DECISION

 

R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc. v. jxck toliver

Claim Number: FA2404002093504

 

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 jxck toliver ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vusementholvapes.com>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 16, 2024; Forum received payment on April 16, 2024.

 

On April 16, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <vusementholvapes.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 April 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@vusementholvapes.com. Also on April 17, 2024, 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 May 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "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." 

 

There are two Complainants in this matter: R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc.. Complainants argue that R.J. Reynolds Vapor Company and its affiliate RAI Strategic Holdings, Inc. are affiliated companies with the same corporate group.

 

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 Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.

 

The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that has been and is engaged in the manufacture, distribution and sale of tobacco and nicotine products (including electronic cigarettes, pods and cartridges filled with e-liquid), and accessories and related products. Complainant is focused specifically on offering innovative and enjoyable products for adult tobacco consumers. In particular, Complainant is focused on developing, manufacturing and delivering innovative, enjoyable alternatives to traditional combustible and smokeless tobacco products, such as, by way of example, vapor products. In 2013, Complainant launched the world's first fully digital vapor cigarette under the name and mark VUSE. Since its launch, VUSE has enjoyed tremendous popularity and has become a leading brand in the vapor industry with more than a 40% share of the e-cigarette market in the United States. The first product in the VUSE line of products was VUSE Solo, a digital e-cigarette that uses prefilled cartridges that come in various flavors, is patterned in the form of a traditional cigarette and houses a rechargeable battery. Since then, Complainant has introduced other VUSE products, including (i) VUSE Alto is the leading brand in the United States in the large capacity pod-based format and it features an innovative ceramic wick and alloy heating element, (ii) VUSE Vibe, a large capacity closed-tank system and (iii) VUSE Ciro, a clear cartridge-based system with an innovative ceramic wick. Complainant provides information on its VUSE products through websites at <vusevapor.com>, <vuse.com> and <vusevape.com> that require age (21 and older) verification and credentials before accessing the websites. Complainant asserts rights in the VUSE mark through its registration in the United States in 2012.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its VUSE mark as it incorporates the mark in its entirety and merely adds the descriptive/generic terms "menthol vapes" together with the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HOME DEPOT mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to attract and redirect web traffic to a website that is meant to appear as an official website of Complainant or for Complainant's VUSE products through the repeated and prominent use of Complainant's VUSE mark and logos and other indicia, when in fact there is no connection between Respondent and Complainant. The resolving website purports to offer for sale Complainant's products, however it is not clear whether Respondent is selling any approved VUSE products, as opposed to using the disputed domain name for a nefarious scheme, particularly as Respondent requires consumers who want to purchase products to ultimately contact Respondent to complete payment for an order (which can only be done through unilateral payments via Zelle, Bitcoin or Cash App), and given that Respondent solicits much personal information on its "checkout page." Indeed, several of the products offered by Respondent are not even products offered for sale in the United States by Complainant. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and in furtherance of a scam and/or phishing. Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the VUSE mark. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark VUSE and uses it to market smokeless tobacco products.

 

Complainant's rights in its mark date back to at least 2012.

 

The disputed domain name was registered in 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The resolving website mimics Complainant's legitimate website and purports to be associated with Complainant; it displays Complainant's mark and information related to Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's VUSE mark in its entirety, merely adding the generic/descriptive terms "menthol vapes", together with the ".com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)."). Here, the WHOIS information of record identifies the registrant as "jxck toliver". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent may not actually be delivering any products, so that the resolving website is a scam. It further alleges that the resolving website may be used to phish for users' personal information. As discussed below, other elements are dispositive for the instant case, so the panel need not consider these allegations.

 

Both the disputed domain name itself, and the content of the resolving website, falsely suggest that they are associated with Complainant. That is not a fair or legitimate use of the disputed domain name. Indeed, according to paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): "Fundamentally, a respondent's use of a domain name will not be considered 'fair' if it falsely suggests affiliation with the trademark owner …". See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, D2014-1359 (WIPO, Oct. 28, 2014); see also Qualcomm Incorporated v. Qualcomm Tech, FA 2004546 (Forum Aug. 17, 2022) (finding that a resolving website that "mimics Complainant's website, display[s] Complainant's mark, logo, and tagline; and it displays links to Complainant's own social media platforms" is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name). Consequently the Panel finds that Respondent has failed to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established "[s]ince the disputed domain names contain entire versions of Complainant's marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant's affiliation with the resulting search engine website."). Thus the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving website displays Complainant's mark and information related to Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also 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). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(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 <vusementholvapes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Richard Hill, Panelist

Dated: May 8, 2024