Nu Mark LLC v. Josh Jenkins
Claim Number: FA1612001706857
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is Josh Jenkins (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greensmokee.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 10, 2016; the Forum received payment December 10, 2016.
On December 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <greensmokee.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 13, 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@greensmokee.com. Also on December 13, 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 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the GREEN SMOKE mark in combination with its business providing electronic vapor products and related goods and services. Complainant has rights in the GREEN SMOKE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,820,206, registered July 20, 2010). Respondent’s domain name <greensmokee.com> is confusingly similar to the GREEN SMOKE mark as the mere addition of the letter “e” and the generic top-level domain (“gTLD”) “.com” do not differentiate the domain name from the mark.
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 marks, has not been in a business relationship with Complainant and has never been commonly known by the disputed domain name. Respondent’s domain has not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent 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 a customer’s ability to reach Complainant’s products. Respondent also used the disputed domain name to attract Internet users for commercial gain by using a confusingly similar domain name to resolve to a website offering various sponsored listings.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name September 15, 2010.
Complainant has rights and legitimate interests in the mark contained within the disputed domain name. Respondent has no such rights or legitimate interests in the mark or the disputed domain name based on that protected mark.
Respondent registered and used a mark in a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used Complainant’s protected mark 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims to have rights in the GREEN SMOKE mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,820,206, registered July 20, 2010). See Compl., at Attached Annex B & C. A Complainant’s registration of a mark with the USPTO is sufficient to demonstrate rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain name <greensmokee.com> is confusingly similar to the GREEN SMOKE mark for purposes of Policy ¶ 4(a)(i). Respondent’s domain name includes the entire GREEN SMOKE mark and merely adds the letter “e” and the gTLD “.com.” Adding an extra letter to a domain name does not distinguish a confusingly similar domain name. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). Further, adding the gTLD “.com” to a domain name is irrelevant to an analysis of confusing similarity. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). For these reasons, the Panel finds that Respondent’s disputed domain name is confusingly similar to the GREEN SMOKE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 claims that Respondent has never been licensed or otherwise permitted to use the GREEN SMOKE marks, has not been in a business relationship with Complainant, and has not been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as, “Josh Jenkins,” which does not appear to be nominally similar to the disputed domain name. See Compl., at Attached Annex F. A respondent is not commonly known by a disputed domain name where no trademark rights show a mark similar to a domain, where the WHOIS information is silent to such proof and where no business relationship exists between the respondent and 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 finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next claims that Respondent has not offered a bona fide offering of goods or services or a legitimate noncommercial or fair use at the disputed domain name. Respondent’s domain name resolves to a website hosting various sponsored links with titles that relate to Complainant’s business such as, “Stop Smoking Medication,” “Quit Smoking Pill,” “Quit Smoking Side Effects,” and an advertisement for a website that allows users to search police records. See Compl., at Attached Annex G. Presumably clicking on one of these links will result in the display of sponsored links that resolve to commercial websites. 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 and it is not 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 in a manner permissible under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent is using the domain name to disrupt Complainant’s business by incorporating Complainant’s GREEN SMOKE mark in its domain name and using the resulting website to promote products that impede a customer’s ability to reach Complainant’s products and/or promotes ceasing use of Complainant’s products. Again, Respondent’s domain name resolves to websites displaying sponsored listings and links presumably to Complainant’s competitors’ products. See Compl., at Attached Annex G. Bad faith under Policy ¶ 4(b)(iii) is shown by a respondent’s use of 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 that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent demonstrated bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent also used the disputed domain name to attract Internet users for commercial gain by using a confusingly similar domain name to resolve to a website offering various sponsored listings. Respondent’s domain name resolves to a website hosting various sponsored listings related to Complainant’s business from which Respondent presumably commercially benefits. See Compl., at Attached Annex G. A respondent acts in bad faith under Policy ¶ 4(b)(iv) when that respondent uses a domain name that is 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greensmokee.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2017
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