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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nicoventures (Holdings) Limited, British American Tobacco (Brands) Limited v. Phil Smith

Case No. D2017-2344

1. The Parties

The Complainants are Nicoventures (Holdings) Limited and British American Tobacco (Brands) Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Baker & McKenzie, United Kingdom.

The Respondent is Phil Smith of Manchester, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <vapeandglo.com> and <vypeandglo.com> are registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on December 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on January 11, 2018. 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

The Complainants are part of the British American Tobacco group of companies, which is a multi-national supplier of tobacco and related products.

The Complainants are the owners of numerous registrations throughout the world for the trademarks VYPE and GLO. Those registrations include, for example:

United Kingdom trade mark number 00003002824 for the word mark VYPE, registered on October 11, 2013 in classes 5, 9, 10 and 34 for goods and services including electronic cigarettes, and

European Union Trade Mark number 015179922 for the word mark GLO, registered on July 6, 2016 in classes 9, 11 and 34 for goods and services including electronic vaporisers and cigarettes.

The Complainants are also the owners of a United Kingdom trade mark registration number 00003259414 for VYPE & GLO, registered on December 22, 2017 in Classes 34 and 35 for goods and services including cigarettes and related retail store services. The application for this trademark was filed on September 28, 2017.

Both of the disputed domain names were registered on September 27, 2017.

Neither of the disputed domain names appears ever to have resolved to any active website.

5. Parties’ Contentions

A. Complainants

The Complainants state that they have offered a vapour product under the trademark VYPE since 2013. They provide little information concerning their use of the mark GLO, save to say that both VYPE and GLO marks relate to “well-known e-cigarette brands” and are unique brand names in the vaping industry.

The Complainants rely on the VYPE and GLO trademarks referred to above and also their more recent trademark for VYPE & GLO.

The Complainants contend that each of the disputed domain names is identical or confusingly similar to their trademarks. They submit that the disputed domain name <vypeandglo.com> combines both of their trademarks for VYPE and GLO and is identical to the VYPE & GLO trademark, while the disputed domain name <vapeandglo.com> incorporates their mark GLO together with the term “vape” which is descriptive of the industry to which the mark relates.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. They say that they have not authorized the Respondent to register either of their trademarks as domain names and that the Respondent has not commonly been known by either of the disputed domain names. They also contend that no active website has ever been linked to either of the disputed domain names and that the Respondent has made no legitimate use of either of the disputed domain names or any demonstrable preparations for any such legitimate use.

The Complainants say that the disputed domain names have been registered and are being used in bad faith. They contend in particular that the Respondent can only have combined both the Complainants’ VYPE and GLO trademarks into a single domain name for the purpose of creating the false impression that the name will link to an official website connected with the brands in question.

The Complainants request the transfer of both of the disputed domain names to the Complainant, Nicoventures (Holdings) Limited.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case such as this where the Respondent has failed to respond, it is still necessary for the Complainants to demonstrate that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainants have established to the satisfaction of the Panel that they have well-established registered trademark rights for the marks VYPE and GLO in connection with “vaping” and e‑cigarettes. They also have a more recent registration for VYPE & GLO. The disputed domain name <vypeandglo.com> incorporates both the Complainants’ VYPE and GLO trademarks with the addition only of the connector “and” and is virtually identical to the Complainants’ trademark VYPE & GLO. The disputed domain name <vapeandglo.com> incorporates the Complainants’ trademark GLO together with the descriptive term “vape”, which relates to an activity for which the mark is registered and does not, in the view of the Panel, serve to distinguish that disputed domain name from the Complainants’ trademarks. In the circumstances, the Panel finds that both of the disputed domain names are confusingly similar to a trademark or service mark in which the Complainants have rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for the registration and use of the disputed domain names, or evidence of rights or legitimate interests in either of the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names.

C. Registered and Used in Bad Faith

Dealing first with the disputed domain name <vypeandglo.com>, the Panel finds that this domain name combines both of the Complainants’ trademarks VYPE and GLO, relating to e-cigarettes, and that the Respondent has offered no explanation for the choice of this domain name. In the view of the Panel, the Complainants’ trademarks are sufficiently distinctive, certainly when used in combination, clearly to infer that the Respondent registered this domain name with the Complainants’ trademarks in mind and with the intention of taking unfair advantage of the goodwill attaching to those trademarks.

The second of the disputed domain names, <vapeandglo.com>, combines the Complainants’ mark GLO with the descriptive term “vape”, which relates to the activity for which the mark is registered. Again, the Respondent has offered no explanation for the choice of this domain name and, particularly when considered in conjunction with the disputed domain name <vypeandglo.com>, the Panel again infers that the Respondent registered this disputed domain name with the Complainants’ trademarks in mind and with the intention of taking unfair advantage of the goodwill attaching to those trademarks.

While there is no evidence of the use of either of the disputed domain names for any active website, this is not a bar to a finding of bad faith when all the circumstances of the case point to that conclusion: see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case, the Panel finds that the only inference reasonably to be drawn from the Respondent’s registration of the disputed domain names was to create an association with the Complainants and their trade marks which, in all the circumstances of the case, the Panel finds to have been done in bad faith.

The Panel therefore concludes that each of the disputed domain names has been registered and is being used in bad faith.

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 names, <vapeandglo.com> and <vypeandglo.com>, be transferred to the Complainant Nicoventures (Holdings) Limited.

Steven A. Maier
Sole Panelist
Date: January 19, 2018

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