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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nu Mark LLC v. Registration Private, Domains By Proxy, LLC / Ashton Kelley

Case No. D2017-1983

1. The Parties

Complainant is Nu Mark LLC of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Ashton Kelley of Sacramento, California, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <greensmokeindustries.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 17, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2017. A Response was filed with the Center on October 19, 2017.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on November 16, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant develops and markets tobacco products, including electronic vapor products, and other products for use with the electronic vapor products. Complainant began selling electronic vapor products in November 2004. Complainant owns several trademark registrations for GREEN SMOKE products, including United States trademark No. 3860744, registered on October 12, 2010. Complainant sells its GREEN SMOKE products on its website "www.greensmoke.com", which was registered on February 12, 2004.

Respondent registered the disputed domain name on April 13, 2017. Respondent uses the disputed domain name to host a parked webpage with click-through ads for various companies and products, some of which are direct competitors to Complainant.

5. Parties' Contentions

A. Complainant

Complainant asserts it has rights in the GREEN SMOKE trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's GREEN SMOKE mark in its entirety, and that the only difference between Complainant's mark and the disputed domain name is the addition of the generic term "industries". Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent filed a Response with the Center on October 19, 2017. In Section C of the Response, Respondent states that "The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s)."

6. Discussion and Findings

A salient fact in this dispute is that Respondent apparently consents to the remedy requested by Complainant, which is to transfer the disputed domain name to Complainant. Though Panels in prior UDRP Decisions have differed on whether a Panel can transfer the disputed domain name without consideration of the UDRP factors, it is clear that a Panel has discretion whether to continue with the analysis or immediately transfer the disputed domain name. See, e.g., Brownells, Inc v Texas International Properties Associates, WIPO Case No. D2007-1211. This Panel finds that Respondent's consent to transfer provides a basis for an order for transfer without a need for consideration of the UDRP grounds. Pierre Balmain SA v Domains by Proxy LLC/Daniel Phillips, WIPO Case No. D2015-0189, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), section 4.10.

However, in an abundance of caution, this Panel will consider the UDRP factors, since Respondent states that "[t]he Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s)."Emphasis added. It is not completely clear what Respondent meant by the emphasized language.

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

As set forth above, Complainant owns various trademark registrations for its GREEN SMOKE mark. The disputed domain name is confusingly similar to Complainant's GREEN SMOKE mark, as it contains Complainant's GREEN SMOKE mark in its entirety. The only difference between Complainant's mark and the disputed domain name <greensmokeindustries.com> is the addition of the common word "industries". Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from a complainant's mark or preclude a finding of confusing similarity. See, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Accordingly, the Panel finds that Complainant has rights in the GREEN SMOKE mark and that the disputed domain name is confusingly similar to Complainant's mark. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Complainant has exclusive rights in the GREEN SMOKE mark and has not authorized Respondent to register and use the disputed domain name. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the GREEN SMOKE mark. Respondent is not known under the mark. Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain name or makes a bona fide offering of goods or services using the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.

Though Respondent filed a Response, it has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

[…]

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location."

It is difficult to conceive that Respondent did not know of Complainant's mark when it registered the disputed domain name. As set forth above, the GREEN SMOKE products and services are protected by various US trademark registrations. Complainant's registration and use of the GREEN SMOKE mark for its products and services occurred before Respondent registered the disputed domain name on April 13, 2017. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests."

The disputed domain name reverts to a landing page that displays links to third-party websites. Respondent's website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant's competitors sell similar goods and services. This creates a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service. It has long been held that this type of click through revenue violates the Policy under paragraph 4(b)(iv). See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

The Panel finds that Respondent has registered and used the domain name in bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <greensmokeindustries.com> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Date: November 30, 2017

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