PAX Labs, Inc. v. Steve Mclaren
Claim Number: FA1909001861252
Complainant is PAX Labs, Inc. (“Complainant”), represented by Stephanie Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Steve Mclaren (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paxvapes.com> registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
On September 9, 2019, Complainant submitted a Complaint to the Forum electronically; the Forum received payment on September 9, 2019.
On September 9, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the disputed domain name <paxvapes.com> is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2019 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@paxvapes.com. Also on September 11, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the Parties a Notification of Respondent Default.
On October 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PAX trademark established through its ownership of the trademark registrations listed below and at common-law through the goodwill established by Complainant in the PAX mark through substantial and continuous use of its mark in relation to the design, manufacture and sale of vaporizer products and its marketing activities including the maintenance of a website that promotes its products since at least July 2012, Complainant has produced evidence that it advertises and promotes products and services under its PAX mark online via social media on its Facebook, Twitter, Instagram, YouTube, and claims that it has many hundreds of thousands of views and more than 150,000 followers on LinkedIn.
Complainant claims that it has used the product names PAX 2 and PAX 3 marks in connection with vaporizers and accessories since 2015 and 2016 respectively.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s PAX mark because it is comprised of Complainant’s PAX mark in its entirety and non-distinguishing elements, namely, a generic or descriptive term “vapes” and a gTLD <.com> extension. Complainant submits that UDRP panels have consistently held that the addition of a generic terms to a mark in a domain name does not distinguish the domain name from that mark, and that gTLDs such as “.com” are irrelevant to confusing similarity analysis. Complainant cites for example the decisions in Paul Frank v. Chen (Forum FA1401001538885) (“. . . the domain name’s added phrase ‘bedding sets’ is descriptive of Complainant’s business. . . Therefore, the Panel holds that the <paulfrankbeddingsets.com> domain name’s alterations to Complainant’s PAUL FRANK mark are insufficient to distinguish the domain name from the mark, and that the disputed domain name is thus confusingly similar to the PAUL FRANK mark pursuant to Policy ¶ 4(a)(i).”); and Toshiba v. Mishev (Forum FA1506001622482) (“. . . the disputed domain name [<laptopcomputerstoshiba.com>] is confusingly similar to Complainant’s mark because it contains the entire mark and adds the generic term ‘laptop computers’.”).
Complainant submits that the term “vapes” directly relates to Complainant’s business, both as a synonym for Complainant’s primary product—vaporizers, and as a verb for describing use of Complainant’s vaporizers, heightens the confusing similarity of the disputed domain name to Complainant’s PAX mark. Complainant submits that panels established under the Policy have consistently held that combining a complainants trademark with another term renders the domain name confusingly similar to that mark if the term relates to the trademark owner’s business, and argues that many panels have held that the addition of such terms heightens the confusing similarity of the domain name in suit to the mark. Complainant cites for example the decision in H-D v. Attraction Mich (Forum FA1309001518206) (“The inclusion of the term ‘jackets’ in the domain name [<harley-davidsonjackets.com>] only serves to increase confusion between the domain name and Complainant mark as the term suggests Complainant’s business interest in selling HARLEY-DAVIDSON branded jackets.”); BMW v. Domain Name Services (WIPO D2008-0147) (finding the domain name <bmwaudiobooks.com> confusingly similar to complainant’s BMW mark and holding “Confusion is particularly likely” because Complainant offers BMW audio books).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name arguing that Respondent is not, and has not been, commonly known by the disputed domain name. Complainant submits that there is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain name.
Furthermore, Complainant asserts that Respondent is not a licensee or authorized dealer of Complainant, and Respondent is not authorized to register or use the disputed domain name or Complainant’s PAX mark. In this regard, Complainant cites the decision of the panel in H-D v. All Jackets (Forum FA1310001527418) (“Complainant argues that Respondent is not known as the <harleydavidson-jackets.com> domain name, as there is no evidence in the record showing any relationship. Complainant states that it has not authorized or licensed Respondent’s use of the HARLEY-DAVIDSON mark in domain names. The WHOIS information lists “all jackets” as the registrant of the domain name. Respondent is not known as the <harleydavidson-jackets.com> domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges that Respondent’s registration and use of the disputed domain name is for a commercial website offering unauthorized, counterfeit products. Complainant has adduced in evidence a print-out of the website to which the disputed domain name resolves which purports to offer for sale vaporizers which are branded PAX2 and PAX3 and alleges that these are counterfeit products, the sale of which does not constitute a bona fide offering of goods or services nor a legitimate non-commercial or fair use. Complainant submits that Respondent’s offering of unauthorized, counterfeit products is alone sufficient grounds to find that Respondent does not have a legitimate interest in the disputed domain name. Moreover, Respondent’s offering of unauthorized, counterfeit products unfairly competes with Complainant’s own offering of genuine PAX products.
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that:-
Complainant asserts that its proprietary rights in its PAX mark long predate Respondent’s registration of the disputed domain name. Respondent registered the disputed domain name on June 21, 2019. Complainant argues that it is indisputable that Respondent registered the disputed domain name with knowledge of Complainant’s rights in its PAX mark given the fame of the PAX mark in the vaping industry, the explicit references to Complainant’s PAX mark on Respondent’s website, and Respondent’s use of the disputed domain name to advertise and offer unauthorized, counterfeit products. Complainant submits that registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy. Complainant cites for example the decision of the panel in Paul Frank v. Modify Modify (Forum FA1411001590802) (“Lastly, Complainant argues that Respondent’s use of disputed domain names [<paulfranksheets.com> and <paulfrankkidsbedding.com>] in connection with a website offering counterfeit products bearing the likeness of genuine PAUL FRANK products, as well as Complainant’s Julius the Monkey logo, make clear that Respondent registered the disputed domain name with knowledge of Complainant, and with Complainant in mind. This is evidence that Respondent registered the disputed domain names with actual knowledge of the Complainant and its trademark rights. . . . Accordingly, the Panel finds additional evidence of bad faith registration…).
Complainant furthermore alleges that Respondent is using the disputed domain name to disrupt Complainant’s business by offering unauthorized, counterfeit PAX products and unfairly competing with Complainant’s own offering of genuine PAX products. Complainant submits that numerous panels established under the Policy have held that use of a trademark-related domain name to sell unauthorized, counterfeit, and/or competing products constitutes bad faith under Policy ¶ 4(b)(iii). Complainant cites the decision in H-D v. Honl (Forum FA 1312001533582) (“. . . the at-issue website appears to offer ‘Harley Davidson Clothing’ at a ‘fraction of the cost’ charged by Complainant. . . . The Panel concludes from this evidence that Respondent is using the <hob-harleydavidsonjackets.com> domain name to offer counterfeit versions of Complainant’s HARLEY-DAVIDSON apparel. The Panel notes that it has previously been held that a respondent demonstrates bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) where the disputed domain name is used to offer counterfeit versions of the complainant’s products. . . . Here, the Panel similarly concludes that Respondent has demonstrated bad faith registration and use of the <hob-harleydavidsonjackets.com> domain name under Policy ¶ 4(b)(iii) by using the disputed domain name to offer counterfeit HARLEY-DAVIDSON apparel.”).
Additionally, Complainant submits that by using Complainant’s trademark without authorisation to sell competing vaporizer products on the website to which the disputed domain name resolves, Respondent is engaged in “passing off” which constitutes bad faith under the Policy. In this regard Complainant cites the decision of the panel in H-D v. Valentine (Forum FA1404001556495) (“Respondent’s unauthorized display of Complainant’s logo on the at-issue [<tokoharleydavidson.com>] website indicates that Respondent is attempting to pass itself off as Complainant thereby additionally suggesting Respondent’s bad faith under the Policy.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant designs and develops and manufactures vaporization technologies and devices for smoking and vaping under the PAX mark and name.
Complainant is the owner of a portfolio of trademark registrations including:
U.S. Registration No. 4,437,218 for the mark PAX, first used July 27, 2012, filed May 3, 2012, issued November 19, 2013, covering electronic vaporizer products in International Class 34;
U.S. Registration No. 5,294,348 for the mark PAX, first used September 29, 2016, filed October 6, 2016, issued September 26, 2017, covering software products for vaporizers in International Class 9.
Complainant maintains a website at <www.pax.com> on which it advertises and promotes its vaporizer products including vaporisers named PAX2 and PAX3.
The disputed domain name was registered on June 21, 2019 and resolves to a website that offers for sale vaporizer products named PAX2 and PAX3. Complainant alleges that these are counterfeit products which has not been denied.
In the absence of a Response or other communication from Respondent, the only information available about Respondent is that provided in the Complaint and the Registrar’s WhoIs.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has satisfied this Panel that it has rights in the PAX mark through its ownership of the registered trademarks listed above and the goodwill established in the PAX mark through use of the mark in connection with the design, manufacture, sale, marketing and promotion of its vaporizer products, including on its website to which Complainant’s <pax.com> domain name resolves.
The disputed domain name is comprised of Complainant’s PAX mark in its entirety in combination with the descriptive term “vapes” and the gTLD <“.com”> extension. This Panel finds Complainant’s mark is the only distinctive and dominant element of the disputed domain name. The word “vapes” is descriptive of the products in connection with which Complainant has registered and uses the PAX trademark and in the circumstances of this present Complaint the gTLD <“.com”> extension may be ignored for the purposes of comparison of the disputed domain name and Complainant’s mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark PAX in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in to Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. Complainant has alleged that Respondent is not, and has not been, commonly known by the disputed domain name; that there is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain name; that Respondent is not a licensee or authorized dealer of Complainant’s products; that Respondent has not been authorized to register or use the disputed domain name which is confusingly similar to Complainant’s PAX mark; that Respondent has not been licensed or authorized to use Complainant’s PAX mark. Complainant furthermore alleges that Respondent is offering unauthorized, counterfeit products on the website to which the disputed domain name resolves which cannot constitute a bona fide offering of goods or services sufficient to establish rights or legitimate interests in the disputed domain name.
It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a domain name which is in issue in a complaint, the burden of production shifts to the respondent to establish such rights.
In the present proceeding, Respondent has not filed any Response or communication and has therefore failed to discharge the burden of production.
This Panel accepts Complainant’s allegation on the balance of probabilities, that the disputed domain name was registered with knowledge of Complainant’s rights in its PAX mark. Complainant’s PAX mark has acquired a reputation in the vaping industry. Given the unusual combination of the words “pax” and “vapes” it is improbable that the disputed domain name was chosen and registered for any reason other than to take predatory advantage of the goodwill which Complainant has established in the PAX mark.
In reaching this conclusion this Panel notes the explicit references to Complainant’s PAX mark and the product names PAX 2 and PAX on Respondent’s website and that the disputed domain name was recently created and registered on June 21, 2019 whereas Complainant has used these the product names PAX 2 and PAX 3 marks in connection with vaporizers and accessories since 2015 and 2016 respectively and Complainant’s earlier trademark U.S. registration was filed May 3, 2012 and registered on November 19, 2013, claiming first use as of July 27, 2012,
This Panel also finds that the disputed domain name has been used in bad faith. Complainant’s allegation that Respondent’s offering of unauthorized, counterfeit products on the website to which the disputed domain name resolves has not been denied by Respondent.
In the circumstances, this Panel finds on the balance of probabilities that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its PAX mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the unauthorized, counterfeit products advertised and offered therein.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in to Policy ¶ 4(a)(iii) and is entitled to succeed in its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paxvapes.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 3, 2019
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