HELIX INNOVATIONS LLC v. DOMAIN ADMINISTRATOR
Claim Number: FA2301002026208
Complainant is HELIX INNOVATIONS LLC (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is DOMAIN ADMINISTRATOR (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carryonnicotinepouches.com>, registered with Dynadot, 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 January 3, 2023; Forum received payment on January 3, 2023.
On January 6, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <carryonnicotinepouches.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 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@carryonnicotinepouches.com. Also on January 11, 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 February 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is a leading manufacturer of nicotine pouches and claims rights in the ON!, trademark, established by its ownership of its trademark registrations described below and furthermore claims rights in the CARRY ON! NICOTINE POUCHES mark on foot of its pending trademark applications before the USPTO, also described below.
Complainant submits that its ON! branded nicotine pouches are tobacco leaf-free and are available in seven flavors and five nicotine levels, and asserts that as of December 31, 2021, its ON! branded products were available for sale in approximately 117,000 U.S. retail stores.
Complainant complains that the disputed domain name was registered on May 7, 2022, three days after Complainant's filing of USPTO trademark applications for CARRY ON! NICOTINE POUCHES and CARRY ON! on May 4, 2022.
Complainant argues that the disputed domain name is nearly identical to, and confusingly similar to, the ON! and CARRY ON! NICOTINE POUCHES marks in which Complainant claims rights.
Complainant submits that when comparing the disputed domain name to the Complainant's marks, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the marks in which Complainant has rights. See Rollerblade, Inc. v. Chris McCready, WIPO Case No. D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant further argues that the disputed domain name is confusingly similar to Complainant’s ON! trademark because it incorporates the trademark in its entirety (absent an exclamation point), and adds “carry”, “nicotine”, and “pouches” and the gTLD “.com.” Generally, panels have found these types of changes are insignificant under a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, Claim FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Complainant argues that furthermore the addition of a generic term that relates to a complainant’s line of business can actually enhance confusion. See e.g., PADI Americas, Inc. v. MPM Administration, Claim FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term ‘vacations’ in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”)
Referring to the Registrar’s WHOIS record, Complainant next alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name because Respondent has not been commonly known by the disputed domain name, and upon information and belief, at the time Respondent registered the disputed domain name it had no trademark or intellectual property rights in the disputed domain name See Policy ¶ 4(c)(ii).
Complainant adds that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).
Complainant further argues that Respondent fails to use the disputed domain name <carryonnicotinepouches.com> for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use.
Referring to screen capture of a website to which the disputed domain name redirects Internet traffic, which is exhibited in an annex to the Complaint, Complainant submits that the screen capture shows that Respondent is offering the disputed domain name for sale generally to the public for a price of $995.
Complainant submits that such a general offer for sale of a domain name does not constitute a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See University of Rochester v. Park HyungJin, Claim FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Also see Reese v. Morgan, Claim FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Complainant next alleges that the disputed domain name was registered and being used in bad faith
Complainant points the fact that the disputed domain name was registered on May 7, 2022, which is 3 days after Complainant filed its application for registration of CARRY ON! NICOTINE POUCHES as a trademark on May 4, 2022, as shown in the details of the pending application with the USPTO, which are exhibited In an annex to the Complaint.
The short interval between Complainant’s trademark filing and Respondent’s registration of <carryonnicotinepouches.com> points to Respondent’s opportunistic bad faith under Policy ¶ 4(a)(iii). Complainant argues that this timing is not a coincidence and indicates opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have agreed with this suspicious timing argument. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, Claim FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Respondent had knowledge of Complainant and its mark, due to the fame of its ON! trademark.
Additionally, Complainant argues that the exhibited screen capture of the website to which the disputed domain name redirect traffic shows that the disputed domain name was registered and is being used to make an offer of sale of the disputed domain name to the general public for $995 USD, which is an amount is in excess of Respondent’s reasonable out-of-pocket costs associated with the registration of the disputed domain. Complainant submits that this shows Respondent’s bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Market-place*** c/o Dynadot, Claim FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of nicotine pouches and is the owner of the following United States of America trademark registrations:
|
Mark |
Registration Number |
Date of Registration |
Type |
Classes |
|
ON! |
4838775 |
October 27, 2015 |
standard character mark |
Goods in international class 34 |
|
[IMAGE OF MARK OMITTED] |
4990851 |
July 5, 2016 |
design plus words, letters, and/or numbers |
Goods in international class 34 |
|
ON! |
6710428 |
April 26, 2022 |
standard character mark |
Goods in international class 34 |
Complainant is also the owner of the following pending trademark applications at the United States Patent and Trademark Office (“USPTO”).
· CARRY ON! NICOTINE POUCHES Pending Application Filed May 4, 2022, Serial No. 97394343;
· CARRY ON! NICOTINE POUCHES Pending Application Filed May 4, 2022, Serial No. 97394346;
· CARRY ON! Pending Application Filed May 4, 2022, Serial No. 97394333;
· CARRY ON! Pending Application Filed May 4, 2022, Serial No. 97394335
The disputed domain name was registered on May 7, 2022, and redirects Internet traffic to a website on which Respondent purports to offer it for sale for $995.
There is no information available about Respondent, who has availed of a privacy service to conceal its identity, except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
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’s Rights
Complainant claims trademark rights in the ON! and CARRY ON! NICOTINE POUCHES trademarks.
Test Applicable to the Existence of Rights in a Trademark.
Complainant has provided convincing, uncontested evidence of its rights in the ON! mark, established by the ownership of the portfolio of trademark registrations described above and its use of the mark to distinguish its nicotine pouch products.
Complainant makes no claim to have any registered rights in the CARRY ON! NICOTINE POUCHES mark but bases its claims on its based on its ownership of a number of applications for registration of the trademark. Details of the applications are given above.
In the applications, Complainant lists its abovementioned prior registrations of the ON! marks as being the relevant “Prior Registrations” for the purposes of the applications, but there is no reference to any prior registrations that might contain the phrase: “CARRY ON! NICOTINE POUCHES”.
Complainant has not adduced any evidence of any trademark use of the phrase CARRY ON! NICOTINE POUCHES, which might have resulted in the establishment common law rights in an unregistered mark.
The marketing material which Complainant has exhibited to prove its reputation in the marketplace refers to its ON! mark but has no reference to any use of CARRY ON! NICOTINE POUCHES as a mark.
It is well established that the bar facing a complainant in establishing rights in a trademark is low, however a complainant is expected to reach a satisfactory standard of proof. Assistance may be gained from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.
1.1.4 A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).”
Further on, the WIPO Overview 3.0 addresses the consensus view on the test for unregistered common law rights which is also of assistance:
“1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
This Panel finds therefore that Complainant has not adduced any evidence of registered or unregistered common law trademark rights in the CARRY ON! NICOTINE POUCHES mark. The pending applications on which it relies do not create such rights by themselves as stated in the WIPO Overview 3.0, and Complainant has not adduced any evidence that the “mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.”
As Complainant has not proven that it has yet established any rights in the CARRY ON! NICOTINE POUCHES mark, this Panel proceeds therefore to compare only the ON! mark only with the disputed domain name.
Comparison Test
The disputed domain name <carryonnicotinepouches.com> consists of the words “carry on nicotine pouches” together with the generic Top-Level Domain (“gTLD”) extension <.com>.
While Complainants ON! mark contains the punctuation point <!>, this Panel is of the view that in making the comparison the presence of exclamation point may be ignored for the purposes of comparison as would typically be the case in decisions under the Policy. It is frequently noted that punctuation points are not permitted in domain names.
In making the comparison, this Panel again takes guidance from the WIPO Overview 3.0 which states in answer to the question: “1.7 What is the test for identity or confusing similarity under the first element?”
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
In this proceeding, the difficulty facing Complainant is that when the disputed domain name <carryonnicotinepouches.com> is placed side by side with ON! mark it is not visually similar.
When the words “carryonnicotinepouches” or “carryonnicotinepouches.com” are spoken, they bear no aural similarity with the word “ON!”
Importantly the word “on” cannot be described as the dominant element in the disputed domain name.
As noted in the WIPO Overview 3.0, it is frequently stated that a complainant will satisfy the test for confusing similarity once the mark is present in its entirety in the domain name at issue. In this proceeding however, it would make no sense to hold that once the letters “on” appear in a domain name, a panel should find that there is confusing similarity.
This Panel finds therefore that the disputed domain name is neither identical nor confusingly similar to the ON! mark in which Complainant has rights.
Complainant has failed to prove the first threshold element of the test in Policy ¶ 4(a)(i).
As Complainant has failed to prove the first threshold element of the test in Policy ¶ 4(a)(i), it is neither necessary nor appropriate for this Panel to make a determination in relation to the test in Policy ¶ 4(a)(ii).
As Complainant has failed to prove the first threshold element of the test in Policy ¶ 4(a)(i), it is neither necessary nor appropriate for this Panel to make a determination in relation to the test in Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <carryonnicotinepouches.com> domain name REMAIN WITH Respondent.
______________________________________
James Bridgeman SC
Panelist
Dated: February 8, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page