WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fontem Holdings 4, B.V. v. Sidney Rainbolt
Case No. D2016-0745
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 Sidney Rainbolt of Dixon, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bluelectroniccigarette.org> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 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 proceeding commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2016.
The Center appointed Ian Lowe as the sole panelist in this matter on May 18, 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.
4. Factual Background
The Complainant and its predecessor companies have sold a range of electronic cigarettes and related goods and services continuously since 2009 under and by reference to a number of trademarks comprising BLU. It is the registered proprietor of a number of trademark registrations in respect of such marks including United States trademark number 4,750,245 BLU registered on June 9, 2015. The Complainant operates a website at “www.blucigs.com” promoting and offering for sale its Blu electronic cigarettes and other products.
The Domain Name was registered on August 4, 2010. Shortly before the Complaint was filed, the Domain Name resolved to a website comprising a web portal with pay per click links to a number of third party websites offering products of competitors of the Complainant in the online electronic cigarette and vaping market.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its BLU trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove 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 Respondent 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
The Complainant has uncontested rights in the trademark BLU, both by virtue of its several trademark registrations and as a result of its goodwill and reputation acquired through use of the BLU mark over several years. Ignoring the generic Top-Level Domain (“gTLD”) “.org”, the Domain Name comprises the Complainant’s mark together with the words “electronic cigarette”. In the Panel’s view, the additional words do not detract from the distinctiveness of the BLU mark. On the contrary, by reference to the products sold by the Complainant under its mark, they reinforce the likelihood of confusion with the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The use of the Domain Name for a web page comprising links to third party websites offering products of competitors of the Complainant does not represent a bona fide offering of goods or services. The Respondent has chosen not to respond to the Complaint and has accordingly failed to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name was registered after the Complainant’s predecessors began trading under the BLU trademark and in view of the nature of the trademark and the use to which the Respondent has put the Domain Name, the Panel considers it most likely that the Respondent had in mind the Complainant and its rights in the mark at the time it registered the Domain Name. The use by the Respondent of the Domain Name for a web portal comprising click through links indicates that it has used a domain name comprising the Complainant’s trademark to draw in Internet users for its own benefit for commercial gain. The Panel considers that this amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a)(iii) 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 Domain Name <bluelectroniccigarette.org> be transferred to the Complainant.
Date: May 28, 2016