Nu Mark LLC v. Debbie Anderson / Green Eggs LLC
Claim Number: FA1507001629739
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), Washington, D.C., United States. Respondent is Debbie Anderson / Green Eggs LLC (“Respondent”), Colorado, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <migreensmoke.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <migreensmoke.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 July 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@migreensmoke.com. Also on July 24, 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 August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is a leading developer of innovative tobacco products, including electronic vapor devices, commonly known as “e-vapor” products.
Complainant holds a registration for the GREEN SMOKE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,860,744, registered October 12, 2010).
Respondent registered the domain name <migreensmoke.com> on or about January 15, 2015.
The domain name is confusingly similar to Complainant’s GREEN SMOKE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s GREEN SMOKE mark.
Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
The domain name resolves to a parked webpage which Respondent uses to disrupt Complainant’s business by creating confusion among Internet users who are Complainant’s potential customers.
The same webpage carries links to other websites featuring goods and services marketed in competition with Complainant’s business.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 proceeding on the basis of Complainant's undisputed representations pursuant to ¶¶ 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to ¶ 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the GREEN SMOKE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that a UDRP complainant’s trademark registrations with the USPTO were adequate to establish its rights in the mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the domain name <migreensmoke.com> is confusingly similar to Complainant’s GREEN SMOKE trademark. The domain name contains the mark in its entirety, with only the addition of “MI,” which may be taken for “my,” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporated the mark NIIT…, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
And, because every domain name requires a gTLD, that feature of the domain name does not figure in our analysis under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <migreensmoke.com> domain name, and that Respondent is not licensed or otherwise authorized to use Complainant’s GREEN SMOKE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Debbie Anderson,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by disputed domain names and so failed to demonstrate that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and the fact that there was no evidence in the record of that proceeding to suggest that that respondent was commonly known by the domain names there in dispute).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the<migreensmoke.com> domain name to resolve to a parked webpage which misdirects Complainant’s customers and that the same webpage carries links to other websites featuring goods and services marketed in competition with Complainant’s business. In these circumstances, we may comfortably presume that Respondent seeks to profit from this arrangement. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
For these reasons, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <migreensmoke.com> domain name, which we have found to be confusingly similar to Complainant’s GREEN SMOKE trademark, is an attempt to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008):
[T]he view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.
See also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (finding that the registration and use of a domain name, which was confusingly similar to a UDRP complainant’s mark, to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent knew of Complainant and its GREEN SMOKE mark when it registered the <migreensmoke.com> domain name. This too is proof of Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <migreensmoke.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 24, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page