Evergreen Management Services, LLC v. carmen flores
Claim Number: FA2202001986040
Complainant is Evergreen Management Services, LLC (“Complainant”), represented by Edmond DeFrank, California, USA. Respondent is carmen flores (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dimeindustries.co>, registered with NameSilo, LLC.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2022; the Forum received payment on February 26, 2022.
On February 28, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <dimeindustries.co> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 March 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@dimeindustries.co. Also on March 1, 2022, 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 March 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant produces and sells electronic cigarettes, smokeless cigarette vaporizer pipes, among many other nicotine and cannabis products.
Complainant submits that it has rights in a series of trademarks for DIME INDUSTRIES and similar marks registered with the California Secretary of State, including trademark number 2005487 for DIME INDUSTRIES, registered on August 8, 2020. See Compl. Ex.8.
Complainant also submits that it has common law trademark rights in DIME INDUSTRIES and that it has had those rights since at least August 5, 2006 when DIME INDUSTRIES was first used to identify the source of Complainant’s goods and services. See Compl. Ex1.
Complainant also submits that it has rights in the DIME INDUSTRIES mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,544,447, registered on November 2, 2021). See Compl. Ex. 4.
Respondent’s <dimeindustries.co> domain name is identical or confusingly similar to Complainant’s DIME INDUSTRIES as it incorporates the mark in its entirety, adding only the “.co” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the DIME INDUSTRIES mark, nor is Respondent commonly known by the disputed domain name.
Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass itself off as Complainant. Respondent also offers counterfeit goods for sale on its website to which the disputed domain name resolves, falsely claiming that they are genuine products of Complainant. The said goods are also illegal and potentially dangerous as they are not licensed. Respondent’s offering of such goods is not a bona fide offering of goods and services.
Respondent registered and uses the <dimeindustries.co> domain name in bad faith. Respondent attempts to attract internet users for its commercial gain by passing itself off as Complainant and mimicking Complainant’s website. Further, Respondent uses the disputed domain name to sell counterfeit and illegal goods, which is a further indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that produces and sells electronic cigarettes, and smokeless cigarette vaporizer pipes, among many other nicotine and cannabis products.
2. Complainant has established its rights in a series of trademarks for DIME INDUSTRIES and similar marks registered with the California Secretary of State, including trademark number 2005487 for DIME INDUSTRIES, registered on August 8, 2020. See Compl. Ex.8.
3. Complainant has established its common law trademark rights in DIME INDUSTRIES and that it has had those rights since at least August 5, 2006 when DIME INDUSTRIES was first used by Complainant to identify the source of its goods and services. See Compl. Ex1.
4. Complainant has established its rights in the DIME INDUSTRIES mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,544,447, registered on November 2, 2021). See Compl. Ex. 4.
5. Respondent registered the <dimeindustries.co> domain name on September 29, 2021.
6. Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to offer illegal and counterfeit goods for sale, falsely claiming that they are genuine products of Complainant. The evidence thus shows that Respondent does not have any rights or legitimate interests in the domain name and also that it was registered and used in bad faith.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits:
(a) Complainant has rights in a series of trademarks for DIME INDUSTRIES and similar marks registered with the California Secretary of State, including trademark number 2005487 for DIME INDUSTRIES, registered on August 8, 2020. See Compl. Ex. 8.
(b) Complainant has common law trademark rights in DIME INDUSTRIES and that it has had those rights since at least August 5, 2006 when DIME INDUSTRIES was first used by Complainant to identify the source of its goods and services. See Compl. Ex1.
(c) Complainant has rights in the DIME INDUSTRIES mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,544,447, registered on November 2, 2021). See Compl. Ex. 4.
The Panel finds that Complainant has established all of those bases for showing that it has trademark rights in DIME INDUSTRIES which give it standing to institute this proceeding.
UDRP panels have consistently found that the registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of the Policy. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Panels have also found that trademarks registered with State authorities in the United States are also sufficient to establish such rights. Evidence has been adduced which the Panel accepts to show Complainant’s rights in the DIME INDUSTRIES mark registered with the USPTO and the California Secretary of State.
It has also been frequently held by UDRP panels that common law trademark rights are sufficient for this purpose if they are properly proved. Complainant has shown by evidence that the Panel accepts that Complainant has used DIME INDUSTRIES as the source of its goods and services since August 5, 2006 and therefore as a common law trademark. Therefore, the Panel finds Complainant has sufficiently established rights in the DIME INDUSTRIES mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DIME INDUSTRIES mark. Complainant argues that Respondent’s <dimeindustries.co> domain name is identical or confusingly similar to Complainant’s DIME INDUSTRIES mark, as it incorporates the mark in its entirety, only adding the “.co” gTLD. The mere addition of a gTLD is not enough to differentiate a disputed domain name from a mark. See Verragio, LTD. v. Lance Liao, FA 1445159 (Forum July 5, 2012) (“Respondent’s <verragio.net> domain name is identical to Complainant’s VERRAGIO mark, since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”). The Panel therefore finds that the <dimeindustries.co> domain name is identical to Complainant’s DIME INDUSTRIES mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DIME INDUSTRIES mark and to use it in its domain name, adding only the “.co” gTLD to the mark;
(b) Respondent registered the <dimeindustries.co> domain name on September 29, 2021;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to offer illegal and counterfeit goods for sale, falsely claiming that they are genuine products of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <dimeindustries.co> domain name because Respondent is not authorized to use the DIME INDUSTRIES mark, nor is Respondent commonly known by the disputed domain name. Past panels have used the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). In the present case, the WHOIS information shows Respondent is known as “carmen flores” and there is no evidence to suggest Complainant authorized Respondent to use the DIME INDUSTRIES mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <dimeindustries.co> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant by mimicking Complainant’s website. Using a disputed domain name to mimic a complainant’s business and website is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, the Panel has compared Complainant and Respondent’s respective resolving websites to see if Respondent attempts to pass itself off as Complainant and finds that it does. See Compl. Exs. 9 and 13. As the Panel agrees that Respondent is passing itself off as Complainant, it finds Respondent is not using the disputed domain name in compliance with Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant submits that Respondent is not offering bona fide goods and services because it uses the disputed domain name to sell counterfeit goods. Past panels have found that using a disputed domain name and resolving website to sell counterfeit goods is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). In this case, the Panel has looked at Respondent’s resolving website and the goods offered on that site. See Compl. Ex. 13. The Panel finds that Respondent is attempting to selling counterfeit goods, falsely claiming that they are genuine products of Complainant. The goods are also dangerous as they are unlicensed. The Panel therefore finds that Respondent is not using the disputed domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent uses the <dimeindustries.co> domain name in bad faith because Respondent attempts to attract users for commercial gain by passing itself off as Complainant, mimicking Complainant’s website and displaying Complainant’s products. Using a confusingly similar disputed domain name to redirect users to a website that is virtually identical to the complainant’s website, and financially benefitting from the confusion, is an indication of bad faith. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant Here, the Panel has examined Complainant’s and Respondent’s websites to determine whether Respondent passes itself off as Complainant and finds that it does. See Compl. Exs. 9 and 13. Therefore, the Panel finds bad faith on the part of Respondent both in the registration and the use of the domain name.
Secondly, Complainant contends that Respondent acts in bad faith because Respondent offers users counterfeit goods, which disrupts Complainant’s business. Previously, panels have concurred that a respondent’s offering of counterfeit goods may be an indication of bad faith. See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). In this case, the Panel has looked at the goods that Respondent offers on the resolving website to assess Respondent’s intentions. See Compl. Ex. 13. As the Panel agrees that Respondent has disrupted Complainant’s business, it finds Respondent acted in bad faith both in registration and use of the domain name.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DIME INDUSTRIES mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dimeindustries.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 24, 2022
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