NJOY, Inc. v. Kenneth Parese
Claim Number: FA1308001517021
Complainant is NJOY, Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis and Roca LLP, Arizona, USA. Respondent is Kenneth Parese (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njoyecigs.com>, registered with 1&1 Internet AG.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2013; the National Arbitration Forum received payment on August 28, 2013.
On August 30, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <njoyecigs.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 August 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2013 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@njoyecigs.com. Also on August 30, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 owns and uses the NJOY trademark, which is a distinctive designation of the source of Complainant’s products. Complainant is an industry leader in the electronic cigarette market, and has used the mark in the industry since 2007. Complainant’s NJOY mark is displayed prominently throughout Complainant’s website, in its print advertisements, television commercials, product packaging, and displays. Complainant owns multiple federal trademark registrations for the NJOY mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,427,469 registered May 13, 2008). See Complainant’s Exhibit C.
Respondent registered the <njoyecigs.com> domain name, which wholly incorporates Complainant’s NJOY mark and is thus confusingly similar to Complainant’s mark. Respondent’s use of a term in the domain name that describes Complainant’s products enhances confusion between Complainant’s mark and the disputed domain name. Respondent registered the <njoyecigs.com> domain name on September 7, 2010. Respondent is neither an authorized agent nor a licensee of the NJOY mark, and does not have authorization to use the mark or register domain names containing the mark. Respondent is not commonly known as NJOY or by the <njoyecigs.com> domain name, and holds no trademark rights in any variation of the domain name. Respondent uses the disputed domain name to drive consumers to its resolving website for commercial gain. The website displays click-through advertising links, some of which lead directly to Complainant’s competitors, which alone is evidence that Respondent was aware of Complainant and its products and services. Respondent’s use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s knowledge of Complainant’s mark also provides evidence of bad faith registration and use. Given that Respondent has no connection with Complainant, its NJOY mark, or its products, Respondent’s use of the mark in the disputed domain name suggests bad faith, as Respondent seeks to profit from click-through traffic while directing Internet users to Complainants competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant NJOY, Inc. of Scottsdale, AZ, USA is the owner of the USA registered mark NJOY. Complainant has used its mark continuously since at least 2008 in connection with electronic cigarettes. Complainant also owns foreign registrations for its mark as well as the website <njoy.com> from which it sells its products via e-commerce.
Respondent is Kenneth Parese of Morganville, NJ, USA. Respondent’s registrar’s address is listed as Karlsruhe, Germany. Respondent registered the disputed domain name on or about September 7, 2010.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that its USPTO registrations of the NJOY mark (e.g., Reg. No. 3,427,469 registered May 13, 2008), which Complainant claims to use in connection with e-cigarettes, afford Complainant rights in the mark under the Policy. Previous panels have maintained that trademark registrations with a recognized authority are proper demonstrations of a complainant’s rights in a claimed mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) regarding its rights in the NJOY mark.
Complainant claims that the <njoyecigs.com> domain name is confusingly similar to the NJOY mark, alleging that Respondent employs a common technique of adding a generic term and a top-level domain to a mark in an attempt to trade off of the mark’s brand recognition. Complainant argues that the descriptive term “ecigs,” a term which describes the nature of Complainant’s use of the NJOY mark, and the addition of the generic top-level domain (“gTLD”) do not diminish the confusing nature of the disputed domain name. The panel in Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), found that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business. Further, the panel in Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007), held that attaching a gTLD such as “.com” does nothing to eliminate confusing similarity, as a top-level domain is required for all domain names. The Panel finds that the <njoyecigs.com> domain name is confusingly similar to Complainant’s NJOY mark pursuant to Policy ¶ 4(a)(i)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant states that Respondent could not be commonly known by the <njoyecigs.com> domain name, arguing that Respondent is in no way affiliated with Complainant, nor does it offer any products under the NJOY mark. Complainant further asserts that Respondent is neither an authorized agent nor a licensee of the NJOY mark, and as such does not have permission to register a domain name containing the NJOY mark or any confusingly similar variation thereof. The Panel notes that the WHOIS information reveals the registrant of the domain name as “Kenneth Parese,” which the Panel further notes bears no resemblance to the disputed domain name. The Panel finds that without Complainant’s permission to register a domain name incorporating the mark, and as a result of the inconsistent WHOIS information, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also contends that Respondent uses the <njoyecigs.com> domain name to drive consumers to Respondent’s website for commercial gain, where click-through advertising links are offered, some of which bring Internet users directly to Complainant’s competitors. Complainant alleges that Respondent’s use lacks a bona fide purpose, and illustrates that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that leading Internet users to a resolving website that has no content aside from the click-through advertisements whose services and products compete with Complainant is not be considered a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant did not constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent incorporates the NJOY mark in its entirety in the disputed domain name, causing consumers likely to enter the <njoyecigs.com> domain name into their web browsers because they are actively seeking Complainant’s products. Complainant asserts that Respondent stands to profit from the click-through traffic while directing Internet users to Complainant’s competitors by taking advantage of consumers seeking Complainant’s products, conduct sufficient for a finding of bad faith. The panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), (finding bad faith under Policy ¶ 4(b)(iv), held that bad faith registration and use existed where the respondent’s domain name resolved to a website offering links to third-party websites whose products and services were similar to those of the complainant’s. The Panel finds that Respondent registered and uses the <njoyecigs.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), due to its use of the domain name to host click-through hyperlinks which lead consumers to Complainant’s competitors.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <njoyecigs.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 8, 2013
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