URS DEFAULT DETERMINATION


Nu Mark, LLC v. WhoisGuard, Inc.
Claim Number: FA1602001663135


DOMAIN NAME

<greensmoke.xyz>


PARTIES


   Complainant: Nu Mark, LLC of Richmond, VA, United States of America
  
Complainant Representative: DLA Piper LLP (US) Ashley Joyce of Washington, DC, United States of America

   Respondent: WhoisGuard, Inc. WhoisGuard Protected of Panama, Panama, II, PA
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars: Namecheap

EXAMINER


   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 Examiner in this proceeding.
   Douglas M. Isenberg, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: February 29, 2016
   Commencement: February 29, 2016
   Default Date: March 15, 2016
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Complaint states as follows: “Complainant, Nu Mark, LLC (‘Nu Mark’) is the owner of a number of trade and service mark registrations around the world, filed as early as March 25, 2010, for the well-known GREEN SMOKE word and design trademarks (collectively, the ‘GREEN SMOKE Marks’), which it uses in association with electronic vapor (more commonly known as ‘e­vapor’) products and related goods and services. “Complainant is a world-renowned developer and manufacturer of innovative tobacco products, with customers in over 46 different countries. Since as early as 2008, Complainant, through its predecessor-in-interest, has been assigned rights in and to the GREEN SMOKE Marks and has sold e-vapor products under the GREEN SMOKE brand, prominently and consistently using the GREEN SMOKE Marks in the promotion of the same. Furthermore, Complainant has established and maintains high standards of quality for its goods and services. Throughout years of such use, the GREEN SMOKE Marks have become well and favorably known throughout the United States and internationally. “The GREEN SMOKE Marks have been promoted among the purchasing public throughout the United States and internationally on an extensive and frequent basis through a variety of media. “By virtue of the wide renown of the GREEN SMOKE Marks, and the wide geographic availability and extensive sale of GREEN SMOKE’s goods and services, the GREEN SMOKE Marks have become highly distinctive in the minds of the purchasing public. As a result, the GREEN SMOKE Marks and the goodwill associated therewith are of inestimable value to Complainant. “Complainant’s official Internet web site <greensmoke.com> (the ‘GREEN SMOKE Web Site’), serves as consumers’ primary source for purchasing official GREEN SMOKE products and accessories, accessing information about the GREEN SMOKE brand, and obtaining information about e-vapor products in general. As such, the GREEN SMOKE Web Site is a vital and integral part of Complainant’s business. “The domain name <greensmoke.xyz> (the ‘Domain Name’) wholly incorporates and is identical to not only Complainant’s registered GREEN SMOKE Marks, but also to Complainant’s GREEN SMOKE Web Site. Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the GREEN SMOKE Marks nor to apply for any Domain Name incorporating the GREEN SMOKE Marks. Moreover, because Complainant owns exclusive rights in the GREEN SMOKE Marks, and has numerous United States federal and international registrations therefor, Respondent cannot establish legitimate rights in the Domain Name. Through its registration and use of a domain name wholly comprised of and identical to the GREEN SMOKE Marks, Respondent has created confusion for consumers, which ultimately serves to disrupt the business of a competitor and is evidence of bad faith registration. This is only further evidenced by the fact that the content of the Domain Name is directly related to the goods and services offered by Complainant, and that the Domain Name was registered on February 10, 2016, well after Complainant filed its first trademark for the GREEN SMOKE Marks on March 25, 2010.”

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Examiner determines that the registered domain name is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Examiner determines that the Registrant has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Examiner determines that that the domain name was registered and is being used in bad faith, considering that the domain name is being used in connection with an apparently commercial website that includes information about and links to competitive products.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. greensmoke.xyz

 

Douglas M. Isenberg
Examiner
Dated: March 16, 2016

 

 

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