WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nu Mark LLC v. Privacydotlink Customer 3030896 / Garrett Boyd

Case No. D2017-2084

1. The Parties

Complainant is Nu Mark LLC of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Privacydotlink Customer 3030896 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Garrett Boyd of Myrtle, Mississippi, United States.

2. The Domain Name and Registrar

The disputed domain name <apex-vapors.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2017, 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 November 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on November 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2017. Respondent did not submit any formal response save for its email communication dated November 16 and 18, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on December 4, 2017.

The Center appointed Gary J. Nelson as the sole panelist in this matter on December 27, 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

Complainant is a company headquartered in Richmond, Virginia in the United States, and operates within the tobacco and electronic vapor products industries.

Complainant is the registered owner of several trademarks for APEX. Specifically, Complainant owns at least the following trademark registrations in the indicated geographic territories:

The disputed domain name was registered on July 24, 2017. At the time of the filing of the Complaint, the disputed domain name resolved to an undeveloped website (Registrar parking site).

5. Parties’ Contentions

A. Complainant

Complainant is a wholly-owned subsidiary of Altria Group, Inc. focused on responsibly developing and marketing innovative tobacco products, including vapor products, commonly known as “e-vapor” products, as well as cartomizers, batteries, battery chargers, and car power adaptors for e-vapor products, under the APEX marks.

Complainant, through its predecessor in interest, began selling e-vapor products under the APEX marks in August of 2016.

Complainant is the owner of numerous domain names containing the APEX mark.

Complainant is the owner of numerous trademark registrations in many different jurisdictions comprising entirely of APEX or a stylization of the word “apex.”

Respondent registered the disputed domain name on July 24, 2017, without the permission of Complainant.

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and has subsequently used and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions save for its email communication dated November 16 and 18, 2017.

In its email of November 16, 2017, Respondent replied: “ok i got the email what is this about?”; in its email of November 18, 2017, Respondent replied: “Well as for as I am concerned they can buy it. It is up for sale not to use for commerce. So they really don have an argument”.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(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 the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns prior rights in the APEX trademark and that the disputed domain name is confusingly similar to Complainant’s APEX trademark.

Complainant owns at least two trademark registrations in the United States for the word mark APEX.

Accordingly, Complainant has established rights in its APEX trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity).

The disputed domain name <apex-vapors.com> is confusingly similar to Complainant’s APEX trademark because the disputed domain name incorporates the entirety of Complainant’s APEX trademark and merely adds a descriptive term (i.e., “vapor”), a hyphen, and the generic Top-Level Domain (“gTLD”) suffix “.com”. Neither the addition of a purely descriptive term to a well-known mark or the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

In this case the addition of the word “vapors” to Complainant’s APEX trademark is insufficient to establish a domain name that is distinct from Complainant’s trademark and insufficient to avoid a finding of confusing similarity.

Indeed, confusing similarity is especially acute in this case where the merely descriptive term (i.e., “vapors”), simply describes a product sold by Complainant in association with its APEX trademark. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).

Furthermore, the incorporation of a hyphen in the disputed domain name does not impact the analysis of confusing similarity.

Complainant has proven the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “apex”, or “vapors” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its APEX trademark.

Complainant has provided unrebutted evidence showing that Respondent was maintaining an undeveloped website associated with the disputed domain name. Respondent’s failure to develop a website corresponding to the disputed domain name with any original content is evidence supporting the conclusion that Respondent has no rights or legitimate interests in this domain name. See Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; see also Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the APEX trademark.

Respondent’s awareness of the APEX trademark can be inferred because Complainant’s APEX trademark is well-known throughout the United States of America. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”). Also, Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of the rights owned by Complainant in APEX when Respondent registered the disputed domain name.

Respondent’s awareness of the APEX trademark may also be inferred because the mark was registered in the United States prior to Respondent’s registration of the disputed domain name. The relevant priority date for all of Complainant’s trademark registrations precede the date upon which the disputed domain name was registered (i.e., July 24, 2017). See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

Also, the Panel holds that Respondent is currently warehousing the disputed domain name and does not associate the disputed domain name with an active website, but rather, at the time of filing of the Complaint, was using the disputed domain name to point to an undeveloped website. This, in the Panel’s view, is evidence of bad faith use for the purposes of the Policy.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

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, <apex-vapors.com>, be transferred to Complainant.

Gary J. Nelson
Sole Panelist
Date: January 10, 2018