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Exceedingly Close and Difficult UDRP Cases

The ordinary run of cybersquatting cases is neither “exceedingly close nor difficult.” Quote from Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) which is one of those rare cases in which the case was exceedingly close and difficult. For 90% of the docket (the percentage has been creeping up since 2016), even when Respondent appears (which it mostly does not), there is neither a defense nor merit to Respondent’s contentions. The UDRP has hoovered-in cybersquatters by the tens of thousands.

Harvest Dispensaries is not one of those. The Panel explained that there are several “difficulties” in this case:

As a threshold matter, the Panel notes that the instant proceeding presents a complicated series of questions relating to the interconnected disputes between the parties and their affiliates… Although some areas of the analysis in this decision may be rendered moot by the parties’ submissions or ancillary findings on the merits of this case [referring to an Arkansas case in which Complainant was not a named defendant and did not request relief with respect to the challenged domain name], the Panel still endeavors to provide a fulsome discussion of all factors considered in a typical UDRP proceeding.

There is, first, a collision between federal and state trademark rights. Ordinarily, of course, there is no issue as to which ultimately prevails in a court of law, but here—and for purposes of adjudication under the Uniform Domain Name Dispute Resolution Policy (UDRP)—Complainant’s federal registration predated registrations of the domain names, but it consists of a dictionary word, “Harvest” which is descriptive at best. Respondent plausibly contended that it adopted “Harvest” and obtained an Arkansas trademark registration without knowledge of Complainant’s statutory rights.

Respondent offered documentary evidence that it began the process of entering the cannabis market intending to use the fictitious trade name “Harvest” and learned in January 2019 that it would receive a license from the Arkansas Alcoholic Beverage Control Division to operate a marijuana dispensary under the name HARVEST. This predated Complainant’s formal telephone conference assertion that the use of “Harvest” would be a trademark infringement.

On these documentary facts, turned the case, even though as the Panel noted, “Respondent’s ... actions are not free from suspicion” that it may have become aware of Complainant’s mark earlier than it claims, an issue that would be drawn out in a court proceeding. Complainant’s problem, again as noted by the Panel, and important for complainants to digest:

The Panel rejects Complainant’s argument that the registration of these two domain names was nevertheless in bad faith because Respondent had constructive knowledge of Complainant’s trademark registration. Although constructive knowledge may be relevant to certain issues under U.S. trademark law, see 15 U.S.C. § 1072, constructive knowledge is insufficient to support a finding of actual knowledge and bad faith under Policy ¶ 4(a)(iii).

Complainant’s federal registration priority over Respondent’s use of the term is unquestionable, but Respondent nevertheless prevails on the issue of right or legitimate interests: “Panel finds reasonable evidence within the record that Respondent is commonly known by the HARVEST name under Policy ¶ 4(c)(ii) prior to learning of Complainant and its trademark rights.” While this satisfies the tests for the UDRP, it does not foreclose a trademark and cyberdsquatting claim under the Lanham Act. (Disclosure, I was on the Harvest Panel).

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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