WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nu Mark LLC v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Kevin Mcmunn
Case No. D2017-1243
1. The Parties
The Complainant is Nu Mark LLC of Richmond, Virginia, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”) / Kevin Mcmunn of Fort McMurray, Alberta, Canada.
2. The Domain Names and Registrar
The disputed domain names <greensmoke.guru> and <greensmoke.ninja> (the “Disputed 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 June 28, 2017. On June 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 7, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 2, 2017. 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 develops and markets what it describes as “innovative tobacco products, including electronic vapor products, commonly known as “evapor” products, as well as cartomizers, batteries, battery chargers, and car power adaptors for e-vapor products, under the GREEN SMOKE® marks”.
The Complainant, through its predecessor in interest, began selling e-vapor products under the GREEN SMOKE trademark in November 2004. It operates its own website for its GREEN SMOKE e-vapor products at the domain name<greensmoke.com>. According to Alexa.com, the Complainant’s website located at “www.greensmoke.com” has a global ranking of 389,048, and a U.S. ranking of 88,162. In June 2017, the Complainant’s website received over 36,000 unique visitors that viewed over 1,138,000 pages.
The Complainant owns various registered trademarks for the words “Green Smoke” including for example United States trademark 3,860,744 registered on October 12, 2010. These trademarks are referred to in this decision as the “GREEN SMOKE” trademarks.
The Disputed Domain Names were registered on April 22, 2017. They each resolve to a “parking” website automatically generated by the Registrar which indicates the domain names in question may be for sale and contain click through links to third party websites.
5. Parties’ Contentions
The Complainant’s contentions are straightforward. Numerous previous WIPO decisions are relied upon by the Complainant. It is not necessary to repeat those here – where relevant they are addressed in the Panel’s discussion below. The Complainant’s contentions can be summarized as follows.
The Disputed Domain Names are each similar to the GREEN SMOKE trademark.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant contends that the term “Greensmoke” has no other common commercial meaning apart from in relation to itself and its services.
In consequence the Complainant alleges that the Disputed Domain Names were registered and are being used in bad faith. It says that the Respondent knew or should have known of the Complainant and its GREEN SMOKE trademark. The use of the Disputed Domain Names in connection with a parking page generating revenue from click through traffic amounts to bad faith registration and use.
No Response has been filed.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Registration Private, Domains By Proxy, LLC, DomainsByProxy.com) appears to be a privacy or proxy registration service while the other Respondent (Kevin Mcmunn) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel proceeds on the basis that the substantive Respondent is Kevin Mcmunn, an individual resident in Canada and references to “the Respondent” are to that person.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. 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).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Disputed Domain Names that:
(i) The Disputed Domain Name is identical with 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 respect of 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 Panel considers each of the Disputed Domain Names to be confusingly similar to the Complainant’s trademark GREEN SMOKE. The omission of the space between “green” and “smoke” is a trivial difference particularly given that for technical reasons a space cannot form part of a domain name string.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.ninja” and “.guru”, does not generally affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the GREEN SMOKE trademark. The Complainant has prior rights in the GREEN SMOKE trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (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 its rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Whilst “green” and “smoke” are manifestly ordinary English words their combination together can in the Panel’s view provides a term that is potentially distinctive. There is no evidence before the Panel of any other party using those words in conjunction in a commercial manner. Accordingly for the purposes of this decision the Panel takes the view that on the evidence “GREEN SMOKE” is a term with no other commercial meaning save in relation to the Complainant.
In these circumstances, given the similar nature of the Disputed Domain Names to the GREEN SMOKE trademarks, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Names, the Panel concludes the registration and use was on the balance of probabilities made by the Respondent with knowledge of the Complainant and was in bad faith.
Each of the websites linked to the Disputed Domain Names comprises a series of pay-per-click (“PPC”) links to other third-party websites. The Panel infers that some consumers, once at the 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 Panel infers that the website is automatically generated and that revenue is generated by click through traffic. 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. This is so even where algorithms used by the Registrar automatically generate the relevant links. It does not matter that the revenue earned from this activity may be retained by the Registrar and does not accrue directly to the Respondent. 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.
Accordingly, and applying the principles in the above noted UDRP cases the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names, <greensmoke.guru> and <greensmoke.ninja> be transferred to the Complainant.
Nick J. Gardner
Date: August 8, 2017