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Generic Top Level Domain Name (gTLD) Decisions |
HempWorld, Inc. v. Michelle Payne
Claim Number: FA0204000112513
PARTIES
Complainant
is Matthew T. Huijgen d/b/a HempWorld, Inc., Santa Barbara, CA, USA (“Complainant”). Respondent is Michelle Payne, Westerose, AB, CANADA (“Respondent”).
The
domain name at issue is <hemp.biz>,
registered with NameScout.com.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Luz Helena Villamil-Jiménez as
Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 20, 2002.
On May 31, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Luz Helena Villamil-Jiménez
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
contends that being the owner of a US registration for the word mark “hemp” he
has the first right to own the domain name
<hemp.biz> and that the
current owner of the domain is knowingly or unknowingly infringing his
trademark rights.
Complainant
further contends that the Respondent has no trademark rights or legitimate
interests in the word mark HEMP or the domain
<hemp.biz>.
Lastly, Complainant contends that the Respondent has
registered the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant or a
competitor of his for valuable consideration in excess
of Respondent’s
documented out-of-pocket costs directly related to the domain name.
B.
Respondent
Respondent
contends that the US trademark registration for “HEMP” states that “no claim is
made to the exclusive right to use ‘HEMP’
apart from the mark as shown.
Respondent
also contends that in 1999 she formed the Canada Hemp Company with a view of
merchandising hemp products. She and her husband
wanted to carry a variety of
hemp merchandise in their existing stores, as well as start a process of
opening a strictly “hemp” e-commerce
site. She also alleges that in her stores
The Country Sampler Ltd., The Village Emporium and The Clothing Store located
at <villageatpigeonlake.com>
they have a section completely dedicated to
a vast variety of hemp products.
In
addition, Respondent contends that the Complainant is a domain buyer/seller,
and that she turned down the Complainant’s offer to
purchase the <hemp.biz> domain twice.
(1) Complainant
has established that it has rights over a trademark registration consisting of
a design which contains the word “HEMP”;
however, since it omitted mentioning
that such registration was granted with a disclaimer according to which “no
claim is made to
the exclusive right to use “HEMP” apart from the mark as
shown”, Complainant did not meet its burden to prove by a preponderance
of the
credible, relevant and admissible evidence that the domain name is identical to
a trademark in which Complainant has rights.
(2) Complainant has failed to sustain its
burden to prove by a preponderance of the credible, relevant and admissible
evidence that Respondent
has no rights or legitimate interest in respect of the
domain name.
(3) Complainant has failed to sustain its
burden to prove by a preponderance of the credible, relevant and admissible
evidence that the
domain name has been registered or is being used in bad
faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
argued that it is the owner of a US registration for the word mark
“hemp”. Now, it appears in the trademark registration copy submitted by the
Respondent that there is a disclaimer of the word “hemp”
in the registration,
such disclaimer meaning that no exclusive rights were granted to the holder of
the trademark over the sole word
“HEMP”, which is a word commonly used to refer
to a certain raw material used in connection with different types of products.
Thus,
the word “hemp” should be available for use by all manufacturers of
products made of “hemp”.
Because
Complainant has not established rights in the mark “HEMP” the Complaint must be
dismissed.
The
documentation provided by the Respondent demonstrates the existence of a
company named Canada Hemp Company formed by the Respondent
and her husband in
1999; that it has been known by such name in commerce, where she has been
trading with hemp products. It was demonstrated
that other companies that are
engaged in the manufacture of hemp products knew and made business with Canada
Hemp Company, and therefore
it appears clear to the Panel that the Respondent
does have legitimate interests in the domain name.
Respondent demonstrated with documents
that the Complainant inquired with the Respondent’s husband about the fact of
the registration
of the <hemp.biz>
domain, and that when he was informed that indeed they won the referred domain
in the latest re-leased on-hold .biz lottery, the
Complainant offered to
purchase it, said offer having been rejected by the Respondent.
It is clear, therefore, that the
Complaint was brought in bad faith given that the Complainant was aware of
facts that bear a direct
relation to the dispute and failed to include them in
the Complaint. This omission constitutes an abuse of the administrative
proceeding,
and it therefore warrants a finding of Reverse Domain Name
Hijacking.
DECISION
The Complaint is dismissed. The
Panel determines that subsequent challenges to this domain name, as against the
Respondent, under the STOP Policy shall not be permitted against this
domain name. The Panel finds that
Complainant has engaged in Reverse Domain Name Hijacking.
Luz Helena Villamil-Jiménez, Panelist
Dated: July 9, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1089.html