Warehouse Goods, Inc. v. James Eng / Fictive Design and Print
Claim Number: FA1506001625578
Complainant is Warehouse Goods, Inc. (“Complainant”), represented by Roberto Ledesma, New York, USA. Respondent is James Eng / Fictive Design and Print (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vapeworldwide.com>, registered with GoDaddy.com, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2015; the Forum received payment on June 23, 2015.
On June 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vapeworldwide.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015 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@vapeworldwide.com. Also on June 29, 2015, 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 July 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in VAPE WORLD and alleges that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and intends to use the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark VAPE WORLD in connection with the sale of vaporizers and related goods;
2. the trademark is the subject of United States Patent and Trademark Office ("USPTO") Reg. No. 4,438,806, registered November 26, 2013, filed November 27,2012);
3. the disputed domain name was registered on May 7, 2013;
4. the disputed domain name is not presently in use;
5. in pre-Complaint correspondence Respondent’s attorney indicated that the domain name would be used in relation to the future sale of goods of the same kind as those sold by Complainant under the trademark; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for the trademark HOMEPOLISH the Panel is satisfied that it has trademark rights in that term (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purposes of assessing the similarity of the trademark and the domain name, the generic top-level domain gTLD, “.com” can be ignored. The domain name takes the trademark and adds the word “wide”, thus creating what would be understood as the expression “vape worldwide”. Panel takes the view that an Internet user with an imperfect recollection of Complainant’s trademark might be confused into thinking that the domain name was that trademark. There is also a not insignificant risk that search engines would auto-complete the trademark as the domain name. On balance, Panel finds that the domain name is confusingly similar to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The WHOIS information identities the holder of the domain name as “James Eng” of the organization “Fictive Design and Print.” Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent (or its business) might be known by the domain name.
There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. The domain name is not in use and so there is no evidence of use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Panel notes that in a May 6, 2015 letter from Respondent’s attorney to Complainant’s attorney, it was stated that: “My client formed Vape World Wide in Shenzhen, China and registered <vapeworldwide.com> with the intention to eventually operate Vape World Wide as a worldwide private label manufacturer and/or original equipment manufacturer (OEM) of vaporizers.” Accordingly, there is no evidence of preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
As noted already, the domain name is not in use at this time. Respondent’s attorney indicated that the domain name would be used in relation to the future sale of goods of the same kind as those sold by Complainant under the trademark. Accordingly, it cannot be shown that the domain name “is being used in bad faith” for the purposes of paragraph 4(a)(iii) of the Policy. Nor, despite declaratory evidence from an officer of Complainant that the trademark has been used for more than 7 years, does Panel consider that the trademark has achieved the level of notoriety to allow a finding use bad faith “use” in line with the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003.
On the other hand, paragraphs 4(b)(i)-(iii) of the Policy all hinge on a respondent’s state of mind at the time of registration and not on use as such. Panel finds that Respondent’s conduct is caught by subparagraph 4(b)(iii). The parties are competitors in a normal sense. Any use of the domain name as foreshadowed has the likely consequence that it will disrupt Complainant’s business. The only question is whether it can reasonably be inferred that Respondent’s primary motivation was to be disruptive. It might be said that Respondent is primarily actuated by a desire of commercial gain but Panel considers that gain is only achievable of way of disruption of Complainant’s business. Complainant has established the third and final limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, and in accordance with Complainant’s request, it is Ordered that the <vapeworldwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
July 30, 2015
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