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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nu Mark LLC v. Registration Private, Domains By Proxy, LLC / Seth Howard

Case No. D2018-1168

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Seth Howard of West River, Maryland, United States.

2. The Domain Names and Registrar

The disputed domain names <apexcigars.co>, <apexcigars.com>, and <apexcigars.net> 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 May 25, 2018. On May 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 29, 2018, 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 June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 25, 2018.

The Center appointed Dennis A. Foster as the sole panelist in this matter on July 3, 2018. 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 is a United States company that develops and markets electronic vapor (“e-vapor”) and related products. The Complainant has obtained many registrations, including with the United States Patent and Trademark Office (“USPTO”), for its APEX trademark (e.g., Registration No. 5,082,503, registered November 15, 2016; and Registration No. 5,083,112, registered November 15, 2016).

The disputed domain names, <apexcigars.co>, <apexcigars.com>, and <apexcigars.net> are owned by the Respondent. All of the disputed domain names were registered on January 29, 2017 and resolve to websites that provide links to third party websites, some of which offer goods that compete directly with those offered by the Complainant under its APEX trademark.

5. Parties’ Contentions

A. Complainant

- The Complainant is a Untied States company that develops and markets electronic vapor (commonly referred to as “e-vapor”) and related products. The Complainant has operated under the APEX trademark since August 2016, and has trademark registrations across many jurisdictions, including registrations with the USPTO. The Complainant also utilizes many domain names incorporating its mark for business purposes.

- The disputed domain names <apexcigars.co>, <apexcigars.com>, and <apexcigars.net> are all confusingly similar to the Complainant’s APEX trademark. All of the disputed domain names simply add the generic term “cigars”, which is closely linked and associated with the Complainant’s offerings, to the mark, rendering no meaningful distinction. The various generic Top-Level Domains (“gTLDs”), “.co”, “.com” and “.net”, are inconsequential in making comparisons between the disputed domain names and the trademark under the Policy.

- The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not licensed, authorized or permitted the Respondent to use the APEX trademark in a domain name. The Respondent is not commonly known by any of the disputed domain names. The disputed domain names are used to redirect Internet users to websites that feature links to third party websites, some of which compete directly with the Complainant’s business. Presumably, the Respondent receives pay-per-click fees from this linkage. This usage is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the names.

- The disputed domain names were registered and are being used in bad faith. The Complainant and its trademark are well known in relation to e-vapor and smoking products within the United States. The Respondent’s registration of domain names that are confusingly similar to that trademark is evidence that the Respondent was aware of that mark and the Complainant’s business. The Respondent’s use of the Complainant’s trademark for pay-per-click linkages, whether actively designed by the Respondent or passively obtained through the Registrar, is intended to steer commercial gain to the Respondent based upon likely confusion between the names and the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with Policy, paragraphs 4(a)(i)-(iii), the Panel may find in favor of the Complainant and order a transfer of the disputed domain names, <apexcigars.co>, <apexcigars.com> and <apexcigars.net>, providing the Complainant establishes that:

- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is convinced by the Complainant’s submission of evidence that its APEX trademark is registered with the USPTO, which substantiates the Complainant’s claim to sufficient rights in that mark for purposes of Policy, paragraph 4(a)(i). See Nu Mark LLC v. Registration Private, / Domains By Proxy, LLC / Matt Robinson, WIPO Case No. D2017-2085 (“The Complainant has rights in its APEX mark, evidenced by numerous registrations for that mark in the United States for electronic cigarettes and related products.”); and The Schneider Group, Inc. v. Jack Mann, WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”).

The disputed domain names are <apexcigars.co>, <apexcigars.com> and <apexcigars.net>, and are not, in the Panel's opinion, identical to the Complainant's APEX trademark. All of the names add the term “cigars” to the mark, along with an obligatory top-level domain. The various gTLDs, “.co,” “.com” and “.net,” are irrelevant in the Panel's evaluation of similarity between the disputed domain names and the Complainant's trademark. With respect to the additional “cigars” term, the Panel takes note that the Complainant operates in the e-vapor business, which is directly connected to smoking and therefore to cigarettes, cigars, and pipes. Ergo, the Panel must conclude that the addition of the descriptive term “cigars”, which is directly related to the Complainant’s business, does not prevent any of the disputed domain names from being considered confusingly similar to the APEX trademark. The Panel determines that they all are confusingly similar. See Nu Mark LLC v. Contact Privacy Inc. Customer 0148807310 / Joseph Casey, Apex Vapor, WIPO Case No. D2017-2083 (finding <apexvapor.net> to be confusingly similar to the APEX mark); and Piloto Cigars, Inc. v. John Kelly, WIPO Case No. D2006-0492 (finding <padroncigar.com> to be confusingly similar to the PADRON mark); and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 (“The applicable Top Level Domain . . . in a domain name [e.g., ‘.com’, ‘.club’, ‘.nyc’] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Prior UDRP panels have found that a complainant need merely present a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name, whereupon the respondent is obliged to come forward with clear evidence that it does possess those rights or interests. See WIPO Overview 3.0, section 2.1; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”).

In this case, the Panel has determined above that all of the disputed domain names are confusingly similar to the Complainant’s mark. Moreover, the Complainant has contended that the Respondent has no license, authorization or permission from the Complainant to use its trademark within a domain name. Given these circumstances, the Panel believes that the Complainant has sustained a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent has declined to file a Response, leaving the Panel to assess whether the Respondent has a reasonable claim to rights or legitimate interests in the disputed domain names based upon the remaining record. In doing so, the Panel will accept the reasonable contentions included in the Complaint as true. See The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (“The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true.”); and RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true...”).

As the Respondent's name bears no resemblance at all to any of the disputed domain names, the Panel finds that the Respondent is not commonly known by any of those names and thus Policy, paragraph 4(c)(ii) does not apply in these proceedings. Furthermore, the Panel accepts the Complainant’s reasonable contention, supported by evidence supplied in the Complaint, that the disputed domain names resolve to websites that contain links to third party websites, some of which offer products that compete directly with the Complainant’s goods. Since the disputed domain names are confusingly similar to the Complainant’s established mark and the links almost certainly provide pay-per-click revenue to the Respondent, the Panel decides that such use constitutes neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the names under Policy, paragraph 4(c)(iii). See Barclays Bank PLC v. Above.com Domain Privacy / ‘Hi How’ (Ni How), WIPO Case No. Case No. D2012-1829 (“The Respondent is using the disputed domain name to operate a website that contains links to various commercial websites that compete with the Complainant...such use does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii).”); and Allstate Insurance Company v. Moniker Privacy Services/Guowei Hai Gui, WIPO Case No. D2011-0176 (“...there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing sponsored links to the complainant’s competitors.”).

Accordingly, the Panel finds that the Complainant’s prima facie case prevails, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy specifies a circumstance that would give rise to a finding of bad faith registration and use of a disputed domain name as follows:

“by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Panel has concluded previously that the disputed domain names resolve to websites that contain pay-per-click links to third party websites offering various products, some of which compete directly with those of the Complainant. The Panel finds that this use of the confusingly similar disputed domain names for pay-per-click linkage is an intentional attempt by the Respondent to gain commercially by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and thus exemplifies bad faith registration and use of those names per Policy paragraph 4(b)(iv). See Andrey Ternovskiy dba Chatroulette v. Admin Mabinc, Mab Inc, WIPO Case No. D2018-0806 (“The other disputed domain names resolve to a landing page with PPC links, some of which resolve to sites that compete directly with the Complainant’s website. . .In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy.”); and Autodesk Inc. v. Telecom Tech Corp. / Private Registration (EXP), WIPO Case No. D2011-1670 (“A respondent’s use of a domain confusingly similar to a complainant’s mark for the purpose of attracting traffic to a website without content of its own and that provides links to commercial websites of others, satisfies the bad faith criteria of Policy 4(b)(iv).”).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names, <apexcigars.co>, <apexcigars.com>, and <apexcigars.net> be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: July 17, 2018

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