportunity to better support their respective claims.
Like in Hempire State, 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. This Panel disagrees with the notion that all Registrants must conduct a trademark search prior to registering and using a domain name. In fact, the requirement for registrants to conduct trademark searches was explicitly rejected by the drafters of the UDRP. This is recounted in Formlinc Information v. Credit Suisse Grp., FA 96750 (Forum Apr. 18, 2001), where the Panel there found:
Furthermore, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith. Indeed, the closest equivalent to a legislative history for the Policy can be found in the April 30, 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy.[ii] This report states at paragraph 103:
[T]he performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. . . . Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.
Although there are some cases in which Panelists have required some level of diligence by professional domain name investors prior to the registration of a domain name, there is no evidence here that that Respondent is such a professional domain name investor.[iii] The Panel acknowledges that a duty to conduct trademark searches may be applied in a trademark infringement matter before a court of competent jurisdiction, but it should not be applied in this UDRP action.
Complainant also asserts that the failure of Respondent to comply with all of Complainant’s demands to cease using the HEMPIRE mark in connection with Respondent’s products and to discontinue its use of the disputed domain name are also evidence of bad faith. Respondent admits to receiving Complainant’s letters and that it complied with Complainant’s request to cease using the term HEMPIRE in connection with rolling papers shortly after being notified. However, Respondent’s counsel informed Complainant’s counsel that it disagreed with Complainant’s position on the use of the HEMPIRE mark. Based on the Respondent’s belief that it was not in fact violating the rights of Complainant, it did not comply with the request to cease using the term HEMPIRE in connection with its business or with its domain name.
Although some panels have found that failure to respond to cease and desist letters or other forms of Complainant demands may be evidence of bad faith, where the Respondent has a good faith disagreement concerning the rights of the Complainant and therefore does not comply with Complainant’s demands, such failure to comply cannot be viewed as bad faith under the Policy. It may be a factor considered by a court in a trademark infringement action, but this fact alone does not amount to the abusive registration and use of a domain name under the Policy.
In short, there are a number of disputed facts in this case that involve complex legal issues. To resolve these issues would require a complete evidentiary record, the opportunity to present witnesses, expert opinions, and to cross examine those witnesses and experts. The 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 here, like the Panel in Hempire State, 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 <teamhempire.com> domain name REMAIN WITH Respondent.
Jeffrey J. Neuman, Panelist
Dated: November 24, 2021
[i] See Swisher International, Inc. v. Steven Beemsterboer, FA1929623 (Forum February 22, 2021); Swisher International, Inc. v. Kerby Coman, FA1944232 (Forum June 7, 2021); Swisher International, Inc. v. Justin Jones / Golden Valley Media, FA1945104 (Forum June 10, 2021); Swisher International, Inc. v. Michael Brooks, FA 1945660 (Forum June 28, 2021) and Swisher International, Inc. v. David Beezer / HSG, FA1949488 (Forum July 15, 2021
[ii] (available online at : http://wipo2.wipo.int/process1/report/doc/report.doc).
[iii] But see AirTran Holdings Inc. v. Sinclare Vabalon, BHG, D2008-1165 (WIPO October 8, 2008)(concluding that a Respondent who has a history of cybersquatting and the mark in question is famous has a duty “to undertake due diligence or ensure that the selection of choice of domain name does not infringe the intellectual property rights of third parties.”)
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