WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Warehouse Goods, Inc. v. Binary Jungle, Sandy Bagri
Case No. D2014-1238
1. The Parties
Complainant is Warehouse Goods, Inc. of Boca Raton, Florida, United States of America, represented by Lewis & Lin, LLC, United States of America.
Respondent is Binary Jungle, Sandy Bagri of Encinitas, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ecigvapeworld.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed against Contact Privacy Inc. with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2014. On July 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2014, 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 July 28, 2014, 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 July 31, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2014. A Response was filed with the Center by Contact Privacy Inc. on August 22, 2014. Respondent Binary Jungle, Sandy Bagri did not file a response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 1, 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.
Contact Privacy Inc., a service provided by the Registrar, Tucows Inc., based in Toronto, Ontario, Canada, was named by Complainant as Respondent in its initially filed Complaint in this proceeding. Following receipt of the Complaint and request for registrar verification by the Center, the Registrar disabled the WhoIs privacy service applicable to the disputed domain name in accordance with its internal policy and provided registrant data regarding Respondent (Binary Jungle, Sandy Bagri) to the Center in a timely manner. The Center notified Complainant of the registrant data provided by the Registrar, and Complainant filed an amended Complaint.
In a Response transmitted to the Center on August 22, 2014, Contact Privacy Inc. requested that it be removed as a named respondent in this proceeding. In its Response, Contact Privacy Inc. explained its operating procedure with respect to forwarding of communications to the registrants of domain names. Contact Privacy Inc. indicates that it provides its privacy service masking the information a registrant provides in the public WhoIs database for purposes that include avoiding unsolicited email/spam, fraudulent domain transfers, identity theft, unwanted telephone solicitation and more. Contact Privacy Inc. considers that this service is of value to domain name registrants and implementation of this service should not be considered to give rise to bad faith on the part of Contact Privacy Inc./the Registrar. Contact Privacy Inc. acknowledges that there “are many bogus privacy services out there that are domain name profiteers attempting to disguise their identity, yet Contact Privacy Inc. has been known in the industry as a reputable and fair company.”
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, the Policy does not provide express guidance regarding the treatment of privacy services as parties to proceedings, and panels have discretion in respect of determining the proper parties to a dispute. The Panel is persuaded that Contact Privacy Inc. is not the registrant-in-fact of the disputed domain name, and that Contact Privacy Inc. has in this case acted in good faith to disclose information regarding the legal registrant/Respondent of the disputed domain name. The Panel decides that Contact Privacy Inc. should not be named as a respondent in this proceeding. However, the Panel notes that in the absence of express direction from the Policy, Rules or other ICANN authoritative acts regarding the treatment of privacy services as parties, the Panel does not suggest a blanket rule regarding the treatment of privacy services in dispute settlement proceedings under the Policy. The Panel understands such treatment to remain in the discretion of panels.
4. Factual Background
Complainant is the owner of registrations for the trademark and service mark (hereinafter “trademark”) VAPE WORLD on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,592,011, registration dated March 17, 2009 (word and design), in international class (IC) 11, covering “electronic herbal vaporizers not for medical use”, and registration number 4,438,806, registration dated November 26, 2013 (word), in IC 35, covering “on-line retail store services featuring aroma therapy vaporizers, tobacco vaporizers and e-cigarettes”. Complainant has asserted dates of first use in commerce for each of the aforesaid trademarks of June 15, 2007. Complainant has further provided evidence of registration of the VAPE WORLD trademark on the register of the Office for Harmonization in the Internal Market (OHIM) of the European Union, registration number 11456167, registration dated May 23, 2013, in IC 35.
Complainant markets and sells vaporizers and products used in connection with vaporizers, primarily from its website located at “www.vapeworld.com”. According to Complainant, it sells more than 1000 different products to hundreds of thousands of customers in every state and province in North America (and worldwide), with annual sales in millions of units. Complainant indicates that it has spent “many millions of dollars advertising its goods and services in connection with the VAPE WORLD® Marks online …”.
The disputed domain name was registered on December 4, 2013.
Complainant has provided two screenshots of the website Respondent has used in connection with the disputed domain name. A screenshot dated July 16, 2014, shows a website displaying the following text:
eCig Vape World
Your online resource for the most affordable and best selling:
Electronic Cigarettes, Personal Vaporizers, e-Juice Liquids, Starter Kits, Vape
Mods and Accessories!
A screenshot attached to a cease-and-desist and transfer demand sent to Respondent dated May 27, 2014, shows a specific product “New 8mm Disposable Cigarette From Only $2.99” in addition to more general text similar to that above. Complainant transmitted an additional cease-and-desist and transfer demand to Respondent on June 10, 2014.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark VAPE WORLD as evidenced by registration at the USPTO and OHIM, as well as owning common law trademark rights based on use in commerce in the United States of America and other countries. Complainant contends that its trademark is inherently distinctive.
Complainant argues that the disputed domain name is confusingly similar to its trademark because the disputed domain name uses its trademark in its entirety and adds the letters “ecig” that would be understood by an Internet user to suggest that Respondent’s website is offering Complainant’s licensed products for sale.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent was not commonly known by the disputed domain name, and cannot claim any common law rights in Complainant’s trademark or the disputed domain name; (2) Respondent was not authorized by Complainant to use its trademark in the disputed domain name; (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because Respondent is attempting to sell goods directly competitive with those of Complainant using Complainant’s trademark; (4) Respondent has not made legitimate noncommercial or fair use of the disputed domain name, (5) Respondent used a privacy service to mask his identity, and the fact that he is listed registrant for other “vape-related” sites offering goods competing with those of Complainant, and (6) Respondent failed to reply to Complainant’s cease-and-desist and transfer demands.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) where a Respondent has failed to demonstrate rights or legitimate interests, “registration and use in bad faith can commonly be inferred”; (2) Respondent plainly intends to divert Internet users seeking information about Complainant to Respondent’s website by using Complainant’s trademark in the disputed domain name; (3) the US Lanham Act gives Complainant a presumption of rights in its trademark, and Respondent can reasonably be charged with knowledge of Complainant’s trademark; (4) Respondent registered the disputed domain name substantially after Complainant secured registration of its trademark; (5) Respondent has not been authorized to use Complainant’s trademark in the disputed domain name, and is attempting to use the disputed domain name for commercial gain by diverting Internet users to his website, (6) use of a privacy protection service when a domain name infringes on registered trademark rights can be evidence of bad faith, as can be willful disregard of cease-and-desist demands.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not submit a Response, however, a Response was filed with the Center by Contact Privacy Inc. on August 22, 2014.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in his record of registration. Respondent did not reply to e-mail notification. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy the Policy’s notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the VAPE WORLD trademark on the Principal Register of the USPTO (see Factual Background, supra). Such registration establishes a presumption of ownership and validity of the trademark in favor of Complainant, and Respondent has not challenged that presumption. The Panel determines that Complainant has rights in the trademark VAPE WORLD in the United States.1
The disputed domain name directly incorporates Complainant’s trademark, and adds the prefix “ecig”. The term “ecig” is commonly used (typically with a hyphen as “e-cig”) as a shorthand reference for “electronic cigarette”.2 An Internet user viewing the disputed domain name combining Complainant’s trademark with a shorthand reference to one of Complainant’s significant products would be likely to associate the disputed domain name with Complainant and its products. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in the VAPE WORLD trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing.
There is nothing in the record of this proceeding to otherwise manifest rights or legitimate interests in the disputed domain name in favor of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). 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.” Among those circumstances are: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain name incorporating Complainant’s trademark for the purpose of directing Internet users to a website offering products that are competitive with those of Complainant. The Panel determines that Respondent is using the disputed domain name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <ecigvapeworld.com> be transferred to Complainant.
Frederick M. Abbott
Date: September 15, 2014
1 Respondent is based in the United States and under the circumstances of this proceeding there is no need for the Panel to make a determination regarding Complainant's trademark rights elsewhere.
2 See, e.g., http://encyclopedia2.thefreedictionary.com/e-cig.