Hempirestategrowers.com

The timeline behind hempirestategrowers.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Swisher International, Inc. v. David Beezer / HSG Claim Number: FA2106001949488 PARTIES Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is David Beezer / HSG (“Respondent”), represented by Jason P. Tortorici, of Schilleci & Tortorici, P.C., Alabama, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <hempirestategrowers.com>, registered with Wild West Domains, LLC. PANEL 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. Eleni Lappa as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on June 2, 2021; the Forum received payment on June 2, 2021. On June 3, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <hempirestategrowers.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@hempirestategrowers.com. Also on June 3, 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 June 23, 2021. An Additional Submission filed by Complainant was received on June 24, 2021 On June 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa as Panelist. 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant, Swisher International, Inc., is an international cigar company. Complainant has rights in the HEMPIRE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,845,267, registered Sep. 7, 2010). See Amend. Compl. Ex. 4. Respondent’s <hempirestategrowers.com> domain name is confusingly similar to Complainant’s mark because it simply adds the generic terms “state” and “growers” to Complainant’s HEMPIRE mark. Respondent does not have rights or legitimate interests in the <hempirestategrowers.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the HEMPIRE mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offers products that directly compete with Complainant. Respondent registered and uses the <hempirestategrowers.com> domain name in bad faith. Respondent uses the domain to attract users to its website where it offers competing products. Additionally, Respondent failed to respond to Complainant’s cease and desist notice. Finally, Respondent has constructive and actual knowledge of Complainant’s rights in the HEMPIRE mark based on the registration and fame of the mark. B. Respondent Respondent asserts that it has discontinued use of the <hempirestategrowers.com> domain name and only filed a Response because the action remains pending. Respondent is commonly known as “Hempire State Growers” throughout the Hudson Valley region. Respondent asserts it has not acted in bad faith or intended to disrupt Complainant’s business. C. Additional Submissions In its additional submission, Complainant argues it did not withdraw the Complaint because even though Respondent claimed to discontinue the use of the <hempirestategrowers.com> domain name, Respondent did not offer to voluntarily transfer the domain to Complainant. It is further noted that the disputed domain name <hempirestategrowers.com> was registered on January 3, 2019. FINDINGS The disputed domain name <hempirestategrowers.com> consists of a dominant part, i.e. its distinctive element which in this matter is the fanciful word HEMPIRE and two descriptive terms, i.e. the words STATE and GROWERS. The word HEMPIRE has been protected as a registered trademark since the year 2010 (USPTO trademark no. 3845267 HEMPIRE, registered on September 7, 2010) and is currently listed in the name of the Complainant. Therefore the dominant element of the domain name under dispute (HEMPIRE) corresponds entirely to prior registered trademark rights of the Complainant. On the other hand, Respondent has offered no evidence of any relevant trademark rights in its name, with regard to the word HEMPIRE. DISCUSSION 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. Identical and/or Confusingly Similar The dominant element of the disputed domain name is the word HEMPIRE, a fanciful word with distinctive character, which has the function of distinguishing the domain name under dispute in the eyes of the consumer and fully corresponds to prior registered trademark rights of Complainant, such as USPTO trademark no. 3845267 HEMPIRE, registered on September 7, 2010. The remaining words of the disputed domain name are purely descriptive (STATE and GROWERS). In accordance to the above, the Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights and that the relevant requirement of the Policy Paragraph 4(a)(i) is therefore satisfied. Rights or Legitimate Interests Complainant has prior registered and unregistered (use-based) rights on the mark HEMPIRE via its relevant trademark registrations. Respondent has offered no evidence of relevant registered or unregistered rights on the trademark HEMPIRE which, as discussed above is the dominant portion of the domain name in dispute <hempirestategrowers.com>. The requirement of Policy Paragraph 4(a)(ii) is therefore satisfied. Registration and Use in Bad Faith While the Complainant has prior registered rights in the word HEMPIRE, the Respondent has none, Moreover, the disputed domain name was registered in 2019 by Respondent, i.e. 9 years after the first trademark registration of Complainant in relation to the word HEMPIRE. In light of the foregoing, and the extensive use of Complainant of the word HEMPIRE as its own trademark, it is impossible to rule out that Respondent had knowledge of Complainant’s relevant trademark rights on the word HEMPIRE prior to registering the disputed domain name, which is moreover used for similar purposes to those of the Complainant, therefore the element of bad faith registration and use by Respondent cannot be ruled out. In light of the above, the requirement of Policy Paragraph 4(a)(iii) is satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <hempirestategrowers.com> domain name be TRANSFERRED from Respondent to Complainant. Eleni Lappa, Panelist Dated: July 15, 2021 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.