Nu Mark LLC v. Repossessed by Go Daddy
Claim Number: FA1612001706613
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is Repossessed by Go Daddy (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ggreensmoke.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2016; the Forum received payment on December 8, 2016.
On December 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ggreensmoke.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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@ggreensmoke.com. Also on December 12, 2016, 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 January 11, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable 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 uses the GREEN SMOKE mark in combination with its business providing electronic vapor products and related goods and services. Complainant has rights in the GREEN SMOKE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,820,206, registered July 20, 2010). Respondent’s domain name <ggreensmoke.com> is confusingly similar to the GREEN SMOKE mark as the mere addition of the letter “g” and the generic top-level domain (“gTLD”) “.com” is not sufficient to differentiate the domain name from the mark.
Respondent has no rights or legitimate interests with respect to the disputed domain name. Respondent has not been licensed or otherwise permitted to use the GREEN SMOKE Mark, been in a business relationship with Complainant, or been commonly known by the disputed domain name. Respondent’s domain has not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the domain name in bad faith. Respondent is using the domain name to disrupt Complainant’s business through incorporating Complainant’s GREEN SMOKE mark in its domain name and using the resulting website to promote products that impede customer’s ability to reach Complainant’s products. Respondent has also used the disputed domain name to attract internet users for commercial gain through using a confusingly similar domain name to resolve to a website offering various sponsored listings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an affiliate of Philip Morris USA Inc., owner of the well-known tobacco brand MARLBORO. Complainant is a leading developer of innovative tobacco products, including electronic vapor products, commonly known as “e-vapor” products.
2. Complainant has registered trademark rights in the GREEN SMOKE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,820,206, registered July 20, 2010).
3. Respondent registered the disputed domain name on May 8, 2016.
4. The website to which the domain name resolves has been used to
promote products that impede customers’ ability to reach Complainant’s products and to attract internet users by offering various sponsored listings.
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 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims to have rights in the GREEN SMOKE mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,820,206, registered July 20, 2010). See Compl., at Attached Annex B & C. Panels regularly determine, and this Panel similarly finds, that a Complainant’s registration of a mark with the USPTO is sufficient to demonstrate rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second issue that arises is whether the disputed <ggreensmoke.com> domain name is identical or confusingly similar to Complainant’s GREEN SMOKE mark. Complainant submits that Respondent’s domain name <ggreensmoke.com> is confusingly similar to the GREEN SMOKE mark for purposes of Policy ¶ 4(a)(i). Respondent’s domain name includes the entire GREEN SMOKE mark and merely adds the letter “g” and the gTLD “.com.” Panels have held that adding an extra letter to a domain name does not alleviate confusing similarity. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . .”). Panels have also repeatedly held that the presence of the gTLD “.com” in a domain name is irrelevant to an analysis of confusing similarity. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Taken together, the Panel finds that the disputed domain name is confusingly similar to the GREEN SMOKE mark under Policy ¶ 4(a)(i).
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), 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
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 GREEN SMOKE mark and to use it in its domain name and has merely added the letter “g which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on May 8, 2016;
(c) The website to which the domain name resolves has been used to
promote products that impede customers’ ability to reach Complainant’s products and to attract internet users by offering various sponsored listings;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent has not been licensed or otherwise permitted to use the GREEN SMOKE Marks, been in a business relationship with Complainant, or been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as, “Repossessed by Go Daddy,” which does not appear to resemble the disputed domain name. See Compl., at Attached Annex F. Prior panels have held that a respondent is not commonly known by a disputed domain name based on lack of trademark rights in a mark similar to a domain, WHOIS information, and a lack of business relationship with a complainant. See Reese v. Morgan, FA 917029 (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). The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant next submits that the disputed domain name has not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website hosting various sponsored links with titles that relate to Complainant’s business such as, “E Cigarette Starter Kit,” “Disposable Blu Cig,” and “Electronic Pen Smoke.” See Compl., at Attached Annex G. Clicking on one of these links will result in the display of sponsored links that resolve to commercial websites. See Compl., at Attached Annex H. Panels have held that using another’s mark to resolve to a website displaying commercial links, particularly links in competition with a Complainant’s business, is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). The Panel finds that Respondent is not using the disputed domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
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 has no rights or legitimate interests 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 argues that Respondent is using the domain name to disrupt Complainant’s business through incorporating Complainant’s GREEN SMOKE mark in its domain name and using the resulting website to promote products that impede customer’s ability to reach Complainant’s products. Again, Respondent’s domain name resolves to websites displaying sponsored listings and links presumably to Complainant’s competitors’ products. See Compl., at Attached Annex G & H. Panels found bad faith under Policy ¶ 4(b)(iii) where a respondent used a confusingly similar domain name to resolve to a website displaying links that compete with a complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant claims that Respondent has also used the disputed domain name to attract internet users for commercial gain through using a confusingly similar domain name to resolve to a website offering various sponsored listings. As stated above, Respondent’s domain name resolves to a website hosting various sponsored listings and links related to Complainant’s business from which Respondent presumably commercially benefits. See Compl., at Attached Annex G & H. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain confusingly similar to another’s mark to profit from commercial links. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum February 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Bad faith has been found even where a respondent has commercially benefited through links unrelated to a complainant’s mark. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <ggreensmoke.com> domain name using the GREEN SMOKE mark and in view of the conduct that Respondent 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 <ggreensmoke.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: January 12, 2017
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