WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Warehouse Goods, Inc. v. Honey Dietrich / My Donation Vacation
Case No. D2014-1472
1. The Parties
Complainant is Warehouse Goods, Inc. of Boca Raton, Florida, United States of America (“U.S.”), represented by Lewis & Lin, LLC, U.S.
Respondent is Honey Dietrich / My Donation Vacation of Plantation, Florida, U.S., represented by H. Levine-Schwartz, Esq., U.S.
2. The Domain Names and Registrar
The disputed domain names <vapormyworld.com>, <vaporworldboca.com>,<vaporworldcoconutcreek.com>, <vaporworldcoralsprings.com>, <vaporworlddavie.com>, <vaporworlddeerfield.com>, <vaporworldfl.com>, <vaporworldflorida.com>, <vaporworldftlauderdale.com>, <vaporworldkeys.com>, <vaporworldmiami.com>, <vaporworldmiramar.com>, <vaporworldoffl.com>, <vaporworldofflorida.com>,<vaporworldpalmbeach.com>, <vaporworldpembrokepines.com>, <vaporworldplantation.com>, <vaporworldpompano.com>, <vaporworldsouthbeach.com>, <vaporworldsunrise.com>, <vaporworldtamarac.com>, <vaporworldus.com> and <vaporworldweston.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2014. On August 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 24, 2014. On September 25, 2014, a day after the due date for a Response, Respondent’s representative requested a one-week extension of the due date. The request for a one-week extension was granted. The Center extended the due date for the Response to October 1, 2014. On October 1, 2014, Respondent’s representative requested a further extension of the due date for the Response. In accordance with the Rules, paragraph 5(d), taking into account that the request for the additional extension was received on the date of the already extended date for the Response, and that there did not appear to be exceptional circumstances as required by the Rules, paragraph 5(d), the Center declined the request for further extension. The Center informed Respondent that if it wished to make a late Response to the Complaint, the Center would bring the Response to the Panel’s attention and it would be at the sole discretion of the Panel to consider it.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 17, 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.
Late Response and Supplemental Filing:
Respondent submitted a late-filed informal Response on October 14, 2014 and a formal Response on October 17, 2014. Complainant submitted a Supplemental Filing in reply, which the Center received on October 22, 2014. The Rules provide only for the submission of a Complaint by Complainant and a Response by Respondent. In this case, Respondent’s Response was filed late without adequate justification. The Panel, however, will consider Respondent’s Response in the interest of ensuring that each Party has a fair opportunity to present its case. For the same reason, the Panel will also consider Complainant’s Supplemental Filing. The Panel considers its decision to be in accordance with paragraphs 10 and 12 of the Rules, which in effect grant the Panel sole discretion to determine the admissibility of late or supplemental filings received from either Party.
4. Factual Background
Complainant is the owner of two registered U.S. trademarks consisting of the term “vape world”:
(i) registration no. 3592011 in class 11 for electronic herbal vaporizers not for medical use, registered on March 17, 2009, with a date of first use in commerce of June 15, 2007; and
(ii) registration no. 4438806 in class 35 for on-line retail store services featuring aroma therapy vaporizers, tobacco vaporizers and e-cigarettes registered on November 26, 2013, also with a date of first use in commerce of June 15, 2007.
Complainant is also the owner of a Community Trademark Registration (CTM) for VAPE WORLD, including the territories of Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom of Great Britain and Northern Ireland. The CTM mark has a priority date of December 27, 2012 and was registered May 23, 2013 in class 35, covering retail services in the field of vaporisers and electronic shopping retail services in the field of vaporisers.
Complainant registered the domain name <vapeworld.com> on March 3, 2007 and uses it to link to the primary website for its business. Complainant also registered the domain name <vaporworld.com> on September 26, 2008 and currently uses it to promote music, art, and culture in relation to vaporizers and vaping, and with a link to its site at <vapeworld.com>.
All of the Domain Names were registered by Respondent at the end of October and beginning of November in 2013.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that its registered VAPE WORLD trademarks are inherently distinctive, nationally recognized and highly regarded in connection with Complainant’s sale of vaporizers and related goods and services. In addition to its marks, Complainant claims that it owns common law rights to the VAPE WORLD mark and name acquired through continuous, exclusive, and extensive use of the <vapeworld.com> domain name and the VAPE WORLD marks for nearly 7 years. Complainant maintains that as a result of its federal and CTM registrations, long-standing use, and reputation in the vaporizer industry, customers have come to associate the VAPE WORLD mark with Complainant and its goods and services.
Complainant owns more than thirty domain name registrations consisting of the VAPE WORLD marks, including <vapeworld.com>, <vaporworld.com>, <vaporizerworld.com>, <thevapeworld.com>, <vape-world.org>, <vapeworld.org>, <vapeworld.mobi>, <vapeworld.biz>, <vape-world.biz> and <vape-world.info>. Since 2007, Complainant asserts that it has spent millions of dollars advertising its services in connection with the VAPE WORLD marks online throughout North America and the world.
Since 2007, Complainant also claims it has achieved millions of dollars of revenues, primarily from sales on its website located at “www.vapeworld.com”. Of this revenue, at least 95% was derived from sales in the United States. Complainant sells more than 1,000 different products to customers in every state and province in North America and around the world, with annual sales in the millions of units, and many millions of units sold over time. Complainant’s website receives millions of visitors annually. Complainant’s advertising prominently displays the VAPE WORLD marks. According to Complainant, as a result of its continuous and substantial use, advertising, and promotion, the VAPE WORLD brand and marks have become recognizable and well-known. Complainant contends that the marks have generated so much goodwill and acquired such fame that any good/service, domain name, advertisement, or business bearing such marks, in whole or in part, is associated by purchasers and the public as being a product or service affiliated with Complainant. Due to the extensive use, advertising, and registration of the VAPE WORLD trademarks, the marks are highly distinctive under the laws of the U.S. Because Complainant holds both federally registered and common law trademark rights to VAPE WORLD, it satisfies the threshold requirement of having trademark rights.
Complainant claims that it also possesses common law rights in the trademark VAPOR WORLD, as used in connection with Complainant’s <vaporworld.com> domain name. Complainant uses the VAPOR WORLD mark to promote music, art, and culture, in relation to vaporizers and vaping, as an extension of the VAPE WORLD brand.
Complainant contends that there is little difference between Respondent’s Domain Names and Complainant’s VAPE WORLD and VAPOR WORLD marks. The Domain Names contain the identical and confusingly similar wording “Vapor World.” The terms “vapor” and “vape” are nearly identical and legally equivalent. The word “vape” is a reference to “inhaling vapor” and the words create the same commercial impression in the minds of consumers. This is reinforced by Respondent’s use of the identical word “world,” which is a dominant and distinctive element of Complainant’s VAPE WORLD and VAPOR WORLD marks. Respondent’s use of “vapor world” in large text on its <vaporworldus.com> website emphasizes the identical “vapor world” wording. Moreover, Respondent merely adds descriptive geographic identifiers or
generic words (“my” to <vapormyworld> and “us” to <vaporworldus.com>). It is significant that the geographically descriptive terms appearing in the Domain Names are all references to the state of Florida or cities within Florida. The geographic identifiers in the Domain Names enhance consumer confusion because Complainant was founded in Florida, is headquartered Florida and has a strong business presence in Florida. As a result, the use of these geographically descriptive terms and generic wording does little to change the sound, meaning or commercial impression of the Domain Names. The additional words in the Domain Names are insufficient to avoid a finding of confusion with the VAPE WORLD marks.
Adding these generic and geographically descriptive terms to wording that is virtually identical to the VAPE WORLD mark does nothing to dispel the confusing similarity between the Domain Names and Complainant’s VAPE WORLD and VAPOR WORLD marks, especially where Complainant is located in Florida and has a U.S. trademark registration for VAPE WORLD that covers retail services featuring ecigarettes. Thus, the
Domain Names are nearly identical and confusingly similar to Complainant’s VAPE WORLD marks.
(ii) Rights or legitimate interests
Complainant asserts that Respondent cannot establish rights or legitimate interests in the Domain Names because Respondent is not commonly known by them, is not authorized to use Complainant’s trademarks in the Domain Names, has not used them in connection with a bona fide offering of goods or services, and has not made legitimate noncommercial or fair use of them.
Complaint states firstly that Respondent does not own any common law trademark rights to the VAPE WORLD marks or the Domain Names because Complainant is the owner of the VAPE WORLD marks and has been for years. Respondent could not be commonly known by the Vapor World name, and the WhoIs information for the Domain Names does not indicate that Respondent is commonly known by that name. Complainant has not authorized Respondent to use the Domain Names. Further, Respondent is not and has not been commonly known by the Vapor World name prior to Respondent’s registration of the Domain Names in October and November 2013 – over 6 years after Complainant first accrued rights in the VAPE WORLD marks.
Further, Complainant argues that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. Instead, Respondent is trading off on Complainant’s name and reputation to attract unsuspecting Internet users to its website for pecuniary gain. Respondent is using the <vaporworldus.com> Domain Name to direct to a website that offers competing goods and services and greets users with the message: “Vapor World is a one-stop shop for all of your vaping needs. Our headquarters is located in South Florida.” Complainant is also headquartered in South Florida. Complainant states that Respondent intends to sell products in direct competition with Complainant’s electronic vaporizers and related goods and in direct competition with Complainant’s previously registered <vapeworld.com> and <VaporWorld.com> domain names. In doing so, Respondent uses the Domain Names for financial gain by misleadingly diverting Complainant’s customers, and trading off of the VAPE WORLD trademark. Complainant urges that this is not a legitimate use of the Domain Names.
On June 4, 2014 and June 19, 2014, Complainant’s counsel sent letters to Respondent requesting that it cease using the Domain Names and transfer them to Complainant. At that time, the <vaporworldus.com> website had a static landing page. Complainant did not receive a response from Respondent. Instead, Respondent developed and launched a fully-operational ecommerce site. Respondent continues to divert Internet users to its <vaporworldus.com> website, which states: “Welcome to Vapor World,” contains a link to information “About Vapor World,” and emphasizes the term “Vapor World” as the predominant portion of its name. The operation of this website benefits Respondent financially since users searching for Complainant’s VAPE WORLD goods and services are likely to encounter <vaporworldus.com>, where such diverted users will be offered products that compete with Complainant’s products. Respondent’s failure to respond to cease and desist letters concerning its infringement of the VAPE WORLD marks can be evidence of a lack of l rights and legitimate interests.
Complainant also contends that at the time Respondent acquired the Domain Names in October and November 2013, Respondent knew that it did not have any legitimate rights to the VAPE WORLD marks, was on constructive notice of Complainant’s federal trademark registrations, and/or did not operate any business in connection with the Domain Names. Complainant argues the Panel may reasonably infer that, before registering the Domain Names, Respondent was on actual notice of Complainant’s trademarks. The Panel may reasonably conclude that Respondent searched the availability of <vaporworld.com> before registering other, longer and wordier “Vapor World” formative Domain Names. Complainant’s domain name, <vaporworld.com>, is used in connection with a website that prominently displays the VAPE WORLD and VAPOR WORLD marks, promotes the sale of vaporizers, and has links to Complainant’s <vapeworld.com> site. Combined with Complainant’s notoriety in the field and geographic proximity to Respondent, it is hard to believe that Respondent was unaware of Complainant’s marks at the time it registered the Domain Names. For all of these reasons, Complainant contends that Respondent should be considered to have no rights or legitimate interests in the Domain Names.
(iii) Registered and used in bad faith
Complainant states that where, as in this case, Respondent has failed to show rights or legitimate interests in the Domain Names, registration and use in bad faith can be inferred. The purchase and maintenance of the Domain Names in the face of Complainant’s VAPE WORLD marks should be considered to have been registered and used in bad faith because Respondent intends to divert users from seeking information about Complainant to Respondent’s website. Under the United States Lanham Act, the registration of the VAPE WORLD trademarks on the principal register constitutes prima facie evidence of the validity of the registered marks, and of Complainant’s exclusive right to use them in connection with the goods/services identified in its registrations and related commercial goods and services. The registrations are also constructive notice to Respondent of Complainant’s ownership and exclusive rights in the VAPE WORLD marks. Significantly, Respondent, who chose the confusingly similar Domain Names with only the addition of geographic or generic terms which merely describe Complainant’s geographic position or the nature of its services, is currently using at least one of the Domain Names to advertise a competing business. As such, Respondent can reasonably be charged with knowledge of Complainant’s marks.
Complainant asserts that Respondent registered the Domain Names in October and November 2013, after Complainant had been operating its website for more than 6 years, and 5 years after Complainant was granted registered trademark rights to its VAPE WORLD mark. Respondent’s registration of the Domain Names, unassociated with a bona fide offering of goods/services, was solely to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website for financial gain. Such use is evidence of bad faith use and registration. By registering the Domain Names, Respondent diverted potential and actual VAPE WORLD customers. Complainant claims Respondent has made commercial use of the <vaporworldus.com> Domain Name and has registered and maintained the Domain Names primarily for purposes of its own financial gain.
Complainant emphasizes that Respondent uses the wording “Vapor World” in large letters on its allegedly infringing <vaporworldus.com> website, and uses wording identical and confusingly similar to Complainant’s VAPE WORLD and VAPOR WORLD trademarks and <vapeworld.com> and <vaporworld.com> domain names. Complainant claims that Respondent similarly deemphasizes any differences in the marks (i.e., the geographic identifier “US”) using small font. Complainant asserts it is likely that customers will be confused as to Complainant’s sponsorship of, or affiliation with, the Domain Names and website, all of which is heightened by Respondent’s presence in South Florida, where Complainant is located. From Respondent’s use of the <vaporworldus.com> Domain Name, in which the term Vapor World is maximized, and the geographic identifier “US” is minimized, it is also reasonable to infer that Respondent registered the other Domain Names with the intent similarly to use them to cause confusion, emphasizing the term Vapor World over any geographic identifiers. According to Complainant, such use constitutes bad faith use and registration pursuant to Policy, paragraph 4(b)(iv).
Furthermore, Respondent ignored several requests from Complainant to transfer the Domain Names to Complainant. In fact, Respondent continued developing its allegedly infringing <vaporworldus.com> website after receipt of Complainant’s June demand letters and notification of Complainant’s rights. At the time that Complainant sent demand letters to Respondent in June 2014, the <vaporworldus.com> website had a static landing page advertising Vapor World services “until our site is ready”. Since June, Respondent willfully and intentionally developed and launched the infringing <vaporworldus.com> website, on full notice of Complainant’s trademark rights, to knowingly offer and distribute competing products and services under a confusingly similar trademark and domain name. Failure to respond to Complainant’s demand letters, especially where Complainant owns a distinctive and well-known trademark and Respondent escalated its infringement following receipt of such letters, provides support for a determination of bad faith registration and use. Finally, Respondent’s passive holding of a number of the Domain Names incorporating an identical mark constitutes bad faith use and registration pursuant to Policy, paragraph 4(b)(iv).
Therefore, based upon all of the circumstances, Complainant urges that the Panel should grant the relief sought by Complainant and transfer the Domain Names to Complainant.
Respondent contends that the Domain Names are not confusingly similar to Complainant’s VAPE WORLD trademarks as the marks both include a common or generic element. Moreover, Complainant and Respondent are not direct competitors. The vapor industry, including but not limited to manufacturers, distributors, wholesalers and retailers, has tripled in size from 2010 to 2012 and is expected to increase another 30% to USD361.9 Billion in 2016. Due to this trend, thousands of new retail establishments have entered this market and obtained status as either a “Vape Shop”, “Vape Room” or “e Cig Lounge” for their requisite licensing, permits, corporate and fictitious business certifications in the past five years alone. In the summer of 2012 in Orange County, California, for example, the number of vape shops increased exponentially from two dozen to 200, many of which have industry descriptive names such as VapePlace, Vapor Hub, Good Vapor, VaporFi, H20 Vapors, CaliVapers and VapeMentorS.
Accordingly, Respondent contends the terms “Vape” and “Vapor” would be considered generic or descriptive and therefore, “weak” under U.S. law. Such weak marks with common elements that are generic, descriptive or highly suggestive of goods or services will not typically cause consumer confusion. Further, Complainant is a national and international wholesale company selling products used in the Vapor industry while Respondent is a retail business owner who sells mainly “starter kits” and eJuices. The fact that they are both domiciled in Florida is irrelevant since Complainant's online commerce could be carried out from any physical location. In summary, Complainant’s and Respondent's marks are not confusingly similar since they both contain terms that are generic and common and would not be considered infringing due to the lack of consumer confusion. Further, the parties are not competitors since they target different audiences (wholesale vs. retail) albeit within the Vapor industry.
Moreover, Respondent asserts that the Domain Names were not registered or being used in bad faith. Respondent began to research the establishment of a retail store in 2013 due to the huge growth within the Vapor industry. In October 2013, Respondent visited the GoDaddy website and input several Domain Names to see which were available and selected <vaporworld.com> along with a number of variations that included specific towns within South Florida. Soon after, Respondent attempted to contact Complainant via email to purchase “Vape World” as the domain name was registered but not in use at that time. Complainant did not respond. Respondent also filed a fictitious name with the State of Florida and waited until a FEIN number was received (i.e., SYATT Ventures, Inc., d/b/a Vapor World, FEIN: 46-4077243). On January 20, 2014, Respondent began operating a retail establishment in Sunrise, Florida and corresponding online store, which sells mainly “home made” eJuices in various flavors. On May 19, 2014, Respondent was contacted by Seth Sznapstajler, an employee of Complainant, who inquired as to whether Respondent would be interested in selling any of Complainant's products. Respondent declined as the majority of the catalog was for “dry herb” which Respondent does not offer for sale.
The following month, Complainant sent Respondent a letter requesting transfer of all of Respondents’ Domain Names. In the meantime, Respondent had already spent a considerable amount of money for the retail store and product, which were all inscribed with “Vapor World” and an accompanying logo. It is clear from these facts that the only party to act in bad faith was Complainant. Respondent validly registered the Domain Names in question and Complainant knew about Respondent’s business (and even asked Respondent to purchase wholesale goods to sell) long before trying to have the Domain Names transferred. Complainant’s actions are nothing more than a larger company attempting to bully a smaller company and, as a result, the underlying Complaint should be dismissed.
C. Complainant’s Supplemental Filing
Complainant emphasizes that Respondent admits in the Response that Respondent tried to register Complainant’s <vapeworld.com> domain name and previously claimed to have tried to purchase Complainant’s <vaporworld.com> domain name, and contacted Complainant before registering the twenty-four Vapor World formative Domain Names. Complainant states further that there is no basis for Respondent’s unsubstantiated claim that the <vapeworld.com> Domain Name was not in use. Either way, Respondent was aware of Complainant, its business and its marks. Thus, Respondent’s registration and use of the confusingly similar Domain Names for use in connection with identical and virtually identical services was in bad faith, regardless of Respondent’s claimed understanding of trademark rights.
Complainant contends that the VAPE WORLD mark is inherently distinctive, registered and presumed valid under U.S. law. Respondent’s alleged misunderstanding of trademark law does not alter that the VAPE WORLD and VAPOR WORLD marks are virtually identical, when used in connection with similar goods/services, or that Respondent intentionally chose to register and use confusingly similar Domain Names to the trademark of one of the biggest companies in the industry in connection with virtually identical goods. Moreover, Respondent acknowledges having received Complainant’s cease and desist letters, yet chose to ignore them, and does not deny that Respondent continued to develop a website after those letters were received and was placed on notice of infringement.
Complainant additionally argues that Respondent’s claim that Complainant knew about Respondent’s use of the VAPOR WORLD mark and Domain Names is completely unsubstantiated. The fact that a low-level sales person had discussions with Respondent about distributing product does not establish that Complainant knew either: (a) that Respondent had registered the Domain Names and was doing business as Vapor World, or (b) on a management level, that Respondent was planning to use VAPE WORLD formative marks in Respondent’s business. Nor is Respondent’s alleged chronology accurate. The Domain Names were on a list of infringing names designated for legal action as of February 2014. As such, the filing of the Complaint in this proceeding had absolutely nothing to do with Respondent’s decision not to purchase goods from Complainant’s sales representative, after Complainant had already directed Complainant’s legal representative to take legal action against Respondent. Indeed, Respondent submits no evidence supporting any of the factual contentions made. As such, Complainant urges they should be given no weight by the Panel.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has registered trademark rights in its VAPE WORLD mark dating from 2007. The evidence submitted in this case also shows that Complainant has extensively promoted and used its brand name, VAPE WORLD, in combination with the domain name, <vapeworld.com>, to support Complainant’s business operations in the vapor industry over a period of approximately 7 years. Complainant has thus established common law rights in its VAPE WORLD mark through extensive use and promotion in commerce.
Complainant claims that it also has common law rights in the VAPOR WORLD mark. The Panel observes that Complainant currently maintains a website at “www.vaporworld.com”, which it uses to promote music, art, and culture in relation to vaporizers and vaping, while linking to Complainant’s website at “www.vapeworld.com”. This use, in combination with other promotional efforts, could certainly give rise to Complainant acquiring common law rights in the VAPOR WORLD mark. However, the Panel finds that, in the instant case, Complainant has presented insufficient evidence to determine whether or not Complainant has already developed such common law rights in this brand.
Nonetheless, the Panel determines that the Domain Names are confusingly similar to Complainant’s VAPE WORLD marks. Respondent argues that the terms “vape” and “vapor” are generic or descriptive and therefore not confusingly similar to the Domain Names, and, moreover, the parties are not direct competitors since they target different audiences (wholesale vs. retail) within the vapor industry. However, the relevant comparison is not between the Domain Names and the words “vape” or “vapor” alone; instead, the Domain Names are to be compared to Complainant’s marks, which incorporate the words “vape” and “world” into a single phrase. The difference between “Vape World” and “Vapor World” is insufficient to avoid confusion among the relevant consuming public. Moreover, adding descriptive geographic identifiers (e.g., “florida” to <vaporworldflorida.com>) or generic words (e.g., “my” to <vapormyworld>) to wording that is extremely similar to the VAPE WORLD marks does not dispel the confusing similarity. And even if Complainant and Respondent are not direct competitors within the vapor industry, as Respondent alleges, this too does not negate confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion”).
Accordingly, the Panel concludes that the Domain Names are confusingly similar to Complainant’s VAPE WORLD registered and common law trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. The evidence demonstrates that Complainant has no relationship with Respondent and has never authorized Respondent to use Complainant’s VAPE WORLD marks or the Domain Names. Moreover, Respondent is not making any legitimate noncommercial or fair use of the Domain Names. Respondent registered the Domain Names in October and November 2013, after Complainant had been operating its “www.vapeworld.com” website under the VAPE WORLD brand for more than 6 years, and 5 years after Complainant had been granted registered trademark rights to its VAPE WORLD mark. There is evidence that Respondent was aware of Complainant and its name, operations and domain names (i.e., <vapeworld.com> and <vaporworld.com>) when it registered the Domain Names. Respondent admits that it tried to contact Complainant regarding purchase of Complainant’s domain names. Both Respondent and Complainant are located in South Florida and they operate within the same industry, although perhaps with different areas of emphasis.
On the balance of the evidence, the Panel is of the view that Respondent knew or should have known of Complainant and its VAPE WORLD marks when it registered the Domain Names. Respondent failed to carry out a few simple checks that would have avoided this conflict. At best, Respondent appears to have not fully understood its responsibilities when it chose to register and use the Domain Names, which are confusingly similar to the VAPE WORLD marks of one of the large companies in the industry. Paragraph 2 of the UDRP is particularly apt here as it provides guidance to domain name registrants: “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
In addition, the evidence shows that Complainant’s counsel sent letters to Respondent in June 2014 requesting that it cease using the Domain Names. At the time, Respondent’s website at “www.vaporworldus.com” was still in development. Yet in the face of these letters, to which Respondent did not respond, Respondent worked to complete and launch its website linked to at least one of the Domain Names. Respondent asserts that it had already spent considerable money for its retail store and product using the term “Vapor World” with an accompanying logo. Moreover, Respondent claims that it is only a small operator with only a local focus. However, the expenditures made by Respondent and its small size cannot excuse Respondent for failing to have properly analyzed, in advance, whether its registration of the Domain Names violated the previously established rights of a third-party. Under these circumstances, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. Instead, Respondent’s registration and use trades off on Complainant’s VAPE WORLD brand. See, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (“It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy.”). Respondent has therefore failed to rebut Complainant’s prima facie case.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names and Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
For the reasons discussed above, the Panel also determines that Respondent registered and has used the Domain Names in bad faith. Complainant had been in the vapor industry for approximately six years using the VAPE WORLD brand when Respondent registered the Domain Names. Complainant had promoted its marks and established a reputation within the industry. Respondent was aware of Complainant and both parties are located in South Florida and operate in this industry. Under these circumstances, Respondent knew or should have known of Complainant and its VAPE WORLD marks when it registered the Domain Names. The Panel finds that Respondent likely targeted Complainant and its VAPE WORLD brand. Further, having received the cease and desist letter from Complainant’s legal counsel, Respondent nevertheless continued to develop and launch a website linked to at least one of the confusingly similar Domain Names, <vaporworldus.com>, on full notice of Complainant’s VAPE WORLD trademark rights and offering products in the same industry where Complainant operates. Respondent’s use of the <vaporworldus.com> Domain Name has generated a likelihood of confusion with Complainant’s VAPE WORLD marks as to the source, sponsorship, affiliation or endorsement of Respondent, its Domain Names and its website (see Policy, paragraph 4(b)(iv)). Under the circumstances, Respondent’s passive holding of the other confusingly similar Domain Names also constitutes bad faith registration and use, especially as any use by Respondent in the vapor industry will infringe on Complainant’s pre-existing rights and disrupt the business of Complainant (see Policy, paragraph 4(b)(iii)).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <vapormyworld.com>, <vaporworldboca.com>, <vaporworldcoconutcreek.com>, <vaporworldcoralsprings.com>, <vaporworlddavie.com>, <vaporworlddeerfield.com>, <vaporworldfl.com>, <vaporworldflorida.com>, <vaporworldftlauderdale.com>, <vaporworldkeys.com>, <vaporworldmiami.com>, <vaporworldmiramar.com>, <vaporworldoffl.com>, <vaporworldofflorida.com>, <vaporworldpalmbeach.com>, <vaporworldpembrokepines.com>, <vaporworldplantation.com>, <vaporworldpompano.com>, <vaporworldsouthbeach.com>, <vaporworldsunrise.com>, <vaporworldtamarac.com>, <vaporworldus.com> and <vaporworldweston.com> be transferred to Complainant.
Christopher S. Gibson
Date: November 17, 2014