PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant Spectrum Cannabis Canada Ltd. is a subsidiary of Canopy Growth, a world-leading cannabis company. In 2019 the Complainant has operations in all corners of the world, among other in Denmark, Germany, Czech Republic, Poland, Spain and United Kingdom.
The Respondent registered the domain name <SPECTRUMSEUROPE.COM> on 15 January 2018 and is apparently a seller of the same Cannabis products as the Complainant.
The Respondent is not a reseller of the Complainant’s services and has no business association with the Complainant. The Complainant has just found out about the registration and use of the domain name, which gives customers the impression that the Respondent represents the Complainant or is part of the Complainant’s company.
The Complainant has registered SPECTRUM CANNABIS as a word mark under EUTM No. 017068115, SPECTRUM CANNABIS as a figurative trademark under EUTM No. 016924664, and SPECTRUM as a word mark in Germany under No. 302017106247. In addition, the Complainant have numerous other trademarks filed or registered in Europe containing either SPECTRUM or SPECTRUM CANNABIS.
The Complainant claims that the disputed domain name <SPECTRUMSEUROPE.COM> is confusingly similar to the Complainant’s registered trademarks SPECTRUM and SPECTRUM CANNABIS, in which the Complainant holds prior rights.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has not received any license or consent, expressed or implied, to use the Complainant’s trademark SPECTRUM in a domain name or in any other manner from the Complainant, nor has the Complainant agreed to such use by the Respondent.
There is no evidence that the Respondent is known by, or commonly associated with, the disputed domain name. Nor is the Respondent, to the best of the Complainant’s knowledge, engaged in a personal or business activity that demonstrates that the Respondent has any legal rights to or legitimate interests in the disputed domain name.
The domain name was registered and is being used in bad faith.
The reputation of the Complainant’s trademarks SPECTRUM and SPECTRUM CANNABIS is clearly established and the Respondent knew or must have known that the disputed domain name <SPECTRUMSEUROPE.COM> was confusingly similar to the Complainant’s trademarks, especially because the content of the relevant website are offering the same services as the Complainant.
The Respondent is using the domain name commercially to sell the same products as the Complainant is selling.
The Respondent’s domain <SPECTRUMSEUROPE.COM> is confusingly similar to the Complainant’s trademarks SPECTRUM and SPECTRUM CANNABIS in both name and services, which indicates bad faith in the intention of using the Complainant’s established goodwill to SPECTRUM and SPECTRUM CANNABIS and to improperly guide interested customers to SPECTRUMSEUROPE.COM.
The intention of the Respondent’s use of the disputed domain name can therefore only be to attract internet users, normally searching for the Complainant’s products and services and thereby to mislead the Complainant’s customers.
The Respondent’s registration and use of the disputed domain name must therefore have been in bad faith.
Consequently, the Respondent’s intention in registering and using the disputed domain name appears to be to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Respondent’s registration and use of the disputed domain name SPECTRUMSEUROPE.COM also constitutes bad faith in the Respondent’s intention to infringe the Complainant’s trademark rights and interests in its well-known trademarks SPECTRUM and SPECTRUM CANNABIS.
In consequence, the Complainant requests that the domain name be transferred to it.
RESPONDENT:
The Respondent is Mr. Olivier Chauve, the CEO of SPECTRUMS EUROPE, a French simplified join-stock company (SAS) duly registered under French law on January 28, 2018.
The Respondent reserved the domain name <spectrumseurope.com> in order to offer its products on the Web to customers located across Europe.
French company SPECTRUMS EUROPE is an exclusive wholesale importer and B2B distributor of raw materials and semi-finished product with high concentration of cannabidiol CBD and phytocannabinoid rich products THC free.
The products sold by the Respondent are legal in Europe and are intended exclusively for professionals and in particular for cosmetic laboratories.
The Complainant sells finished products (oils, capsules and cannabis flowers) with THC which are not legal in France or in Europe. Furthermore, it is a B2C activity.
The trademarks and the domain name are thus not identical. The only term in common between the earlier trademarks and the contested domain name is the word element SPECTRUM.
The discussion must therefore focus on the verbal element SPECTRUM, in singular or plural form. However, this word is not distinctive and is generic, it is a common ordinary term in the medical field and particularly with regard to drugs.
The Complainant’s registered marks have been granted by the respective Trademark Offices, for « SPECTRUM CANNABIS » in European Union and « SPECTRUM » in Germany. That does not mean that the marks do not contain elements that are descriptive or generic and in so far as they do, these elements enjoys limited protection or no exclusivity.
Merely descriptive marks, like the marks SPECTRUM CANNABIS or SPECTRUM, are entitled to only a very minimal degree of protection, if any. Minor differences between a mark and a domain name are sufficient to eliminate a finding of confusing similarity in such cases.
The Respondent has filed a cancellation action before EUIPO against the European trademark registration SPECTRUM CANNABIS as word mark on the ground that the mark is not distinctive and is descriptive of the goods and services covered.
The Complainant affirms that the Respondent has no rights or legitimate interest in the disputed domain name.
Nevertheless, the Respondent has shown that SPECTRUMS EUROPE is a corporate name since January 2018 of the French company which he is the CEO (ANNEX 9 – copy of the French Company Register and its translation).
The Respondent has registered the wording SPECTRUMS EUROPE in France as its company name and he registered the domain names <spectrumseurope.com> for use as its business name and URL.
In addition, the Respondent has also demonstrated that he has been using the disputed domain name in the course of their business activities since January 2018, so before any notice from the Complainant.
The Respondent has rights and a legitimate interest in the disputed domain name because it incorporates the generic term SPECTRUMS in the field of CBD products. That term is used by numerous third parties to describe the same type of products as those offered by the Complainant.
The mere registration of a common generic term, in and of itself, establishes the Respondent’s legitimate interest.
The Respondent is commonly known by its company name and its domain name. Here is no basis for assessment by the Panelist of other issues, such as whether the Complainant holds superior rights under trademark law, since this is not the purpose of this type of proceedings.
There is absolutely no evidence the Respondent was aware or should have been aware of the Complainant or its rights when it registered the disputed domain name. Bad faith requires that the Respondent must have registered the domain name with the Complainant in mind.
The Respondent uses its domain name to promote CBD products, bolstering its legitimate interest based on this bona fide offering of goods.
There is no evidence that the Respondent intent to disrupt the Complainant’s business, to prevent it from registering a domain name reflecting a similar sign too its mark, or to confuse users. The Respondent simply registered an available generic word domain name.
Moreover, the Respondent cannot divert the client from the Complainant since the first is specialized in B2B exclusively (for professionals only) and the second is specialized in B2C (for drug users). The activity of the Respondent is legal in France and in Europe, the activity of the Complainant is not legal in this geographical area.
In consequence, the Respondent requests that the complaint be dismissed.
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