National Concessions Group Inc. v. Christopher Phibbs
Claim Number: FA1405001560679
Complainant is National Concessions Group Inc. (“Complainant”), represented by Pamela N. Hirschman of Sheridan Ross P.C., Colorado, USA. Respondent is Christopher Phibbs (“Respondent”), represented by Mark C. Johnson of The Concept Law Group, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <o-penvape.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that they have acted independently and impartially and that each to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sir Ian Barker, Ms Antonina Pakharenco-Anderson and Dr Richard Hill as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2014; the National Arbitration Forum received payment on May 21, 2014.
On May 22, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <o-penvape.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”). The Respondent's registration is through a Primary Seat for Service Providers which was originally cited by the Complainant.
On May 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2014 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@o-penvape.com. Also on May 27, 2014, 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.
A timely Response was received and determined to be complete on June 16, 2014.
Timely Additional Submissions were received from the Complainant on June 23, 2014 and from the Respondent on June 30, 2014.
On June 25, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sir Ian Barker (Chair), Ms Antonina Pakbarenco-Anderson and Dr Richard Hill as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant manufactures and sells electronic cigarettes, vaporiser pens and refill cartridges. Its products are used for inhaling essential oils, nicotine and other inhalants including cannabis oil the sale of which is legal in Colorado where the Complainant is based.
The Complainant owns a United States trademark (filed September 13, 2012 and registered March 4, 2014), for the mark O.PEN and applied for a US trademark on July 19, 2013 for the mark O.PENVAPE. On the same date it also applied for a trademark for O.PENVAPE in stylised format. The Complainant alleges that it has used the O.PENVAPE mark since October 2012.
The disputed domain name is confusingly similar to the Complainant's marks. The only difference between it and the O.PENVAPE mark is that replacing the period in the mark with a hyphen and adding the gTLD.com. The disputed domain name is also confusingly similar to the Complainant's O.PEN mark.
The Complainant registered the domain name <openvape.com> on September 7, 2012 and after that date sold its products under the OPENVAPE mark.
The Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives it not such rights. None of the situations described in paragraph 4(c) of the Policy applies to it.
The Respondent is using websites which display variations of the Complainant's O.PENVAPE mark. The Respondent obtained products produced by the Complainant from an authorised distributor of the Complainant and sold the products via the website accessed through the disputed domain name. The Respondent has thereby created the impression of an association with the Complainant by prominently displaying on the website a mark similar to the Complainant's and selling the Complainant's products.
The Respondent registered and is using the disputed domain name in bad faith. In particular it is disrupting the Complainant's business by creating the impression of a false association with the Complainant and selling the Complainant's goods without the Complainant's authority. Moreover, the Respondent is attempting intentionally to attract internet users for its own commercial gain by creating a likelihood of confusion with the Complainant's O.PEN mark and O.PENVAPE marks. It is attempting to pass itself off as the Complainant by using logos similar to the Complainant's.
The Respondent had knowledge of the Complainant's O.PEN and O.PENVAPE marks prior to registering the disputed domain on July 3, 2013.
B. Respondent
The parties were involved in a business relationship which led to the consensual registration of the disputed domain name by the Respondent. This business relationship was based on a verbal agreement under which the Respondent became an online distributor and retailer of the Complainant's vaporisers but the Respondent was exclusively to own the disputed domain name regardless. Such a contractual business dispute is outside the scope of the Policy.
Moreover, based on this agreement, the Complainant consented to the Respondent's registration of the disputed domain name. Therefore the Respondent could not have registered the disputed domain name in bad faith because of the authorisation of the Complainant to register it for the Respondent's use as an online distributor and retailer of the Complainant's oil pen vaporisers.
C. Additional Submissions - Complainant
The Claimant never had any contract with the Respondent. The Complainant points to a letter written by its Mr Cullen dated August 22, 2013 recording that the Respondent does not have a formal agreement with the Complainant. The Respondent had had ample opportunity to assert its defence of a verbal agreement after the Complainant had sent that letter as well as several other emails to the same effect. The Respondent has not provided any conclusive evidence of the existence of any binding agreement between the parties. The Complainant filed declarations in support of its submissions.
D. Additional Submissions - Respondent
The Respondent again asserted that there was an agreement between the parties. He provided written declarations from persons associated with him to that end. These assertions are consistent with the arrangement between the parties constituting an agreement on the part of the Complainant for the Respondent to become an online distributor/retailer of the Complainant's oil-pen vaporisers.
The Respondent has spent considerable resources in creating goodwill with consumers through its registration of the disputed domain name. He has thus generated a mutually beneficial business relationship between the parties. Details of the submissions by both Complainant and Respondent on the question of whether there was an agreement between them, will be considered later in this decision.
FINDINGS
a) There was no agreement between the parties for the Respondent to register the disputed domain name or to become a distributor of the Complainant’s products;
b) The disputed domain name is confusingly similar to the Complainant's marks;
c) The Respondent has no rights or legitimate interests in the disputed domain name;
d) The Respondent registered and is using the disputed domain name in bad faith.
IS THE DISPUTE ONE APPROPRIATELY DECIDED UNDER THE POLICY?
Numerous cases under the Policy have shown that its purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex disputes. Procedures under the Policy are just not suitable for determining contractual disputes since no oral evidence is heard. There is usually evidence available in such cases which cannot be available to a Panel which is unable to resolve credibility issues.
See, for example, Luvilon Indus.MV v Top Serve Tennis Pty Ltd (WIPO Decision DAU 2005-004) and Everingham Bros Bait Co v Contigo Visual (NAF FA440219).
Yet the Panel has a discretion to consider whether or not it has jurisdiction. If there is sufficient evidence for it properly to decide the dispute under the Policy, it may proceed to review the case on the merits: see Weber-Stephen Prod Co v Armitage Hardware (WIPO Decision D2000-0187).
The Panel must realise that its jurisdiction is limited to providing a remedy for abusive registration. No decision of a Panel can prevent either party from suing the other in an appropriate Court on the basis of a contractual dispute.
Mr Morgan of the Complainant deposed that, in early 2013, he spoke to Mr Carmody acting for the Respondent after the Respondent had expressed an interest in purchasing products directly from the Complainant for resale to consumers in Michigan. Mr Carmody requested an exclusive distribution agreement with the Complainant for that state. Mr Cullen said that he would not consider an exclusive agreement but was willing to consider some level of collaboration. A written agreement would need to be concluded and the Complainant would need to have control over its brand. No agreement was reached in this conversation.
Mr Carmody asserts that in early 2013, he had telephone discussions with the Complainant’s Mr Morgan who expressed the Complainant’s wish not to sell on the Internet but to have distributors of its products. In April 2013, the Complainant’s website showed a minimal presence of the Complainant.
The Respondent alleges an oral agreement concluded between Mr Carmody and Mr Morgan. In its Response and Additional Submission, the basis for this contention comes from Mr Carmody’s discussions with representatives of the Complainant.
A letter dated August 22, 2013, (said to have been by registered post) was written by Mr Cullen of the Complainant which asserted that there was no agreement between the parties. The letter which stated inter alia "since you do not have a formal agreement with (the Complainant)" requested the Respondent to ‘cease and desist’ using the Complainant's mark in the domain name.
The Complainant also points to an email string between the parties between January 2 and 10, 2014 when the Complainant threatened legal action against the Respondent for using the disputed domain name if a resolution could not be achieved.
On September 17, 2013, Mr Cullen of the Complainant telephoned Mr Carmody repeating the request made in the letter of August 22, 2013 that the use of the Complainant's trademark be ceased. He informed Mr Carmody that, if the Respondent wished to become an authorised distributor of the Complainant's products, it would need to cease all use of the disputed domain name and enter into a written licence agreement with the Complainant regarding proper use of the Complainant's intellectual property. No agreement was reached in this call nor did Mr Carmody then assert that agreement was in place.
Following that call, Mr Cullen advised Mr Carmody by telephone that a relationship with the Complainant was no longer a possibility, whereupon he says Mr Carmody became abusive.
On January 10, 2014 email correspondence from a Mr Mitchem of the Complainant followed a telephone conference he had with Mr Carmody where they discussed the possible transfer of the disputed domain name. The Complainant made such transfer a prerequisite of discussing future sales of the Complainant's products. The Complainant points to the lack of assertion by Mr Carmody in this conversation of its entitlement to use the domain name based on any agreement.
A “cease and desist” letter was written by the Complainant's lawyers to the Respondent on March 28, 2014 formally charging the Respondent with trademark infringement, unfair competition and cybersquatting. There was no response. The Complainant argues that this lack of response indicates lack of an agreement.
The Claimant points to dictum in Alaska Healthfare Inc. v Jacobsen (NAF1500868) where it was said involving an alleged business dispute:
"This resolution is most frequently used in cases where there are genuine issues of material fact which UDRP Panels, because of the constraints of the Policy itself, are not equipped to resolve. In this case, however, while significant factual issues are indeed present, the Panel believes that it can still resolve the matter of the domain name registration within the framework of the Policy and elects to do so even though the parties will need to resolve their other issues elsewhere".
In that case the Complainant had presented sufficient factual evidence to support an allegation of bad faith against the Respondent and the Complainant submits that this Panel should do likewise.
The Respondent registered the disputed domain name with actual knowledge of the Complainant's rights in the O.PENVAPE mark – albeit unregistered at that stage.
In July 2013, Mr Carmody had indicated to Mr Morgan that he was going to develop a website for the online sale of vaporising products and that he was interested in purchasing the Complainant's products as well as various others. Mr Morgan replied that the Complainant was also going to sell its products direct but that he would be interested in a further discussion with Mr Carmody regarding the sale of the O.PENVAPE essential oil kit provided there was a written agreement controlling the Complainant's brand.
At no point in this conversation did Mr Carmody advise Mr Morgan that the domain name that the Respondent would be using was to be the disputed domain name. By August 2013, the Complainant had learnt of the existence of the website accessed by the disputed domain name and Mr Cullen's letter of August 22, 2013 resulted.
In the late summer, continuing to the fall of 2013, the Complainant received an increasing number of complaints from consumers plus enquiries regarding the activities of the company behind the website accessed by the disputed domain name. The thrust of these complaints was that consumers believed that the website was associated with the Complainant.
In December 2013, Mr Morgan again contacted Mr Carmody and advised him that the website and its content were unacceptable and that the Respondent had no permission to use the Complainant's intellectual property including the disputed domain name. He said Mr Carmody in response became abusive and threatening. Mr Morgan enquired whether there was a solution short of litigation to which Mr Carmody responded that the Complainant could purchase the website. At no point did Mr Carmody assert that the website was legitimate and authorised by a pre-existing agreement. In subsequent communications Mr Carmody offered to sell the disputed domain name to the Complainant.
In his declaration attached to the Respondent's Additional Submissions, Mr Carmody again asserted (as he had done in an exhibit to the Response) that he had negotiated a verbal agreement between the parties in or around June 2013 for the Respondent to become the online distributor/retailer of the Complainant's oil pen vaporisers which at the time were not being sold by the Complainant on its own website. According to him, the Complainant not only consented to the use of the website accessed by the disputed domain name but also agreed that it would send customers to the website to purchase products and it was an understanding “that not only did the website not conflict with the Complainant's but that the website was to be exclusively owned by the Respondent regardless of the products that were to be sold”.
Mr Carmody denied ever receiving the letter dated August 22, 2013 from Mr Cullen and disagreed with its contents to the extent that it implied that the Complainant and Respondent did not have the business relationship as described by Mr Carmody.
The overwhelming impression of the Panel from the various iterations disclosed in the declarations from various witnesses for the parties is that there was never an agreement between the parties, although there were certainly discussions. Mr Carmody's assertion of a verbal agreement is too vague. It cannot stand up because there had been several opportunities for him to have claimed the existence of an agreement both in oral discussions with the Complainant's representatives and in the various communications sent to the Respondent (although he states that he did not receive the August 22, 2013 letter from Mr Morgan).
Mr Carmody says nothing about the "cease and desist" letter from the Complainant’s lawyers which one would have thought would have prompted an outraged response if there had been a pre-existing agreement.
Nor does it seem that there had been any consent by the Complainant to the registration of the disputed domain name. Such would be rather unlikely if there were no agreement, given the Complainant's insistence on an agreement which clarified the use of intellectual property.
But even if there had been some verbal agreement, it is not disputed that the mark belongs to the Complainant which could at any time have revoked any licence to use it. That fact indicates the un-likelihood of there being an agreement. The recipient of any licence to use a trademark would certainly want some definite term which would normally be given only by written agreement.
As the suggestion that the Respondent was entitled to retain the disputed domain name, there is no evidence to back that assertion. Such an arrangement seems on its face very unusual. Surely, the Complainant could not have intended that the Respondent use the disputed domain name to market products other than the Complainant's.
Accordingly the Panel considers that it should proceed to consider this Complaint under the criteria of the Policy.
There is nothing to stop the Respondent from litigating any contractual claim it thinks it may have against the Complainant in an appropriate Court, even applying for remedies such as reclaiming the disputed domain name.
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.
The disputed domain name clearly is confusingly similar to both trademarks of the Complainant. In the mark applied for but not yet registered (i.e., O-PENVAPE) there is a full stop. In the disputed domain name there is a hyphen; otherwise the disputed domain name and the trademark are identical.
There is no dispute that in respect of this trademark, even though registration has not been completed, that the Complainant does have common law trademark rights. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007).
In respect of the registered trademark O.PEN, the Panel considers the disputed domain name is also confusingly similar to this mark. The word VAPE in this context does not detract from the confusing similarity. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003).
Consequently 4(a) of the Policy has been established.
The Complainant has alleged that it gave no rights to the Respondent to reflect the disputed domain name in its trademark. The Respondent relies on paragraph 4(c)(i) of the Policy claiming rights or legitimate interests. That assertion is all based on whether there was an alleged agreement between the parties. The Panel has found that on the balance of probabilities, there was not. Consequently, this defence must fail for the reasons already articulated in the section of this Decision concerning the contractual dispute between the parties. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
The Panel's earlier findings also mean that the disputed domain name was registered in bad faith in September 2013 after Mr Carmody had discussions with the Complainant's representatives in July 2013 in which he received no permission from the Complainant to so register.
The fact that the Respondent is using the Complainant's trademark on its website in order to sell the Complainant's products and those of third parties is sufficient to indicate that the Respondent is alleging some sort of affiliation or sponsorship or approval from the Complainant. This conduct is disrupting the Complainant's business. Accordingly paragraph 4(a)(iii) of the Policy is made out and the Complaint is therefore allowed. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <o-penvape.com> domain name be TRANSFERRED from Respondent to Complainant.
Sir Ian Barker, Chair (on behalf of the Panel)
Sir Ian Barker, Ms Antonina Pakharenco-Anderson, Dr Richard Hill, Panelists
Dated: July 7, 2014
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