DECISION

 

R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc. v. Vijik Koji

Claim Number: FA2312002076338

 

PARTIES

Complainant is R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc. ("Complainant"), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Vijik Koji ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <vusepods.us>, registered with NameCheap, Inc.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 22, 2023; Forum received payment on December 22, 2023.

 

On December 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <vusepods.us> 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On December 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 17, 2024 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@vusepods.us. Also on December 28, 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.

 

Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 18, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: Multiple Complainants

Two parties, R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc., filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and Forum's Supplemental Rule 1(e). Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain name Registration" as the "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."  Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In this case, the Complaint states that both named Complainants are affiliated companies within the same corporate group, and that is substantiated by a page from the Securities Exchange Commission website listing both named Respondents as subsidiaries of Reynolds American, Inc. (Complaint Exhibit D).  This corporate relationship demonstrates a sufficient nexus among the named Complainants to meet the requirements of Supplemental Rule 1(e).  Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA 1840242 (Forum June 3, 2019) ("Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc.  . . . As the two Complainants in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding."), Bed Bath & Beyond Procurement Co, Inc. et al. v. shaoxuan li / lishaoxuan, FA 1829423 (Forum Mar. 11, 2019). The same is true of intellectual property holding companies and their corporate parents. GUESS IP Holder L.P. and VUSE?, Inc. v. New Ventures Services, Corp., FA 1825019 (Forum Feb. 10, 2019) ("Complainant GUESS IP Holder is a holding company concerned with Complainant GUESS, Inc.'s intellectual property. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity.").  It is thus proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to "Complainant" in this Decision, even though in the singular, are to both named Complainants.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant manufactures and distributes digital vapor cigarettes. It has rights in the VUSE mark through its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's domain name is identical and confusingly similar to Complainant's mark because it fully incorporates the mark, merely adding the generic term "pods" and a country-code top-level domain ("ccTLD").

 

Respondent has no rights or legitimate interests in the domain name. It has no relationship with Complainant and Complainant has not authorized it to use the VUSE mark, it is not commonly known by the domain name, and Respondent is not using the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use but instead uses it to pass off as Complainant and offer VUSE-branded goods in direct competition with Complainant and to phish for sensitive personal information from consumers.

 

Respondent registered and uses the domain name in bad faith. It is using it to pass off as Complainant and offer VUSE-branded goods for profit, by creating confusion with Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered or is being used in bad faith.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The VUSE mark was registered to Complainant with the USPTO (Reg. No. 4,230,347) on October 23, 2012 (TESS printout included in Complaint Exhibit L). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <vusepods.us> domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the mark, merely adding the generic term "pods" and a ccTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the Domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the VUSE mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

(ii)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(iii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iv)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it has no relationship with Complainant and Complainant has not authorized it to use the VUSE mark, (ii) it is not commonly known by the Domain name, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use but instead uses it to pass off as Complainant and offer VUSE-branded goods in direct competition with Complainant and to phish for sensitive personal information from consumers.  These allegations are addressed as follows: 

 

Complainant neither addressed nor offered any evidence bearing upon the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name. Complainants in usDRP cases can search the data bases of one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the domain name. Complainant registered its mark with the USPTO (TESS printout included in Complaint Exhibit L), and the mark has attained a significant share in the vaping market (copy of page on <journalnow.com> website included in Complaint Exhibit F). In light of Complainant's USPTO registration and its significant share in the vaping market, it is extremely unlikely that the USPTO or any other governmental trademark authority would register a trademark identical to <vusepods.us> or any other mark identical or similar to the Domain name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the domain name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the domain name.

 

Complainant states that Respondent is not an authorized vendor or licensee of Complainant and is not authorized to use the VUSE mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The WHOIS information furnished to Forum by the registrar lists "Vijik Koji" as the registrant of the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain name when the identifying information provided by WHOIS was unrelated to the Domain name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(iii).

 

Complaint Exhibit M consists of screenshots of the website resolving from the domain name. This website prominently displays the VUSE name and registered logos of Complainant and purports to offer VUSE-branded products for sale. It represents itself as sponsored by a firm named Vuse, "a limited company," and bills itself as an online vape shop. The website design and appearance do not copy or mimic those of Complainant's website at <vusevapor.com> as illustrated in Complaint Exhibit J but Respondent is clearly passing off as Complainant or as an authorized dealer of Complainant's products and competing with Complainant. Passing off as a complainant or authorized dealer and offering to sell a complainant's products does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). ¹

 

Complainant alleges that Respondent is using the checkout page on its website to solicit sensitive personal information from consumers. Complaint Exhibit P is a screenshot of that page. It solicits the name, address, phone number and email address of the customer. This, in and of itself, does not amount to phishing, which is which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. The webpage also states, however, that it is not possible to purchase Respondent's goods using the website and invites the customer to contact Respondent if he or she wishes "to make alternate arrangements."  Complainant speculates that this might be the manner in which Respondent harvests information such as credit card numbers, which would qualify as phishing. This does raise suspicion, but there is no evidence that phishing actually occurs.  In the absence of such evidence the Panel declines to find phishing.

 

Nevertheless, with the evidence Complainant did present, it has made its prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and without authorization purporting to sell Complainant's products, Respondent is clearly using the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. The evidence does not disclose whether Respondent is actually selling the products advertised on its website or fraudulently representing that it does, collecting money from the customer and then not delivering the goods. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (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).").

 

As discussed above, Respondent is using the domain name to pass off as Complainant. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Next, Respondent registered and is using the domain name, which incorporates and is confusingly similar to the VUSE mark, but Respondent has no legitimate connection with that mark or its owner, the Complainant. In light of the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) ("[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue."), Google LLC v. Noboru Maruyama / Personal, FA 1879162 (Forum Mar. 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").

 

Finally, although not argued by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in September 2023 (WHOIS printout submitted as Complaint Exhibit A shows registration date). Complainant had been using its mark at least since 2010 by then (TESS printout included in Complaint Exhibit A shows application for USPTO registration in that year). More importantly, Respondent was sufficiently aware of Complainant and its mark to use Complainant's name and product lines in its own website. There is no question that it had actual knowledge of Complainant and its rights in the VUSE mark when it registered the Domain name. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons above set forth, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

Charles A. Kuechenmeister, Panelist

Dated: January 19, 2024