Evergreen Management Services, LLC v. Fedorovich Anna
Claim Number: FA2104001942715
Complainant is Evergreen Management Services, LLC ("Complainant"), represented by Edmond DeFrank, California, USA. Respondent is Fedorovich Anna ("Respondent"), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dimeindustries.org>, registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2021; the Forum received payment on April 23, 2021.
On April 29, 2021, Guangdong Nicenic Technology Co., Ltd. dba NiceNIC confirmed by email to the Forum that the <dimeindustries.org> domain name is registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC and that Respondent is the current registrant of the name. Guangdong Nicenic Technology Co., Ltd. dba NiceNIC has verified that Respondent is bound by the Guangdong Nicenic Technology Co., Ltd. dba NiceNIC 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 May 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@dimeindustries.org. Also on May 6, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 May 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a wholesaler of electronic cigarette cartridges and related products under the DIME and DIME INDUSTRIES marks. Complainant owns a United States trademark registration for DIME in standard character form, issued in September 2020 and reflecting a first use date of August 2016. Complainant also owns California state trademark registrations for DIME INDUSTRIES and DIME in stylized form; has a United States trademark application pending for DIME INDUSTRIES in stylized form; and asserts common law trademark rights in DIME INDUSTRIES. Complainant owns the domain name <dimeindustries.com>, which it has used in connection with its business since 2017.
Respondent registered the disputed domain name <dimeindustries.org> in October 2020. The domain name is being used for a website that displays Complainant's DIME INDUSTRIES mark in the same stylized form used by Complainant, along with images of products bearing Complainant's stylized DIME mark. Complainant states that these are unauthorized and counterfeit versions of Complainant's products, and that they are being offered illegally because they are not licensed or registered under California law, contrary to the statements on Respondent's website. Complainant states that it has no association with Respondent, has not authorized Respondent to use its marks, and has never provided any of its products to Respondent for resale.
Complainant contends on the above grounds that the disputed domain name <dimeindustries.org> is identical or confusingly similar to its DIME and DIME INDUSTRIES marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <dimeindustries.org> incorporates Complainant's registered DIME trademark, adding the generic term "industries" and the ".org" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Inter IKEA Systems B.V. v. Abhishek Goel, D2015-1731 (WIPO Dec. 11, 2015) (finding <ikeaindustries.org> confusingly similar to IKEA). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark DIME without authorization and corresponds to the DIME INDUSTRIES name under which Complainant does business and in which Complainant asserts trademark rights. It is being used for a website that attempts to pass off as Complainant, displaying Complainant's mark(s) and logo and marketing what appear to be counterfeit versions of Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Brooks Sports, Inc. v. whbost / Jennifer Fabre, FA 1930268 (Forum Mar. 3, 2021) (finding lack of rights or interests in similar circumstances); JUUL Labs, Inc. v. Ethan Wilson, FA 1892660 (Forum May 18, 2020) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent'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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's registered DIME mark and corresponding to Complainant's trade name and putative mark DIME INDUSTRIES, and is using the domain name for a misleading website that attempts to pass off as Complainant, displaying Complainant's mark(s) and logo and offering what appear to be counterfeit versions of Complainant's products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Brooks Sports, Inc. v. whbost / Jennifer Fabre, supra (finding bad faith in similar circumstances); JUUL Labs, Inc. v. Ethan Wilson, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dimeindustries.org> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 1, 2021
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