BRH International Inc. v. Mira Hold / Mira Holdings, Inc.
Claim Number: FA2010001918789
Complainant is BRH International Inc. (“Complainant”), represented by Jeremy C. Doerre of Tillman Wright, PLLC, US. Respondent is Mira Hold / Mira Holdings, Inc. (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hemper.com>, which is registered with DropCatch.com 1210 LLC.
Each of the undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as a Panelist in this proceeding.
Hon. Bruce E. Meyerson (Ret.), Hon. Neil A. Brown QC, and Atty. Terry F. Peppard, chair, as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 29, 2020; the Forum received payment on October 29, 2020.
On October 29, 2020, DropCatch.com 1210 LLC confirmed by e-mail message addressed to the Forum that the <hemper.com> domain name is registered with DropCatch.com 1210 LLC and that Respondent is the current registrant of the name. DropCatch.com 1210 LLC has verified that Respondent is bound by the DropCatch.com 1210 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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2020 by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, as well as to the attention of postmaster@hemper.com. Also, on October 30, 2020, 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 23, 2020. Complainant has since filed an Additional Submission under date of November 30, 2020, and Respondent has likewise filed an Additional Submission under date of December 7, 2020.
On December 1, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Bruce E. Meyerson (Ret.), Hon. Neil A. Brown QC, and Atty. Terry F. Peppard, chair, as Panelists.
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
In its Complaint and Additional Submission, Complainant alleges, among other things, that:
From February of 2015, Complainant’s predecessor in interest, Hemper Co., LLC, offered for sale under the HEMPER mark subscription boxes containing accessories for smoking.
On April 3, 2018, Hemper Co., LLC merged into BRH International, which has since been renamed BRH International Inc.
Complainant, the merged enterprise, has continued to use the HEMPER mark in commerce similarly.
Complainant has acquired common law rights in the HEMPER mark, running from at least February 16, 2016, owing to its continuous use in commerce from that date and Complainant’s concomitant efforts to advertise its products and services under the mark, as well as its repeated appearances in public media in its industry, which together have produced thousands of monthly subscribers.
Complainant holds a registration for the HEMPER mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,824,463, registered August 6, 2019, on the basis of an application filed June 26, 2018, with a claimed first use in commerce of February 16, 2016.
The domain name <hemper.com> was first registered on May 7, 2018.
Shortly thereafter, on May 10, 2018, Respondent won the domain name in an online auction against competitive bidding by Complainant.
The domain name is confusingly similar to Complainant’s HEMPER mark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise authorized by Complainant to use the HEMPER mark.
Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent makes no active use of the domain name, but instead offers it for sale at a price in excess of $360,000.00, which is greatly more than its out-of-pocket costs to purchase, register and maintain it.
Respondents has no rights to or legitimate interests in the domain name.
Had Respondent diligently searched the USPTO’s online trademark database, it would have discovered a trademark registration application for the HEMPER mark filed by Complainant’s predecessor in interest in January of 2016.
Although Respondent claims that it has no familiarity with the marijuana industry, in fact Respondent won its auction bid for the <hemper.com> domain name by employing the username “420domains,” which includes a cannabis slang term for marijuana and hashish consumption.
Respondent currently holds many domain names that infringe on famous marks.
Respondent registered and uses the domain name in bad faith.
B. Respondent
In its Response and Additional Submission, Respondent asserts, inter alia, that:
Respondent purchased the <hemper.com> domain name for a price of $36,150.00 via a domain name auction on May 10, 2018, which predates Complainant’s mark registration with the USPTO.
The domain name was created from a generic term, and other companies use the same or a similar name.
Complainant has not shown that the HEMPER mark is famous or has acquired secondary meaning in the market, and so has failed to demonstrate that it has acquired rights in that mark under the common law.
Respondent is a domain name investor with hundreds of legitimate domain names in its inventory.
Domain name investing is a bona fide commercial use of domain names.
Respondent is not targeting Complainant in its use of the domain name, including its efforts to sell the domain name in the ordinary course of its business.
Respondent performed a trademark search of the USPTO website before purchasing the domain name and, in so doing, discovered that there was then no active registration for a HEMPER trademark.
Although Complainant alleges that Respondent has created a pattern of bad faith domain name registrations as evidenced by publicly reported UDRP decisions, in fact Respondent has been a respondent in only one UDRP case resulting in a decision adverse to it, and that decision was entered by default in circumstances in which Respondent did not have an opportunity to defend itself, and after which Respondent commenced litigation in federal court in Florida to contest transfer of the affected domain name, which litigation was eventually settled with a payment made to Respondent in exchange for transfer of the domain name.
Complainant has attempted on two occasions to purchase the contested domain name from Respondent, which attempts Respondent has rejected.
Complainant has engaged in Reverse Domain Name Hijacking by instituting this proceeding to in an effort to obtain by misuse of the UDRP process what it could not secure in a fair competitive bidding process.
By bidding for the domain name at auction, Complainant implicitly conceded that it had no greater right to possession of the domain name than does Respondent.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has rights to and legitimate interests in respect of the contested domain name; and
(3) the same domain name was not registered, and is not being used, by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by
Respondent in bad faith.
It is indisputable that the domain name <hemper.com> is substantively identical and confusingly similar to Complainant’s claimed HEMPER mark. The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
But our analysis under Policy ¶ 4(a)(i) does not end with a determination of identity or confusing similarity, because Complainant must also show that it has rights in the claimed mark sufficient to demonstrate that it has standing to pursue its claim in a UDRP proceeding. On this question, Complainant offers that it has common law rights in the HEMPER mark, running from at least February 16, 2016. A showing of rights in a mark acquired under the common law would meet the test of standing under Policy ¶ 4(a)(i). See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can prove that it has common law rights in its mark).
The required showing may be made in a variety of ways. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sec. 1.3:
Relevant evidence … includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Complainant alleges that it has used the mark in commerce continuously since the indicated date and has advertised its products and services under the mark and has been the subject of appearances in public media in its industry, which together have produced thousands of monthly subscribers. In support of these contentions, Complainant submits a “declaration” of one of its officers, which asserts that Complainant has delivered thousands of boxes of its products to subscribers monthly since 2015, attached to which declaration are copies of three magazine articles featuring Complainant, the most recent dating from 2018, and a series of screen captures from YouTube videos showing Complainant’s subscriber “boxes.” Noticeably missing from this presentation, however, is evidence of Complainant’s sales revenues and advertising expenditures over time. In light of Complainant’s very brief life history, its showing is simply insufficient to support a finding of secondary meaning, and, therefore, of common law rights in the mark satisfying the requirements of Policy ¶ 4(a)(i). See, for example, CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015), finding that a UDRP complainant failed to establish common law rights in a mark where: “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media.”
While Complainant’s proof in support of its claim of common law rights in the HEMPER mark is deficient, Complainant may still, as noted above, establish standing under Policy ¶ 4(a)(i) if it can show that it holds a registration for the mark on file with a competent trademark authority. Complainant’s registration of the HEMPER trademark with the USPTO, a national trademark authority, meets this test. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark]… demonstrate[s] its rights in such mark for the purposes
of Policy ¶ 4(a)(i).
We thus find that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent has neither rights to nor legitimate interests in the <hemper.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).
As to Respondent’s rights or interests in the <hemper.com> domain name, Complainant argues that Respondent fails to use it in connection with a bona fide offering of goods or services, as provided in Policy ¶ 4(c)(i), in that Respondent is merely offering the domain name for sale. Respondent answers that it is a domain name investor with hundreds of legitimate domain names in its inventory, and that domain name investing is a bona fide commercial use of domain names. Respondent is correct that commercial enterprises, often referred to as domain name resellers, have been found by UDRP panels to be engaged in a legitimate course of business meeting the test of Policy ¶ 4(c)(i). See, for example, Alphalogix Inc. v. DNS Servs., FA 491557 (Forum July 26, 2005):
Respondent is in the business of creating and supplying [domain] names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.
See also Front Range Internet, Inc. v. Murphy, FA 145231 (Forum April 4, 2003):
In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.
The evidence before us shows that Respondent acquired the <hemper.com> domain name for a price of $36,150.00 by participating in an online auction in which Complainant also participated in pursuit of the same domain name. In light of these facts alone, we might well conclude that Respondent has adequately shown that it has rights to and a legitimate interest in the domain name within the contemplation of Policy ¶ 4(a)(ii).
But we must also consider the inherent nature of the term “hemper,” which is, notwithstanding Complainant’s protestations to the contrary, unmistakably descriptive. This question was squarely before the USPTO in connection with a mark registration for the mark HEMPER filed by Complainant’s predecessor in interest, which Complainant inherited by merger of the two enterprises. That application was abandoned in October of 2020, shortly before this proceeding was commenced. In it the applicant argued that the word “hemper” is not descriptive because consumers would not understand it as meaning that the relevant goods were comprised of hemp. The USPTO’s examining attorney disagreed, concluding that consumers would give the word precisely that descriptive meaning.
Complainant repeats here the argument rejected by the USPTO, and now adds that the word is “not in the dictionary” and has “no dictionary meaning.” No great effort is required to discover that, in this contention, too, Complainant is mistaken. The word “hemper” is defined in the Urban Dictionary, to mean: “A person with an occupation in the hemp industry, including growing hemp, processing hemp into derivative products such as oils, cbd, other cannabinoid isolates, and fiber, and crafting with and/or selling these hemp derived products.”
Hence “hemper” is a descriptive term, so that anyone, including Respondent, had the right to register a domain name containing it, subject to the proviso that it may not be used to invoke a trademark or engage in untoward conduct against, or to target, a trademark owner. No such conduct has been proven here.
Therefore, by this additional measure, Complainant still fails to satisfy the proof requirements of Policy ¶ 4(a)(ii).
As to whether Respondent has registered or is using the disputed domain name in bad faith, we look first to Policy ¶ 4(b)(i)–(iv), which detail the circumstances in which bad faith registration and use are likely to be encountered.
Turning to Policy ¶ 4(b)(i), we find no evidence in the record suggesting that Respondent registered or acquired the <hemper.com> domain name primarily for the purpose of selling it to Complainant or one of Complainant’s competitors. To the contrary, the evidence suggests that Complainant tried on two occasions to buy the domain name from Respondent and on both such occasions Respondent refused its advances. Policy ¶ 4(b)(i) therefore does not apply here.
We also find that there is no evidence here that Respondent has engaged in a pattern of registering domain names in order to prevent mark holders from reflecting their marks in corresponding domain names. Rather, the record indicates that Respondent has been a party to only one UDRP proceeding in which it was found, by default, to have registered and used a domain name in bad faith, and, in that instance, it appears that the complainant ultimately settled its differences with Respondent by paying for a transfer to it of the domain name there in issue. So, just as one data point does not make a trend, one ambiguous default does not make a pattern. Thus Policy ¶ 4(b)(ii) does not apply here.
And, inasmuch as it is clear from the record that Respondent is a domain name reseller and not, like Complainant, a vendor of smoking products and related services, it cannot be said that Policy ¶ 4(b)(iii), which condemns disruption of the business of a commercial competitor, is applicable to this case.
Similarly, Complainant acknowledges that Respondent makes no active use of the contested domain name, but only offers it for sale within its domain name reseller’s business model. As a consequence, we cannot conclude that Respondent is employing the domain name deceptively to attract Internet users to a resolving website for its commercial gain at the expense of Complainant. Consequently, Policy ¶ 4(b)(iv) is equally inapposite.
Because Policy ¶ 4(b) does not represent an exclusive list of all circumstances that might qualify as evidence of a respondent’s bad faith in registering or using a domain name, we can and sometimes do look to other indicia. So, for example, in this case, there is a difficulty with Complainant’s trademark registration on the point of time. This is because the record reflects that, while the <hemper.com> domain name was registered by Respondent on May 10, 2018, Complainant’s mark registration with the USPTO became effective much later, as of August 6, 2019, on the basis of an application filed June 26, 2018. We are thus confronted with a situation in which Complainant asks us to conclude that Respondent registered the contested domain name in bad faith notwithstanding that Complainant’s application for registration of its competing mark was not filed until more than six weeks after the domain name was registered in favor of Respondent. It is difficult to impossible on these facts to reach any other conclusion than that Respondent did not register the domain name in bad faith because it cannot be held to have had an obligation to anticipate a mark registration that hadn’t yet occurred, nor even been applied for, when it won the domain name at auction. See, for example, Martin Golf, LLC v. Whois Privacy Services Pty Ltd / Stanley Pace, D2013-0496 (WIPO May 21, 2013):
Generally … , when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the respondent could not have contemplated the complainant’s then non-existent right.
No other circumstance appearing in the record to suggest that Respondent has registered or is using the <hemper.com> domain name in bad faith, the Panel finds that Complainant has failed to prove bad faith in Respondent’s registration and use of the domain name satisfying the proof requirements of Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges in its Response and Additional Submission that, in pursuing its Complaint in this proceeding, Complainant has engaged in “Reverse Domain Name Hijacking,” defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Upon review of all of the pleadings and proofs submitted by the parties, the Panel concludes that Complainant, while knowing or having reason to know that it could not succeed in proving all of the required elements of its case, has nonetheless commenced and prosecuted this proceeding for the evident purpose of obtaining by misuse of the UDRP system what it failed to secure through a legitimate competitive auction process, and, in so doing, has engaged in Reverse Domain Name Hijacking.
Complainant having failed to establish all of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <hemper.com> domain name REMAIN WITH Respondent.
Hon. Bruce E. Meyerson (Ret.), Panelist Hon. Neil A. Brown QC, Panelist
Dated: December 14, 2020 Dated: December 14, 2020
Atty. Terry F. Peppard, Chair, Panelist
Dated: December 14, 2020
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