DECISION

 

Gold Flora Corporation v. Ashley olsen

Claim Number: FA2502002139080

PARTIES

Complainant is Gold Flora Corporation ("Complainant"), represented by David M. Perry of Blank Rome LLP, Pennsylvania, USA. Respondent is Ashley olsen ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gramlindisposable.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 7, 2025; Forum received payment on February 7, 2025.

 

On February 7, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <gramlindisposable.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 11, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2025 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@gramlindisposable.com. Also on February 11, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 4, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it provides a wide range of goods and services, including clothing, hats, lighters, tobacco grinder, and online articles, among a number of other products, including a variety of cannabis products, under the mark GRAMLIN to customers through operations in the U.S. Complainant states that it was founded in 2017 in Southern California as one of the few cannabis brands that is vertically-integrated and woman-owned and operated. After years of hard work, Complainant has become a California powerhouse – with cultivation, manufacturing, extraction, distribution, retail and a portfolio of brands – including GRAMLIN – that create an array of superior products. Complainant has developed widespread public recognition and appeal in its distinctive and reputational GRAMLIN brand through use dating back to March 2024. Complainant has garnered significant common law rights in and to the GRAMLIN mark through continuous and substantial use of the mark in the marketplace. Complainant's GRAMLIN mark has become distinctive as used on or in connection with a variety of goods and services through Complainant's extensive marketing, advertising, and promotion of such goods and services under such mark. Complainant engages in significant marketing, promotional, and advertising activities related to its GRAMLIN mark, including on its website located at <www.gramlinmode.com> and <caliva.com/brand/gramlin> and has spent a significant amount of money on advertising, marketing, promotion, and sales of the goods and products offered under the mark as evidenced by website traffic statistics from December 27, 2024 through January 19, 2025 for Complainant's website <www.gramlinmode.com>, and website traffic statistics from December 27, 2024 through January 23, 2025 for Complainant's website <caliva.com/brand/gramlin>. Complainant also markets its products and services under the GRAMLIN mark through marketing material distributed to the general public and consumers. Complainant also markets and advertises its products and services under the GRAMLIN mark through commonly used social media channels, including Instagram. Complainant also frequently attends different events and trade shows across the United States to promote, advertise, market, and sell its products and services. This evidence, in addition to Complainant's federal trademark application, undoubtedly proves Complainant owns common law rights in the mark and the use of GRAMLIN. Complainant filed a US Federal trademark application for the mark GRAMLIN on January 5, 2024.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its GRAMLIN mark as it wholly incorporates the mark and merely adds the generic/descriptive term "disposable" together with the generic top-level domain ("gTLD") ".com".

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use Complainant's mark. Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that is fraudulently advertising Complainant's products for sale by using identical copyrighted photographs of Complainant.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The disputed domain name resolves to a website that is fraudulently advertising Complainant's products. Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant's mark. Respondent used a privacy service.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

PRELIMINARY ISSUE: Independent Research

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

The panel has consulted publicly available databases, see below.

 

FINDINGS

Complainant does not have a registered trademark for GRAMLIN. Its trademark application was filed on January 5, 2024.

 

Complainant's domain name <gramlinmode.com> was registered on January 10, 2024.

 

The disputed domain name was registered on October 28, 2024.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in its GRAMLIN mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."). Here, Complainant registered the domain name <gramlinmode.com> on January 10, 2024 and provides evidence of use of its mark as of December 27, 2024.

 

The Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"); see also Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) ("Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith."); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

 

The Panel finds that Complainant has not met its burden of providing sufficient evidence to establish common law rights in the GRAMLIN mark preceding the registration of the disputed domain name. Complainant only provides evidence of use of the mark as of December 2024, whereas the disputed domain name was registered in October 2024. It asserts that it has developed widespread public recognition and appeal in its distinctive and reputational GRAMLIN brand through use dating back to March 2024. However, it seems unlikely that the mark could be considered to have longstanding use in October 2024.

 

As explained below, the Complaint will be dismissed because Complainant has failed to satisfy its burden of proving bad faith registration.

 

Thus Panel need not further analyze the first element of the policy. See ECHO Health, Inc. v. Jack Casey / Echo Payments, FA 2027491 (Forum Feb. 22, 2023) ("As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy."); see also Damijan Tuscana/Medellin Living, LLC v. Brad Hinkelman, FA 1984731 (Forum Mar. 24, 2022) ("In order to succeed in its claim, Complainant must prove all three elements under the Policy.").

 

Rights or Legitimate Interests

For the reasons given above and below, the Panel will not analyze this element of the Policy.

 

Registration and Use in Bad Faith

According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), in general, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent.

 

The Panel finds, on the balance of the evidence before it, that Complainant has failed to satisfy its burden of proving that it acquired common law rights in the GRAMLIN mark before the disputed domain name was registered on October 28, 2024.

 

Thus the Panel finds that Complainant has failed to satisfy its burden of proving bad faith registration of the disputed domain name, and it will dismiss the Complaint without prejudice. This dismissal is of course also without prejudice to any national court proceedings that the parties may wish to envisage.

 

The Complaint is dismissed without prejudice, because, if Complainant does obtain registered trademark rights in the mark GRAMLIN, the date relevant for a UDRP proceeding would be the application date, namely January 5, 2024, which precedes the date of registration of the disputed domain name. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant's rights in the KISSES trademark through registration of the mark with the USPTO "date back to the filing date of the trademark application and predate [the] respondent's registration").

 

Thus Complainant may envisage filing a new Complainant if it obtains registered trademark rights on the basis of its application filed on January 5, 2024. See 4.18 of the cited WIPO Jurisprudential Overview 3.0: a case may be refiled "where the case has previously been decided (including termination orders) expressly on a 'without prejudice' basis."

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

 

Accordingly, it is Ordered that the <gramlindisposable.com> domain name REMAIN WITH Respondent.

 

 

 

Richard Hill, Panelist

Dated: March 4, 2025