WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fontem Holdings 4, B.V. v. Park Hyungjin
Case No. D2016-0620
1. The Parties
The Complainant is Fontem Holdings 4, B.V of Amsterdam, the Netherlands, represented by Dykema Gossett PLLC, United States of America.
The Respondent is Park Hyungjin of Gimhae, Republic of Korea.
2. The Domain Name and Registrar
The Disputed Domain Name <bluelectroniccigarette.com> is registered with Go France Domains, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 7, 2016, 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 April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 3, 2016. 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.
On May 6, 2016 the Panel issued a procedural order which in substance provided as follows:
"(1) It is unclear from the Case File whether the Respondent has been forwarded the annexes to the Complaint by email (the Panel notes, however, that the Case File does contain records of the transmission of the Complaint itself to the Respondent by email, and of the transmission of the Written Notice of the Complaint to the Respondent by courier).
As such, the Panel directs the Center to transmit the annexes to the Complaint to the Respondent by email, along with this Order.
The Respondent will have five calendar days[…]to indicate any intention to take part in this proceeding.
(2) The current record does not establish to the Panel's satisfaction that the Complainant, Fontem Holdings 4, B.V., holds relevant trademark rights.
The Panel notes the Complainant's reliance in this regard on the evidence contained in Annexes 4 and 6 to the Complaint.
However, the Panel's review of these annexes reveals that Annex 4 is simply a print out of a list of marks and does not establish ownership.
While Annex 6 of the Complaint does contain trademark certificates for four of the relied-upon marks, these certificates are not in the Complainant's name. Although the Complaint asserts that Blec, LLC – the registrant of record for Registration No. 3,846,035 – is its 'predecessor company', it has provided no evidence for this assertion.
The Panel orders the Complainant to provide an additional submission demonstrating its rights in trade marks relevant to the current proceeding by May 11, 2016".
In compliance with this order the Complainant filed a supplemental filing on May 9, 2016 (the "Supplemental Filing"). No communication was received from the Respondent.
4. Factual Background
The Complainant, either directly or through affiliates, promotes and sells what are known as electronic cigarettes and associated products. The Complainant is the proprietor of several registered trademarks involving the term "Blu". The Supplemental Filing establishes to the satisfaction of the Panel that title to these trademarks has been vested in the Complainant even though its ownership is yet to be recorded on the applicable registers. These trademarks are registered in respect of, amongst other things, electronic cigarettes. Some of these are word marks for "Blu" or "Blu Cigs" or "Blue Ecigs" and some also include a device. All of these trademarks predate the registration of the Disputed Domain Name. These trademarks are referred to collectively below as the "BLU trademarks". The Complainant also operates a website at "www.blucigs.com" which features additional information about its products and services.
The Complainant and its affiliates use the BLU trademarks in connection with the sale of its electronic cigarettes and related goods and services. In 2009, the Complainant's predecessor company, Blec LLC, first began using the BLU trademarks in connection with the sale of electronic cigarettes and related goods and services. The Panel has no information before it as to the size or extent of the Complainant's business apart from unsupported assertion in the Complaint that "BLU ecigs are one of the leading electronic cigarette brands in the United States".
As of March 23, 2016, the Disputed Domain Name resolved to a landing page with various pay-per-click links, including links to third-party websites offering competing goods in the online electronic cigarette market.
5. Parties' Contentions
The Complainant's case can be summarized as follows.
(a) The Disputed Domain Name is identical or confusingly similar to the BLU trademarks.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
(c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves makes use of the Complainant's BLU trademarks to attract customers to a business which is not that of the Complainant but which then earns money trough the use of payment based upon "click through" traffic.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Before considering the substantive issues, it is necessary to consider whether the lack of Response prevents the Panel proceeding to resolve this dispute. Under the Rules, paragraph 2:
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or 'www.' followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
(b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii))."
The Complaint was served by the Center via e-mail to the appropriate e-mail addresses as identified in the Complaint and as recorded in respect of the Respondent in the Registrar's records. No Response was received to any of these. The Center then sought to serve the Complaint by courier to the Respondent's postal address. This did not prove possible – it appears to the Panel that the address in question was genuine but no one at that address was available or prepared to accept the delivery.
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ "reasonably available means calculated to achieve actual notice to Respondent". Under the Rules (paragraph 5(f)) "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." The Panel concludes that there are no exceptional circumstances that prevent the Panel deciding the dispute. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various trademarks that include the term "blu". The Panel holds that the Disputed Domain Name is confusingly similar to the BLU trademarks. The Disputed Domain Name, as registered by the Respondent, incorporates the term "blu" which is either (in some cases) on its own a registered trademark, or (in other cases) the predominate element of the BLU trademarks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the addition of the generic words "electronic" and "cigarette". This addition does not suffice to negate the confusing similarity between the Disputed Domain Name and the Complainant's BLU trademarks.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here words such as "electronic" or "cigarette") to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). Furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). That is particularly so where, as here, the generic terms themselves directly relate to the field of activity in which the Complainant operates and in which it uses its BLU trademarks.
The ".com" Top-Level Domain is disregarded when considering identity or confusing similarity between the Disputed Domain Name and the Complainant's trademark – see for example Herbalife International, Inc. v Herbalife.net, WIPO Case No. D2002-02343.
Accordingly the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that may demonstrate a right or legitimate interest in a domain name:
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 organisation) 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the BLU trademarks. The Complainant has prior rights in the BLU trademarks that precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the similar nature of the Disputed Domain Name to the BLU trademarks, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name, and the evidence as to how the Disputed Domain Name has been used by the Respondent leads the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that it is highly improbable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its business. There is no proper evidence before the Panel as to the size or extent of the Complainant's business but the Panel is nevertheless prepared to infer the Respondent must have had the Complainant or its business in mind when he registered the Disputed Domain Name. "Blu" has no obvious meaning in relation to electronic cigarettes and the fact that the Respondent combined that term with words referring to electronic cigarettes strongly suggests the Respondent knew of the Complainant and its business when he registered the Disputed Domain Name.
The website operated by the Respondent at the Disputed Domain Name comprises a series of "click through" links to other third party websites. The Panel infers that some consumers, once at the Respondent's website will follow the provided links and "click through" to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns "click through" linking revenue as a result. The Panel infers the Respondent's website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As such the use of the Disputed Domain Name is an example of the conduct referred to in paragraph 4(b)(iv) of the Policy as evidence of bad faith namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
Further, the Panel notes the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of legitimate use that he might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <bluelectroniccigarette.com> be transferred to the Complainant.
Nick J. Gardner
Date: May 19, 2016