Phil Hon ROVE LLC - Rovebrand.com v. THELMAT CULVER
Claim Number: FA2106001952239
Complainant is Phil Hon / ROVE LLC - Rovebrand.com (“Complainant”), represented by Phil Hon, California, USA. Respondent is THELMAT CULVER (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rovecart.com>, registered with NameCheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2021; the Forum received payment on June 22, 2021.
On June 23, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <rovecart.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 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@rovecart.com. Also on June 29, 2021, 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 July 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Phil Hon ROVE LLC – Rovebrand.com, manufactures and sells electronic cigarettes and vaporizer products. Complainant has rights in the ROVE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,436,219, registered Apr. 3, 2018). Respondent’s <rovecart.com> domain is confusingly similar to Complainant’s ROVE mark, only differing by adding the generic term “cart” (short for cartridge) and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <rovecart.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the ROVE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to sell counterfeit versions of Complainant’s products using the disputed domain name.
Respondent registered and uses the <rovecart.com> domain name in bad faith. Respondent attempts to sell counterfeit versions of Complainant’s products, displaying both bad faith disruption and attraction for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Phil Hon / ROVE LLC - Rovebrand.com (“Complainant”), of Costa Mesa, CA, USA. Complainant is the owner of the domestic registration for the mark ROVE, which it has used continuously since at least as early as 2018 in connection with its production and sales of electronic cigarettes, refill cartridges, vaporizer pens, mouthpieces and other related goods and services.
Respondent is Thelmat Culver (“Respondent”), of Douala, Cameroon. Respondent’s registrar’s address is listed as Reykjavik, Iceland. The Panel notes that the disputed domain name was registered on or about December 18, 2020.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ROVE mark through its registration with the USPTO. Registration of a mark with a trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 5,436,219, registered Apr. 3, 2018). The Panel here finds that Complainant has rights in the ROVE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <rovecart.com> domain name is confusingly similar to Complainant’s ROVE mark, only differing by the addition of the generic term “cart” (short for cartridge) and the “.com” gTLD. Such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel here finds the disputed domain name is confusingly similar to Complainant’s ROVE mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <rovecart.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the ROVE mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record identifies “THELMAT CULVER” as the registrant of the disputed domain name and no other evidence is provided to indicate Respondent was ever authorized to use Complainant’s mark. The Panel here finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <rovecart.com> domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use, instead using the disputed domain to offer for sale counterfeit versions of Complainant’s ROVE branded vaporizer cartridges. Such use does not qualify as a bona fide offer of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant contends that the website previously displayed counterfeit versions of its products for sale, but that the website now resolves to an inactive website displaying an “under construction” page. The Panel here finds that to the extent Respondent previously attempted to sell counterfeit versions of Complainant’s products, Respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel notes that the disputed domain name’s resolving website appears to now resolve to an inactive page. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name may not be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Likewise, the Panel here finds that Respondent does not have rights or legitimate interests with respect to the domain name per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent registered and uses the <rovecart.com> domain name in bad faith as Respondent attempts to sell counterfeit versions of Complainant’s products. Such use displays both bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). As previously noted, Complainant claims that the website previously displayed counterfeit versions of its vaporizer refills for sale. However, the disputed domain now resolves to a webpage displaying a generic “under construction” page. To the extent Respondent’s website previously displayed counterfeits of Complainant’s goods using the disputed domain, Respondent registered and used the disputed domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The Panel again notes that currently the <rovecart.com> domain name’s resolving website is inactive, featuring no substantive content. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name’s resolving website may demonstrate bad faith registration and use. See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). The Panel here finds that Respondent’s inactive use indicates Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <rovecart.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 2, 2021
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