WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ISO International LLC v. Rob Robinson

Case No. D2017-1989

1. The Parties

Complainant is ISO International LLC of Escondido, California, United States of America (“United States”), represented by Thompson Burton PLLC, United States.

Respondent is Rob Robinson of Franklinville, New Jersey, United States, self-represented.

2. The Domain Names and Registrar

The Disputed Domain Names <isodiolcbd.net>, <isodiolcbd.org>, <isodioldirect.com> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2017. On October 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. Respondent sent an email communication to the Center on October 16, 2017. The Center informed the Parties of the commencement of the panel appointment process on November 16, 2017.

The Center appointed Richard W. Page as the sole panelist in this matter on November 16, 2017. 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

Complainant is a limited liability company formed under the laws of the State of Wyoming, United States. The company was formed on June 19, 2012, with an entity identification number of 2012-00624322. Complainant is in good standing with the State of Wyoming.

Complainant holds a United States trademark registration for ISODIOL (the “ISODIOL Mark”) which has an application number 86,729,011 and registration number 5,167,307. The trademark application was filed on August 8, 2015 and published on July 12, 2016. The ISODIOL Mark was registered in the following classes: International Class 03 – cosmetics and cleaning preparations and International Class 05 – pharmaceuticals.

The registration is for the word and design of ISODIOL. The ISODIOL Mark is used in the goods and services industry of cosmetics, nutritional oils for cosmetic purposes, skin and body topical lotions, and creams and oils for cosmetic use. It is also used for dietary and nutritional supplements containing oils and crystals, dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes, dietary food supplements and health food supplements.

The Disputed Domain Names were registered on December 14, 2016 and December 15, 2016.

5. Parties’ Contentions

A. Complainant

Complainant alleges that there are websites associated with each of the Disputed Domain Names that are the subject of this Complaint. Complainant further alleges that the Disputed Domain Names all re-route the web browser to “CBD Industry Marketing”, where one of the tabs lists “Domain Names Available To Purchase”.

Complainant contends that the use of the Disputed Domain Names is confusingly similar to Complainant’s ISODIOL Mark and that their use causes the public to believe that Respondent is acting on behalf of or under the authority of Complainant and also violates Complainant’s rights in the ISODIOL Mark.

Complainant further contends that the technical contact that responds to inquiries for purchasing the Disputed Domain Names for Respondent is “reachrob@[...].com” and is named “Marlo Keicker” while the emails are signed “Rob.”

Complainant further contends that it has not given any authority to the Respondent, Marlo Keicker, or CBD Industry Marketing to operate under the ISODIOL Mark and has not given any authority to operate, maintain or register a website using the ISODIOL Mark.

A cease-and-desist letter was sent by Complainant’s attorney to Respondent on March 17, 2017.

Complainant alleges that Respondent owns and operates the Disputed Domain Names, which are confusingly similar to the ISODIOL Mark and the official ISODIOL website, thereby causing likelihood of confusion as to the source and/or sponsorship of the Disputed Domain Names.

Complainant is a product development, sales, marketing and distribution company for hemp-based products and solutions. The company specializes in identifying emerging trends and opportunities. Complainant is the pioneer of many firsts for the cannabis industry including commercialization of “99%+ pure pharmaceutical grade cannabinoid (CBD) crystalline isolate derived from exempt parts of the hemp plant, mirco-encapsulations, and nanotechnology of the highest quality and topical skin care products”. Complainant’s growth strategy includes development of over-the-counter and pharmaceutical drugs, expanding its phytoceutical portfolio and will aggressively continue international expansion into Latin America, Asia, and Europe.

Complainant further alleges that it has goodwill and substantial financial and professional resources invested in creating, maintaining, and protecting its rights in the ISODIOL Mark. The ISODIOL Mark and investments are evidenced by the trademark registration with the United States Patent and Trademark Office. The value of the longstanding use and promotion of Complainant’s product is further evidenced by the recent acquisition of Complainant by Isodial International Inc. Isodiol International Inc. is currently trading on the Canadian Securities Exchange as “ISOL” and on the Over-the-Counter Market as “ISOLF”. Due to this use and registration, the ISODIOL Mark is well known and exclusively associated with Complainant and the unwarranted use by Respondent of the ISODIOL Mark threatens the value, image, and goodwill of the ISODIOL Mark, Complainant, and Isodiol International Inc.

Complainant argues that the phrases “cbd” and “direct” in the Disputed Domain Names are insufficient to distinguish between the ISODIOL Mark and the Disputed Domain Names. Complainant is a company that not only holds the ISODIOL Mark, but also is a supplier of hemp-based products, commonly known as “CBD”. Respondent incorporates the ISODIOL Mark with the term “cbd” to form the Disputed Domain Names. The use of the ISODIOL Mark with a general phrase from the field in which Complainant is a market leader is confusingly similar and therefore infringes upon Complainant’s use of its ISODIOL Mark. Furthermore, Complainant’s business model focuses on direct sales and shipment of “CBD” products, therefor making the phrase “direct” confusingly similar.

Complainant further argues that Respondent cannot demonstrate a legitimate purpose for registering the Disputed Domain Names. Complainant has no relationship with Respondent and Respondent has not received a license, permission, or authorization for any use of the ISODIDOL Mark from Complainant or any of Complainant’s officers.

Additionally, Respondent has no legitimate noncommercial or fair use of the Disputed Domain Names. When Respondent profits from improperly using the Disputed Domain Names, it is not making legitimate noncommercial or fair use of the Disputed Domain Names. Complainant requested the return of the Disputed Domain Names in exchange for the registry fees that Respondent would have paid initially. Respondent responded the same day offering to sell the Disputed Domain Names for USD 10,000 each, as well as offering to sell numerous other domain names. Respondent admitted that registration fees are USD 8/year and, according to eNom, Inc.’s pricing tab on its website, websites are priced from USD 9.98 to USD 17.39 to register. This email exchange, along with the pricing tab, evidences the fact that Respondent has no legitimate interest in the Disputed Domain Names beyond selling the Disputed Domain Names for an exorbitant profit to Complainant. Furthermore, space on the website to which the Disputed Domain Names resolve is being used for advertising billboards which are sold to the companies whose messages are being displayed. The increase in profits for the advertising space is directly associated with the traffic generated by confusing similarity in name with the ISODIOL Mark and therefore Respondent does not have a legitimate noncommercial reason for registering or using the Disputed Domain Names.

The fact that Respondent is not known for Isodiol products and does not attempt to re-route potential consumers to Complainant’s website leads to the reasonable conclusion that Respondent has a lack of interest in using the Disputed Domain Names for any legitimate goods or services and is prima facie evidence to satisfy paragraph 4(a)(ii) of the Policy. Therefore, Complainant has sufficiently shifted the burden of production to Respondent for Respondent to prove a legitimate interest in the Disputed Domain Names.

Complainant avers that Respondent has registered and has continued to use the Disputed Domain Names in bad faith. Complainant avers that the Disputed Domain Names fully incorporate the ISODIOL Mark. Complainant further avers that Respondent was aware of the ISODIOL Mark at the time Respondent registered the Disputed Domain Names in bad faith. Respondent’s purpose was to sell the Disputed Domain Names to Complainant and/or to attract Internet users away from Complainant’s official website in order to increase the demand for the Disputed Domain Names by creating confusion amongst Internet users.

Complainant initially registered the official website “www.isodiol.com” in November 2014. Complainant filed for the ISODIOL Mark in August 2015. Respondent did not register the Disputed Domain Names until December 2016. Complainant alleges that Respondent had constructive knowledge of Complainant’s rights, because a general inquiry into the already established usage of Complainant’s ISODIOL Mark would lead the Panel to the conclusion that Respondent was aware of such term and usage.

A Google search of “Isodiol” results in the main website for Complainant as the first result in the browser, reading “Isodiol: Pure, Natural CBD”, as well as investment information on Complainant. Furthermore, the term “Isodiol” is an inherently distinctive term with only the interpretation or usage specifically protected by the ISODIOL Mark. A search for “Isodiol” in Webster’s Dictionary and Dictionary.com both fail to recognize the word “isodiol” as a recognizable word, leading to the conclusion that the only use of the term would be linked with Complainant. The first Google result includes the phrases “cbd” and “Isodiol” which were used by Respondent in the Disputed Domain Names. Using the term “direct” is not distinctive, because of Complainant’s direct marketing activities.

Complainant alleges that Respondent registered the Disputed Domain Names primarily for the purpose of selling them to Complainant for consideration in excess or Respondent’s out-of-pocket costs. All of the Disputed Domain Names re-route the user to the website titled “CBD Industry Marketing”. Despite the Disputed Domain Names, nothing further on the website would suggest the website has anything to do with Complainant or even directs potential consumers to Complainant’s official website “www.isodiao.com”. Respondent’s website has multiple tabs, with very little material for the user if searching for information regarding the website, CBD markets, or products. The only tab that has information for an Internet user is the tab labeled: “Domain Names Available To Purchase”. The three Disputed Domain Names are the first three on the list.

Complainant further alleges that Respondent intends to make commercial gain by misleadingly diverting consumers to Complainant’s competitors. Respondent is selling this space to Complainant’s competitors and has a direct link for users can click to be taken to competitor websites. Complainant contends that Respondent is selling this space to Complainant’s competitors and regardless of the dollar amount or the market price, the price set is increased due directly to the likelihood of confusion consumers have with the ISODIOL Mark.

Respondent stated in his email to Complainant that he is a “domain name investor” and included a sales pitch stating that the real issue is not how much the domain name cost but how much value the right domain name can bring to Complainant’s business. Respondent attempted to justify the price by stating “owning a premium domain has become expensive with the average price … hovering between $5,000 and $20,000.” Another email in the chain simply states “make me an offer” without further explanation for why the price of domain names is so high. Respondent conceded that the price of the Disputed Domain Names registration is only USD 8/year. Complainant avers that this bartering is not a reasonable assertion of a good faith position. Complainant alleges that there is no conceivable legitimate reason for Respondent to have registered the Disputed Domain Names and to have engaged in these email exchanges.

B. Respondent

On October 16, 2017, Respondent sent email to the Center making reference to the email communication between “Troy Dooly, COO of Isodiol International” and “Mr. Rob Robinson, CBD Industry Domain name owner”. The content of the emails was a negotiation for the purchase of the Disputed Domain Names, as discussed above. No further response was filed contesting the contentions of Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

The October 16, 2017 email from Respondent does not properly constitute a response to the allegations of Complainant. A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. The Panel has additionally performed independent research in assessing the case merits. See section 4.8 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Disputed Doman Names registered by Respondent are identical or confusingly similar to the ISODIOL Mark in which Complainant has rights; and,

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,

(iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has a valid registration of the ISODIOL Mark, which contention Respondent has not contested. Respondent has presented no contrary evidence.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Therefore, the Panel finds for purposes of this proceeding that Complainant has enforceable rights in the ISODIOL Mark.

Complainant further contends that the Disputed Domain Names are confusingly similar to the ISODIOL Mark pursuant to paragraph 4(a)(i) of the Policy.

Complainant argues that the entirety of the ISODIOL Mark is incorporated into the Disputed Domain Names. Complainant further argues that when the Disputed Domain Names incorporate an entire trademark with only the addition of common or descriptive words, they are still confusingly similar to the trademark. See F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel notes that the entirety of the ISODIOL Mark is in each of the Disputed Domain Names. The additional phrases “cbd” and “direct” are common in the cannabis industry and are not distinctive.

Therefore, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once the complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the ISODIOL Mark.

Complainant contends that it has no relationship with Respondent and Respondent has not received a license, permission or authorization for any use of the ISODIOL Mark by Complainant or any of Complainant’s officers.

Complainant has alleged that paragraph 4(c)(i) of the Policy is not satisfied, i.e., that Respondent cannot demonstrate a legitimate purpose for registering the Disputed Domain Names or a bona fide offering of goods and services. Complainant argues that Respondent’s website overtures to sell the Disputed Domain Names and additional domain names do not create rights or legitimate interests, because they are founded on the re-routing of traffic to Respondent’s website using confusion created with Internet users. The only tab that has information for an Internet user on Respondent’s website is the tab labeled: “Domain Names Available To Purchase”. The three Disputed Domain Names are the first three on the list.

Complainant avers that the fact that Respondent is not known for Isodiol products and does not attempt to re-route potential consumers to Complainant’s website leads to the reasonable conclusion that Respondent has a lack of interest in using the Disputed Domain Names for any legitimate goods or services and is prima facie evidence of the absence of the applicability of paragraph 4(c)(ii) of the Policy.

Complainant alleges that Respondent also fails to satisfy paragraph 4(c)(iii) of the Policy by intending commercial gain by misleadingly diverting consumers to Complainant’s competitors. Respondent is selling space on its website to Complainant’s competitors and has a direct link Internet users can click to be taken to websites of Complainant’s competitors. Complainant contends that regardless of the dollar amount or the market price, the price set is increased due directly to the likelihood of confusion consumers have with the ISODIOL Mark.

The Panel finds that Complainant has made a prima facie showing under paragraph 4(a)(ii) and that the burden of production has shifted to Respondent.

Respondent submitted copies of the email documenting its negotiations with Complainant to sell the Disputed Domain Names, without addressing the elements in paragraph 4(c)(i)-(iii).

Therefore, the Panel finds that Complainant has established the necessary elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or

(ii) you [Respondent] have registered the Disputed Domain Names in order to prevent the owner of the ISODIOL Mark reflecting the ISODIOL Mark in a corresponding Disputed Domain Names, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the ISODIOL Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Complainant has alleged that offered to sell the Disputed Domain Names for USD 10,000 each, as well as offering to sell numerous other domain names. Respondent admitted that registration fees are USD 8/year, and according to eNom, Inc.’s pricing tab on its website, websites are priced from USD 9.98 to USD 17.39 to register. This email exchange, along with the pricing tab, evidences the fact that Respondent has no legitimate interest in the Disputed Domain Names beyond selling the Disputed Domain Names for an exorbitant profit to Complainant.

Respondent admitted his desire to sell the Disputed Domain Names to Complainant when he submitted copies of the email negotiations.

The Panel finds that Complainant has shown the elements of paragraph 4(b)(i) of the Policy.

Complainant further alleged that space on Respondent’s website to which the Disputed Domain Names resolve is being used for advertising billboards which are sold to the companies whose messages are being displayed.

Respondent has not contested these allegations.

The Panel, additionally finds, that Complainant has shown the elements of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that Complainant has established the necessary elements of paragraph 4(a)(iii) of the Policy.

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 Names <isodiolcbd.net>, <isodiolcbd.org> and <isodioldirect.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: November 30, 2017