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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Midwest Tobacco Tube, Inc. v. David Ritchie d/b/a The Ghost Modder

Case No. D2014-0917

1. The Parties

The Complainant is Midwest Tobacco Tube, Inc. of Evendale, Ohio, United States of America ("US"), represented by Keating Muething & Klekamp PLL, US.

The Respondent is David Ritchie d/b/a The Ghost Modder of Phoenix, Arizona, US.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2014. On June 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Respondent filing a response was July 2, 2014. An informal communication from the Respondent was received by the Center on June 16, 2014.

The Center appointed Marylee Jenkins as the sole panelist in this matter on July 11, 2014. 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 Complainant bases the Complaint on trademark registrations in the US, United Arab Emirates, and the European Union ("CTM") for the mark HOT ROD or the mark HOT ROD TUBES MADE IN AMERICA and design (the "Complainant's Mark"), including US Reg. No. 4452604 for the mark HOT ROD for use with cigarette tubes and tobacco and US Reg. No. 4428603 for the mark HOT ROD TUBES MADE IN AMERICA and design for use with cigarette tubes and tobacco, both registered on November 5, 2013; and both alleging dates of first use of the marks in commerce dating to at least as early as March 2008 and CTM Reg. Nos. 011662004 and 011661956 for the mark HOT ROD TUBES MADE IN AMERICA and design and HOT ROD, respectively, both for use with tobacco, cigars, cigarettes, and cigarette tubes and both registered on July 25, 2013. The Complainant also is the registrant and owner of the domain name <greatmidwesttube.com>.

With respect to this dispute, the Domain Name <hotrodtubes.com> was registered on August 23, 2013 to the Respondent and is set to expire on August 23, 2014. The web page accessible at the Domain Name is currently a parking page of the Registrar.

5. Parties' Contentions

A. Complainant

The Complainant argues that the Domain Name is identical or confusingly similar to its trademark HOT ROD because the Domain Name contains the Complainant's HOT ROD mark in its entirety in combination with the word "tubes." The Complainant contends that the word "tubes" is descriptive when used in connection with goods in International Class 34 – the class of goods for which the Complainant's mark HOT ROD is registered and that the word "tubes" is a popular abbreviation for cigarette tubes. The Complainant argues that the combination of the word "tubes" with the Complainant's mark HOT ROD in the Domain Name does not negate the confusion caused by the Respondent's use of the Complainant's Mark in the Domain Name, but creates even greater confusion because Internet users would see the use of the word "tubes" with the Complainant's trademark HOT ROD in the Domain Name as a reference to the tobacco related products sold by the Complainant.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. Specifically, the Complainant argues that the Respondent has no connection or affiliation with the Complainant or any of its HOT ROD branded products and that the Respondent has not received any license, authorization, or consent to use the HOT ROD mark in a domain name or in any other manner. The Complainant also contends that the Respondent has never been known by the name HOT ROD or by the Domain Name. The Complainant also argues that the Respondent has not made any demonstrable preparations to use the Domain Name or the HOT ROD mark in connection with a bona fide offering of goods or services but that the Respondent has instead been known by the name "The Ghost Modder" and the domain names <thepricknation.com> and <ghostmodder.com>. The Complainant alleges that prior to notice of the instant dispute, the Respondent was not making, and had not made, a legitimate noncommercial or fair use of the Domain Name and that at the time the Respondent was using the Domain Name to redirect traffic from Internet users accessing the Domain Name to the website at "www.hotrodvapors.com", which was owned by a unrelated third party at that time. The Complainant alleges that the Respondent receives fees in the nature of pay-per-click referrals in connection with advertisements displayed within the content shown on the website accessible at the Domain Name.

The Complainant further alleges that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent registered the Domain Name for the purpose of disrupting the Complainant's business and the business of other competitors. The Complainant presented evidence that the Respondent redirected traffic from the Domain Name to the website at "www.hotrodvapors.com", a competitor of the Complainant that manufactures and sells tobacco-replacement goods. The Complainant alleges that there is no affiliation between the Respondent and Hot Rod Vapors, LLC, and that Hot Rod Vapors, LLC, also is a competitor of the Respondent, who the Complainant alleges sells tobacco and tobacco-replacement related goods under the name "The Ghost Modder" from the websites at "www.thepricknation.com" and "www.ghostmodder.com".

The Complainant also argues that the Respondent registered the Domain Name in an attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's HOT ROD mark. The Complainant alleges that since removing the "301 redirect" of the Domain Name, the Domain Name now links to a parked page of the Registrar with a "link farm" directing visitors to websites offering tobacco related goods that compete with the Complainant's goods. The Complainant, citing prior UDRP decisions, argues that the linking of the Domain Name to a parking page with pay-per-click links to the Complainant's competitors is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant further argues that the Respondent's bad faith is illustrated by the Respondent's failure to use the Domain Name other than to redirect traffic to a site of a competitor of the Respondent for the purpose of harassing that competitor. Citing a prior UDRP decision, the Complainant argues that the inaction of the Respondent in failing to use the Domain Name to connect to an active website (following the discontinuance of the redirection of the Domain Name to the website at "www.hotrodvapors.com") constitutes evidence of bad faith.

B. Respondent

The Respondent responded to the Complaint via an email dated June 16, 2014 stating that he has been making vaping products for over 7 years and "was in the motions of another product call [sic] hotrod tubes for vaping and this company mid west tobacco sued a company called hot rod vapors so I put it on the back burner to see the outcome." The Respondent also argued that the Complainant has been "bulling [sic] alot of people in the vaping industry they dont [sic] even have vaping products also looking at there [sic] trade mark 'hotrod' it is very vague on what they do… tobacco does not control the vaping industry so I am confused on this dispute." The Respondent further argued that while the Complainant may have the trademark HOT ROD, so do "500 other people" and that the Respondent is not "using hot rod." The Respondent also contends that he has "the domain hot rod tubes for my hotrod tube liquid which they do not do business in."

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Domain Name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

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

(ii) the Domain Name holder has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Mark.

A review of the second-level domain of the Domain Name shows that it comprises the Complainant's Mark (i.e., HOT ROD) in its entirety as a prefix and the word "tubes." From the Complainant's and the Respondent's own admissions, the word "tubes" is descriptive of the tobacco and tobacco-replacement industry. The addition of the descriptive word "tubes" to the Complainant's mark HOT ROD does not distinguish the Domain Name from the Complainant's Mark. On the contrary, based on the Complainant's multiple trademark registrations and use of its mark HOT ROD in connection with cigarette tubes (and tobacco and other tobacco products), the use of the Complainant's Mark with the word "tubes" in the Domain Name suggests that any possible goods or services offered on a possible website at this Domain Name are somehow authorized by or affiliated with the Complainant. Although the Respondent appears to challenge the Complainant's rights in the Complainant's Mark, the Complainant's trademark registrations are prima facie evidence that the Complainant's Mark is distinctive and the Respondent has presented no evidence to suggest otherwise. Based on these findings, the Panel determines that the Domain Name is confusingly similar to the Complainant's Mark and that paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in the Domain Name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder'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; or

(ii) the holder (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the holder has acquired no trademark or service mark rights; or

(iii) the Domain Name holder 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.

Although the Respondent claimed to be preparing to use the mark HOT ROD in connection with liquid tubes, he has presented no evidence of any demonstrable preparations to use the Domain Name or the mark HOT ROD in connection with any bona fide offering of goods and services. Rather the Complainant has shown that it had established rights in the Complainant's Mark at the time of the Respondent's registration of the Domain Name. In addition, the Complainant presented evidence that for a time the Domain Name was used to redirect Internet traffic to a website of a competitor of both the Complainant and the Respondent. After the Respondent was asked by the Complainant to cease using the Domain Name in such a fashion, the Respondent then linked the Domain Name to a parking page with pay-per-click links to competitors of the Complainant for apparent commercial gain.

The Complainant has also confirmed that the Respondent has never been given permission and is not authorized by or affiliated with the Complainant to register or use any domain name incorporating the Complainant's mark HOT ROD. Nor has any evidence been presented showing that the Respondent is commonly known by the Domain Name as an individual, business or otherwise or that the Respondent could be considered as making any type of legitimate noncommercial or fair use of the Domain Name. The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the Domain Name holder includes, but is not limited to:

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

(ii) the holder 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, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder's website or location.

Based upon the submitted evidence, the Panel finds that the Respondent clearly had knowledge of the Complainant's Mark and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant owns numerous trademark registrations for the Complainant's Mark: (ii) the Domain Name was registered after the first use in commerce by the Complainant of the Complainant's Mark: and (iii) the Domain Name comprises the Complainant's Mark and the word "tubes" which corresponds to the goods for which the Complainant's Mark is registered.

Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Complainant has also presented undisputed evidence that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor via domain name redirection. Further, the Respondent now links the Domain Name to a parked page linking to competitors of the Complainant for apparent commercial gain. Based upon the above, the Panel concludes that the Respondent registered and has used the Domain Name primarily to disrupt the business of a competitor as well as to intentionally attempt to attract for apparent commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's site or of a product or service on the Respondent's site.

Based the above, the Panel finds the Respondent's actions constitute bad faith domain name registration and use and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <hotrodtubes.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: July 25, 2014

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