Nu Mark LLC v. PATRICK MCCLURE
Claim Number: FA1612001706856
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is PATRICK MCCLURE (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greensmokeco.com>, registered with eNom, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2016; the Forum received payment on December 10, 2016.
On December 12, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <greensmokeco.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 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@greensmokeco.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 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a leading developer of innovative tobacco products, including electronic vapor products, commonly known as “e-vapor” products, as well as cartomizers, batteries, battery charges, and car power adaptors for e-vapor products. Complainant uses the GREEN SMOKE mark in combination with its business providing electronic vapor products and related goods and services. Complainant registered the GREEN SMOKE mark in the United States in 2010.
According to Complainant, the disputed domain name is confusingly similar to the GREEN SMOKE mark as the domain name merely adds the letters “c,” “o,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Complainant cites UDRP precedents to support its position.
Complainant alleges that 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. 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. Complainant cites UDRP precedents to support its position.
According to Complainant, 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 its 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 including for products and services that compete with those of Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark GREEN SMOKE dating back to 2010.
The disputed domain name was registered in 2013.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains links to products and services that compete with those of Complainant.
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 disputed domain name is confusingly similar to Complainant’s GREEN SMOKE mark as the domain name merely adds the letters “c,” “o,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Prior panels have held that adding extra letters to a domain name does not alleviate confusing similarity. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); Borders Props., Inc. v. Hewitt, FA 114618 (Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The Panel concludes that the disputed domain name is confusingly similar to the GREEN SMOKE mark in the sense of the Policy.
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. WHOIS information associated with the disputed domain name identifies Respondent as “PATRICK MCCLURE,” which does not appear to resemble the disputed domain name. 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).
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a website hosting various sponsored links with titles that relate to Complainant’s business such as, “Green Smoke,” “Disposable Blu Cig,” “E Cigarette Starter Kit,” and “Electronic Pen Smoke.” Clicking on one of these links will result in the display of sponsored links that resolve to commercial websites, some of which advertise Complainant’s own products and some of which compete with Complainant. 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).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as noted above, 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: the disputed domain name resolves to websites displaying sponsored listings and links to Complainant’s competitors’ products or to Complainant’s products that may be counterfeit or illegitimately sold. Panels have 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).”); Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
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. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain name 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greensmokeco.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 12, 2017
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