Candle Science, LLC v. Виктория Муляр
Claim Number: FA2304002040382
PARTIES
Complainant is Candle Science, LLC (“Complainant”), represented by Heather Smith-Carra of Banner & Witcoff, Ltd., Washington D.C., USA. Respondent is Виктория Муляр (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <candle-science.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 17, 2023; Forum received payment on April 17, 2023.
On April 18, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <candle-science.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 April 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2023 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@candle-science.com.
Also on April 19, 2023, 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.
Also on April 19. 2023, Respondent filed an informal response to the Complaint.
On May 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist and advised the Parties of same, noting that Respondent had not filed a formal Response to the Complaint.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CANDLESCIENCE mark established by its ownership of the portfolio of registrations described below and the goodwill which it has established by its use of the mark since at least August 2002 during which time it claims to have invested significant resources in the advertisement, promotion, and protection of the mark.
Complainant alleges that the disputed domain name <candle-science.com> is nearly identical and is confusingly similar to the CANDLESCIENCE mark in which it has rights because the disputed domain name fully incorporates Complainant’s mark. See Hurwitz Mintz Finest Furniture Store S., LLC v. Nguyễn Văn Lư, FA 2204001991492 (Forum May 16, 2022) (“Respondent’s <hurwitzmintzfurniture.com> domain name is confusingly similar to Complainant’s mark since it incorporates the entire HURWITZ MINTZ mark[.]”).
Complainant argues that the only difference between the disputed domain name and Complainant’s CANDLESCIENCE mark is the addition of a hyphen, which it argues does not dispel the confusing similarity with Complainant’s mark. See Cullen/Frost Bankers, Inc. v. Bobby Jones, FA 2204001993962 (Forum May 30, 2022) (“Adding a hyphen to a mark and adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i).”).
Complainant adds that the presence of the generic Top Level Domain (“gTLD”) <.com> extension in the disputed domain name does not alter this conclusion because the gTLD is a required signifier of a domain name. See Bridgewater Assocs., LP v. Mike Manning, FA 2204001993729 (Forum May 27, 2022) (finding the Domain Name <bridgewatercapitalgam.com> confusingly similar to Complainant’s registered mark, BRIDGEWATER, when incorporating the entire mark with an additional generic word and a gTLD).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant has used its registered trademark CANDLESCIENCE in continuous and open business practices since at least August 2002. Complainant emphasizes that its CANDLESCIENCE mark was registered in 2009 and that the mark is incorporated in its own domain name and the website to which it resolves at <www.candlescience.com>.
Complainant submits that Respondent, who is known as Виктория Муляр, according to the WhoIs for the disputed domain name is not now and has never been known as “CANDLESCIENCE” or “CANDLE-SCIENCE”. Complainant asserts that Respondent’s name in transliteration is “Viktoria Mulyar”.
Complainant asserts that to the best of its knowledge, Respondent did not use any mark similar or related to CANDLESCIENCE until she registered the disputed domain name in January 2023.
Complainant argues that Respondent knew, or should have known of Complainant’s rights in the CANDLESCIENCE mark when Respondent began to use the mark, and subsequently to pass herself off as Complainant.
Complainant further asserts that it has never authorized Respondent to use its CANDLESCIENCE mark, or to register domain names incorporating the mark.
Complainant refers to a screen capture exhibited in an annex to the Complaint which shows that prior to April 6, 2023, the website to which the disputed domain name resolved, offered fragrance products, which Complainant alleges constituted a blatant attempt to trade off Complainant’s respected reputation as a fragrance, candle and soap product retailer, and clearly demonstrates bad faith under ¶ 4(b)(iv) of the Policy. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that such use of the disputed domain name illustrates that Respondent does not make any bona fide offering of goods or services, or make a legitimate noncommercial use, or fair use of the disputed domain name. See Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 0903001250363 (Forum Apr. 22, 2009) (“The Panel finds that the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Complainant adds that sometime between April 5, 2023, and April 6, 2023, the disputed domain name stopped resolving to any website content and at the time of submission of this Complaint resolved to an inactive page.
Complainant submits that Respondent’s passive holding of the disputed domain name does not establish rights or legitimate use.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CANDLESCIENCE mark when it registered the disputed domain name, as evidenced by at least Respondent’s incorporation of Complainant’s registered trademark in the disputed domain name.
Complainant adds that as shown in the screen capture of the website to which the disputed domain name initially resolved which is exhibited in an annex to the Complaint and referred to above, Respondent initially used the disputed domain name, to direct Internet traffic to a website trading off Complainant’s business reputation, and subsequently Respondent has passively held the disputed domain name.
Specifically, Complainant argues that such use of the disputed domain name as the address of a website that offered fragrance products competing with Complainant’s own products constituted a blatant attempt to trade off Complainant’s respected reputation as a fragrance, candle and soap product retailer, and clearly demonstrates bad faith under ¶ 4(b)(iv) of the Policy. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that such use of the disputed domain name shows Respondent’s clear intention to use the disputed domain name to deceive consumers and divert Internet traffic which is plainly bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. Yinsi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)”).
Complainant adds that Respondent’s current passive holding of the disputed domain name is further evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Finally, it is contended that Respondent’s registration of the disputed domain name prevents Complainant from reflecting its mark in the disputed domain name, adding that the disputed domain name, which contains Complainant’s house mark, would be valuable to Complainant. See President & Fellows of Harvard College v. Harvard Professional University / Educational services, FA1911001873165 (Forum Dec. 24, 2019) (“Complainant’s principal web site is located at <harvard.edu> but the Domain Name, which adds to Complainant’s mark a common abbreviation for “university,” is such that it could easily be useful or valuable to Complainant for attracting Internet users to its site. Respondent’s conduct in this regard fits within the circumstances set forth in Policy ¶ 4(b)(ii) and is further evidence of bad faith registration.”).
B. Respondent
Respondent failed to submit a formal Response in this proceeding, however on April 19. 2023, Respondent sent an email to the “Good day ! I don't understand English, but if I'm not mistaken, the conversation is about the domain candles-since.com This domain is no longer active. This site is no longer used. I tried to delete it but I can't do it. Again, we no longer use this name and domain”.
Complainant is a retailer of fragrances, candles and soaps and is the owner of the following portfolio of registered trademarks:
· United States registered trademark CANDLESCIENCE, registration number 6083881, registered on the Principal Register on June 23, 2020 for goods in international class 21
· United States registered CANDLESCIENCE, registration number 3605099, registered on the Principal Register on April 14, 2009, for goods in international class 41.
· United States registered CANDLESCIENCE CLEAN SCENTS, registration number 6252400, registered on the Principal Register on January 19, 2021 for goods in international class 3.
· United States registered CANDLESCIENCE CLEAN SCENTS and Design, registration number 6586177, registered on the Principal Register on December 14, 2021 for goods in international class 3.
· United States registered CANDLESCIENCE CLEAN SCENTS, registration number 6241781, registered on the Principal Register on January 5, 2021 for goods in Class 1.
Complainant has an established Internet presence and is the owner of the domain name <candlescience.com> which was created on July 20, 2020 and resolves to Complainant’s website at <www.candlescience.com>.
Since it was registered on July 20, 2023, the disputed domain name has resolved to a website with the look and feel of Complainant’s website, with Cyrillic script, displaying products that are packaged almost identical to Complainant’s products and providing contact details that include a telephone number with a Ukrainian country code and a reference to a domain name <candlescience.ua>. Subsequently as of April 6, 2023, did not resolve to any active website.
Aside from an informal response on April 19, 2023, sent by email by Respondent to the Forum, there is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
In said email, Respondent stated:: “Good day ! I don't understand English, but if I'm not mistaken, the conversation is about the domain candles-since.com This domain is no longer active. This site is no longer used. I tried to delete it but I can't do it. Again, we no longer use this name and domain”
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 has provided convincing, uncontested evidence that it has rights in the CANDLESCIENCE mark, established by the ownership of the portfolio of trademark registrations described above.
Furthermore the Complainant’s uncontested evidence is that it has established an international goodwill and reputation in the mark by extensive use in the sale of fragrances, candles and soaps, including on its website at <www.candlescience.com>.
The disputed domain name <candle-science.com> consists of Complainant’s CANDLESCIENCE mark in its entirety but with the elements “candle” and “science” separated by a hyphen.
Complainant’s CANDLESCIENCE mark is the dominant and only distinctive element in the disputed domain name. The hyphen adds no distinguishing character to the disputed domain name as it merely separates the two words which constitute the mark.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the CANDLESCIENCE mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant has used its confusingly similar trademark CANDLESCIENCE in continuous and open business practices since at least August 2002; the CANDLESCIENCE mark was registered in 2009 and the mark is incorporated in Complainant’s own domain name and the website to which it resolves at www.candlescience.com;
· The WhoIs for the disputed domain name shows that Respondent, is known as Виктория Муляр, being “Viktoria Mulyara” in transliteration and is not now, and has never been, known as “CANDLESCIENCE” or “CANDLE-SCIENCE”;
· Respondent did not use any mark similar or related to CANDLESCIENCE until she registered the disputed domain name in January 2023;
· Respondent knew, or should have known of Complainant’s rights in the CANDLESCIENCE mark when Respondent began to use the mark, and subsequently to pass herself off as Complainant;
· Complainant has never authorized Respondent to use its CANDLESCIENCE mark, or to register domain names incorporating the mark;
· The screen capture exhibited in an annex to the Complaint shows that prior to April 6, 2023, the website to which the disputed domain name resolved, offered fragrance products, which compete with Complainant’s offerings which constitutes a blatant attempt to trade off Complainant’s respected reputation as a fragrance, candle and soap product retailer;
· such use of the disputed domain name illustrates that Respondent does not make any bona fide offering of goods or services, or make a legitimate noncommercial use, or fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has not denied these allegations or adduced any proof of its rights or interests in the disputed domain name but has merely stated in its informal response: “Good day ! I don't understand English, but if I'm not mistaken, the conversation is about the domain candles-since.com This domain is no longer active. This site is no longer used. I tried to delete it but I can't do it. Again, we no longer use this name and domain”
Respondent has therefore failed to discharge the burden of production, and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the CANDLESCIENCE mark which predate the registration and first use of the disputed domain name on July 20, 2023.
The combination of the words “candle” and “science” is unusual and distinctive. It is most improbable that the disputed domain name which is composed of only the CANDLESCIENCE mark, albeit with a hyphen separating the “candle” and “science” elements, in combination with the gTLD extension, was chosen and registered without knowledge of Complainant, its mark, name and business.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind.
The uncontested evidence is that the disputed domain name does not presently resolve to any active website and this has been confirmed by Respondent in her abovementioned informal response on April 19, 2023.
The veracity of the screen capture of the website to which the disputed domain name previously resolved, which has been adduced in evidence, has not been challenged by Respondent,
Respondent has not provided any evidence that it has any rights or legitimate interests in the disputed domain name. The disputed domain name currently does not resolve to any active website.
It is not contested that it has previously resolved to a website that offered products which compete with Complainant’s product range.
The screen capture which has been adduced in evidence shows that the text of Respondent’s website was primarily in Cyrillic script. It is lamentable that Complainant, which appears to be a well-resourced enterprise has not provided a certified translation of the script.
However, given that Respondent has not denied the allegations in the Complaint, that the look and feel and of Respondent’s website, and the images that were displayed on it, were clearly designed to pass off Respondent’s goods as those of Complainant, this Panel has not requested any translation.
In the above circumstances, this Panel finds that the passive holding of the disputed domain name by Respondent constitutes use in bad faith for the purposes of the Policy.
Even allowing Respondent the benefit of any doubt, if her claims that she does not understand English are true, her email in the English language shows that she has access to translation services and is capable of addressing the issues raised in the Complaint. Furthermore her claim that she cannot “delete” the disputed domain name is no defense. She has used the disputed domain name to engage in passing off and remains responsible for its registration.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <candle-science.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 15, 2023
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