Nu Mark LLC v. Duane Fagan
Claim Number: FA1705001731469
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA . Respondent is Duane Fagan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <goodgreensmoke.com>, <greatgreensmoke.com>, <medicalgreensmoke.com>, (‘the Domain Names’) registered with GoDaddy.com, LLC.
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.
Dawn Osborne or Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2017; the Forum received payment on May 12, 2017.
On May 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goodgreensmoke.com>, <greatgreensmoke.com>, <medicalgreensmoke.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@goodgreensmoke.com, postmaster@greatgreensmoke.com, and postmaster@medicalgreensmoke.com. Also on May 15, 2017, 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 June 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant owns numerous trade marks for GREEN SMOKE, inter alia in the USA for e vapor products which has been used in relation to the same since 2008. It owns the domain name greensmoke.com.
The Domain Names, registered in January 2017, incorporate Complainant’s GREEN SMOKE mark, the generic terms ‘good’, ‘great’ or ‘medical’ and the gTLD .com. These generic terms and this gTLD do not distinguish the Domain Names from that mark and they are, therefore, confusingly similar to it. The Domain Names resolve to a Go Daddy branded parking page with commercial links.
Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. Respondent has not been commonly known by the GREEN SMOKE mark and is not making a legitimate non commercial or fair use of it. Complainant has never authorized the use of its GREEN SMOKE marks in the Domain Names or by Respondent. The Domain Names will lead to a diversion of customers from Complainant.
Respondent is using the Domain Names to intentionally disrupt the business of a competitor and to intentionally attempt to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s GREEN SMOKE marks as to the source, affiliation or endorsement of Respondent’s web site or a product offered in it. Both of these are bad faith. The Domain Names were registered well after Complainant began using its marks in 2008.
Respondent has registered a number of domain names incorporating the trade marks of other companies.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registered trade marks for GREEN SMOKE, inter alia in the USA for e vapor products which have been used in relation to the same since 2008. It owns the domain name greensmoke.com.
The Domain Names have been used to point to a Go Daddy Parking page offering internet related services.
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 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.”).
Identical or Confusingly Similar
The Domain Names consist of Complainant’s GREEN SMOKE mark (which is registered, inter alia, in USA where Respondent is based for electronic cigarettes and has been used since at least 2008), the descriptive terms ‘good’, ‘great’ or ‘medical’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a descriptive term to a Complainant's mark. See Microsoft Corp. v Thong Tran Thanh, FA 1653187 (Forum Jan 21, 2016) (determining that where a domain name contains the entire mark of Complainant the addition of a descriptive term is insufficient to differentiate a domain name from the mark). The Panel agrees that the addition of the descriptive terms ‘good’, ‘great’ or ‘medical’ to Complainant's mark does not distinguish the Domain Names from Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Names from the GREEN SMOKE mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent is not commonly known by the Domain Names upon reference to the WhoIs data. See Guardair Corporation v Pablo Palermo, FA 1407001571060 (Forum Aug 28, 2014) for support that the WhoIS may be used as a reference in this regard.
There is no evidence of any use by Respondent of the Domain Names before the Panel, apart from a Go Daddy parking page which offers Internet related services but acts mainly as a placeholder. Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to register the Domain Names containing Complainant’s mark for use, which in the circumstances of Complainant’s longstanding reputation has not been explained.
Inactive use may serve as a demonstration that a respondent lacks rights and a legitimate interest. See Bloomberg LP v SC Media Servs & Info. SRL, FA 296583 (Forum Sept. 2, 2004) As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
While there are some advertisements on the Go Daddy parking pages that have been attached to the Domain Names, they are not for products or services offered by Complainant, and they appear peripheral to the main purpose of such a page as a placeholder. Parking pages related to Internet Service Providers like Go Daddy are commonly interpreted by members of the public as a holding page to indicate a domain name is not currently in use. As such, this kind of page is not a usual pay per click page and is likely to be interpreted as such a place holder when a domain name is not being used by Internet users.
No use has been made of the Domain Names by Respondent since registration other than Go Daddy parking pages, but it has not spoken up that it was not aware of Complainant’s rights or to argue that the Domain Names in use would not cause the natural confusion which would be expected given those rights. GREEN SMOKE is an unusual combination. Respondent is based in the USA where Complainant is also based. The Panel finds it more likely than not that Respondent knew about Complainant and its business at the time of registration and the likely consequences of any use of the Domain Names in terms of confusion on the Internet. See Phat Fashions LLC v Kruger, FA 96193 (Forum Dec 29, 2000)(finding bad faith under Policy 4(b)(iv) even though respondent has not actually used the domain name because’ it makes no sense whatever to wait until it actually uses the name when inevitably when there is such use it will create the confusion described in the Policy.) Further passive use itself can be bad faith registration and use. See Am. Broad. Cos. Inc v Sech, FA 893427 (Forum Feb 28, 2007)(concluding that respondent’s failure to make active use of its domain name in the three months after its registration indicated that he respondent registered the name in bad faith).
As such, the Panel believes that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodgreensmoke.com>, <greatgreensmoke.com>, <medicalgreensmoke.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 21, 2017
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