FLRish IP, LLC v Lipem Rigobert

WIPO Case No. D2023-3426

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

FLRish IP, LLC v. Lipem Rigobert

Case No. D2023-3426

1. The Parties

The Complainant is FLRish IP, LLC, United States of America, represented by Evoke Law, PC,

United States of America.

The Respondent is Lipem Rigobert, Canada.

2. The Domain Name and Registrar

The disputed domain name <shopharborside-ca.com> is registered with Web Commerce

Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2023.
On August 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 11, 2023, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on August 14, 2023, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on August 14, 2023.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2023.

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The Center appointed Professor John Swinson as the sole panelist in this matter on September 26, 2023.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a California state-licensed enterprise operating cannabis dispensary, delivery services,
manufacturing, and cultivation pursuant to California’s Medicinal and Adult-Use Cannabis Regulation and

Safety Act (SB 94).

The Complainant owns several registered trademarks for HARBORSIDE, including United States Trademark
Registration No. 5,509,269 which has a registration date of July 3, 2018, and Canadian Trademark
Registration No. TMA1099853 for HARBORSIDE and a flag device which has a registration date of

May 11, 2021.

The Complainant operates its online store at the website connected to the domain name
<shopharborside.com>. This website appears to be directed at residents of California.

The Respondent did not file a Response, so little information is known about the Respondent. According to the Registrar’s records, the Respondent has an address in Canada.

The disputed domain name was registered on August 1, 2023.

At one point in time, the website at the disputed domain name resolved to a website that copied the content of Complainant’s legitimate website at <shopharborside.com>, including the Complainant’s flag trademark. Additionally, this website states “Meet the Kings of California” which is the same slogan on the

Complainant’s website.

At the present point in time, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that there is no doubt that the Respondent was aware of the commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Complainant’s trademarks when the Respondent sought to register the disputed domain name, as the

Respondent has stolen the Complainant’s identical flag design logo, website layout, and website images.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the
Policy have been satisfied, namely:

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(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

While the addition of other terms, here, “shop”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

prima facie

Having reviewed the record, the Panel finds the Complainant has established a case that the rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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In this regard, the nature of the disputed domain name in the present case carries a risk of implied affiliation and the use of the disputed domain name to impersonate the Complainant cannot support a finding of rights or legitimate interests.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent used the disputed domain name to impersonate the Complainant. The website at the disputed domain name also includes the Complainant’s logo and content copied from the Complainant’s website. Moreover, the disputed domain name includes the word “shop” prior to the Complainant’s HARBORSIDE trademark. It is also relevant that the disputed domain name includes “ca” which could be seen as an abbreviation for California where the Complainant is licensed to do business, or for Canada where the Complainant holds a registered trademark.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. The website at the disputed domain name tries to impersonate the Complainant. This is bad faith use of the disputed domain name.

The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <shopharborside-ca.com>, be transferred to the Complainant.

/John Swinson/
John Swinson
Sole Panelist
Date: October 15, 2023