DECISION

 

Nu Mark LLC v. Moh'd Abujamous / The Perfect Mood

Claim Number: FA1612001706858

PARTIES

Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA.  Respondent is Moh'd Abujamous / The Perfect Mood (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greensmokeva.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.

 

PANEL

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 of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 10, 2016; the Forum received payment on December 10, 2016.

 

On December 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <greensmokeva.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 December 12, 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@greensmokeva.com.  Also on December 12, 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 12, 2016, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant owns registered trademarks for its well known GREEN SMOKE marks (both word mark and design) used in association with electronic vapor products and related services, including in the United States. Complainant through its predecessor in interest began selling ‘e-vapor’ products under the GREEN SMOKE marks in December 2008. It has a web site at greensmoke.com.

 

Respondent registered the Domain Name in April 2013. The Domain Name is confusingly similar to Complainant’s GREEN SMOKE mark, incorporating it in its entirety. The mere addition of the term ‘VA’ after Complainant’s GREEN SMOKE word mark does not distinguish the Domain Name from Complainant’s marks. Similarly, the addition of the .com suffix in no way distinguishes the Domain Name from Complainant’s marks, because it merely describes Complainant’s Virginia location (commonly abbreviated to ‘VA’). The Domain Name will be pulled up during Internet searches for Complainant’s trademarks.

 

. Respondent has no rights or legitimate interests with respect to the Domain Name. Respondent uses the Domain Name to redirect Internet users to a web site offering third party products which compete with Complainant. This is not a bona fide offering of goods and services or a fair noncommercial use. Respondent is not commonly known by the Domain Name. Complainant has never authorized Respondent’s use of the GREEN SMOKE marks.

 

 

Respondent registered and is using the Domain Name in bad faith. Respondent is using the Domain Name to disrupt Complainant’s business under Para 4(b)(iii) of the Policy. Respondent is using the Domain Name to attract Internet users for commercial gain by creating a likelihood of confusion by use of Complainant’s marks as to the source or affiliation of Respondent’s web site by offering competing products. There is a strong inference from this that Respondent knew of Complainant when it registered its mark.

 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant owns registered trade marks for its GREEN SMOKE marks (both word mark and design) used in association with electronic vapor products and related services, inter alia, in the United States since at least 2008. It has a web site at greensmoke.com.

 

Respondent registered the Domain Name in 2013 and used it to offer third party competing products.

 

DISCUSSION

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 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

 

The Domain Name consists of Complainant's GREEN SMOKE mark (which is registered in the USA  for e-vapor products  and has been used since at least 2008), the generic geographical term ‘VA’, commonly interpreted to mean Virginia, a place associated commonly with smoking products, and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by Complainant). The Panel agrees that the addition of the geographical generic term ‘VA’ to Complainant's mark does not distinguish the Domain Name from Complainant's GREEN SMOKE trade mark pursuant to the Policy. In fact, it may add to confusion as Complainant is based in Virginia.

 

The gTLD .com does not serve to distinguish the Domain Name from the GREEN SMOKE mark, which is the distinctive component of the Domain Name. 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 Name is confusingly similar for the purposes 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

 

Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (FORUM September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

Complainant contends that the site is set up for commercial benefit to compete with Complainant using the latter's intellectual property rights.  Respondent is using the site in competition with Complainant.  It does not make it clear that there is no commercial connection with Complainant.  The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Alcon Inc. v ARanked, FA 1306493 (FORUM Mar 18. 2010)(‘The Panel finds that capitalising on the well known marks of Complainant by attracting Internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods and services pursuant to Policy 4(c) (i) or a noncommercial or fair use pursuant to Policy 4(c)(iii)).

 

As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive, in that visitors to the site might reasonably believe it is connected to or approved by Complainant, as it offers competing goods without any explanation.   The use on Respondent's web site suggests that Respondent is aware of Complainant.

 

Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See GD Searle & Co. v Celebrex Drugstore, FA 1239339 (FORUM Nov. 21, 2002)(finding that Respondent registered and used the domain name in bad faith pursuant to Policy 4 (b) (iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial web site.)

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <greensmokeva.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated:  January 20, 2017