Company alleges that the valuable domain name infringes on its ‘edible’ mark.
Edible Arrangements, a franchisor of stores that sell fruit arrangements, has filed a lawsuit (pdf) in an effort to get the domain name Edibles.com.
The company appears to have changed the primary branding on its website from Edible Arrangements to Edible within the past three years. It owns Edible.com and forwards it to EdibleArrangements.com.
World Media Group, LLC, which owns a number of valuable domain names, currently uses the Edibles.com domain name to promote a dietary app.
Edible Arrangements alleges this app is a ruse:
Rather, the EDIBLES App is a generic food database that merely sources data from the United States Government, giving the strong impression that the EDIBLES App is a sham and ruse merely to reserve for Defendant the Disputed Domain for potential and speculative future use and development while preventing Edible from using it and intentionally attempting to attract uses for commercial gain by creating a likelihood of confusion as to source or affiliation with Edible.
In its lawsuit, Edible Arrangements argues that the domain name Edibles.com infringes on its mark for “Edible”.
The plural form of Edible’s incontestable EDIBLE mark has no material distinction from the Defendant’s EDIBLES, and the two are therefore legal equivalents such that there is a likelihood of confusion.
The lawsuit was filed in U.S. District Court – Northern District of Georgia, where the company is located.
Really sad things are going this way..
Domaining suggests you ‘USE’ your domain as a means of protection.
Is that sound advice still?
Domaining getting cucked by generic trademarks. Obviously, this is a trend now.
Weather this is won or not, it’s a headache and money sink. Booking.com paved the way. Domaining praises the decision. It’s game on, and these courts have no sympathy for you ‘squatters’!
Be found to lose even a UDRP or any kind case against your domains, and see how they use it against you. You’ll get rolled, they call it ‘habitual offense’. As soon as those words are uttered, kiss your ass goodbye.
Keep out-bounding etc…make the WHOLE world hate you. And see! You’ll lose it all in the name of SOCIAL JUSTICE!
This is obviously a completely absurd, meritless dispute.
I dealt with these clowns in the past over a nonsense “Edible” TM claim. They think they own the English language when it comes to a generic term with a generic use.
I pushed back on their claims and sold my domain at fair market value.
This company is an example of what happens when stupidity meets an overwhelming sense of entitlement.
This is an obvious case of RDNH and should be decided that way.
Brad
This is not their first rodeo
https://domainnamewire.com/2009/04/08/edible-arrangements-should-stick-to-edibles/
A commenter on that article wrote:
“Tariq Farid (CEO Edible Arrangements) tries to use the American Legal system to his advantage at every turn. He is a dishonest, unethical criminal who tries to hind behind his so called religious faith.”
It does seem that is what is happening here with this Edibles.com lawsuit.
Entrepreneur
Very surprised that the name in question is not in a cannabis site!
Not now, but it appears they want it to be… Considering “The ubiquitous fruit arrangement franchiser debuted its CBD company Incredible Edibles in November 2019 and will be opening the first Incredible Edibles storefronts this year, with its first stores opening in New Haven, Connecticut, and Atlanta later this year.” Edibles.com would be much more brand aligning and appealing than IncredibleEdibles.com which they currently use. https://www.forbes.com/sites/christinatroitino/2020/01/23/edible-arrangements-pivots-into-cbd-market-thanks-to-edible-trademark/#28be48106fd2
I think Mike was questioning why the Defendant Domain Owner wasn’t already using it for Cannabis/CBD.
I also thought the same thing since it would be solid generic usage since “Edibles” is recognized in government legal papers to be a generic reference to Cannabis/CDB goods and services.
The reason is that, unmentioned in the Complaint, the defendant is also the owner of the incontestible US TM Reg. No. 3,763,049 for “EDIBLES” for “Computer application software for mobile phones” issued in March 2010.
OH…interesting
The process usually goes that the defendent tries to get the trademark cancelled. The plaintiff get scared and knows their initial case is nonsense anyaway. Gets setteled before the trial ends and the plaintiff get the domain. And we never know the selling price.
I sold Edibles.us to them last year.
There is more to this issue as it appears that the Defendant is also the Plaintiff in 2 Opposition cases filed in April and July:
https://www.law360.com/ttab_cases/5ea509478f4585007d7af7b8
https://www.law360.com/ttab_cases/5f127e892b6e8904d229256c
The Defendant also owns a USPTO TM on “Edibles” with first use in 2008:
https://verimark.com/trademark/edibles/77800177
Yes, they have fought in front of the USPTO already
Can you elaborate on what the outcome was on that?
Don’t worry, the ICA will be along any minute to file an amicus brief on behalf of the plaintiff.
Very funny, John. By all appearances this appears to be a meritless case and I expect the Defendant to succeed.
Hey Zak:
https://domaininvesting.com/udrp-filed-against-picture-com/#comment-88847
😉
Ever see the child yelling and screaming on the floor in the store because they didn’t get the toy they wanted?! Tariq Farid Ladies and Gentlemen!
What perplexes me about this is that they have a section on their website “edibles ®”…. It’s not a registered trademark which is what ® symbolises. They failed to register it eg https://www.tmdn.org/tmview/#/tmview/detail/US500000085951775
I’m going to guess that they added this to their site to aid in the udrp.
Actually, they do have a newer one that is registered:
https://verimark.com/trademark/edibles/88227154
And also, it’s not a UDRP, this is a full lawsuit.
Thank you for pointing that out, you’re quite right. I searched on tmdn.org and it looks like it let me down.
I predict that a court will grant a motion to dismiss. Under a Rule 12(b)(1) motion, the burden of proving that jurisdiction does exist falls to the party asserting jurisdiction. … The motion to dismiss should only be granted “if it appears certain that the plaintiff cannot prove any set of facts in support of his claim that would entitle plaintiff to relief.”
Why is this case in Georgia?
Edible Arrangements says that since they can access the website there, the GA long-arm statute applies. I don’t think that’s sufficient minimum contacts with GA.
If the case survives a motion to dismiss or moves to NJ, then a petition to cancel all of the plaintiff’s trademarks on the basis they are an Assignment in Gross might work since the Plaintiff Edible IP, LLC is just a holding company.
This definitely isn’t a valid cybersquatting case. Edibles is a generic term.
I purchased some chocolate strawberries and was very disappointed on the purchase. It didn’t look anything like the picture they showed. Half the strawberries didn’t have chocolate on them. the strawberries weren’t that fresh like they said. way over priced, spent $75 on something that’s only worth $25. I do not recommend this company!!!!!!!