WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mike Sarieddine v. Registration Private, Domains By Proxy, LLC / Alien Liquids

Case No. D2018-2105

1. The Parties

The Complainant is Mike Sarieddine of Woodland Hills, California, United States of America (“USA” or “United States”), represented by Patel & Almeida. P.C., USA.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / Alien Liquids of Buenos Aires, Argentina, self-represented.

2. The Domain Name and Registrar

The disputed domain name <alien-liquids.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2018, 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 the Complainant on September 18, 2018 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 September 23, 2018.

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 September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent submitted three informal emails on September 18, 2018, September 19, 2018 and September 24, 2018, but did not submit a substantive Response. On October 15, 2018, the Center notified the Parties that it would proceed with panel appointment.

The Center appointed Antony Gold as the sole panelist in this matter on October 22, 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 produces a range of electronic cigarette products including vaporizer e-liquid. It has manufactured and sold e-liquid to consumers in the United States and elsewhere since 2008.

The Complainant is the owner of a figurative United States trade mark, registration No. 4517249, in international class 34, which comprises a graphic of an alien head and accompanying wording reading ALIEN VAPE, VAPE JUST GOT REAL! (the last four words being in very small font). This mark was registered on April 22, 2014 and is used, in a slightly modified form, on the Complainant’s product packaging. The Complainant also owns United States trade mark registration No. 4997336 for the words ALIEN VAPE in standard characters. This was registered on July 12, 2016 in international class 34. The goods covered include “electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges”. The first use in commerce date for both trade marks is stated to be April 2013.

The Complainant says that his products are stocked in about 3,000 stores worldwide and in about 1,000 stores in the United States. His annual revenues amount to “hundreds of thousands of dollars” and his products are promoted through his website at “www.alienvape.com”.

The disputed domain name was registered on July 30, 2016. It points to an Alien Liquids-branded website offering for sale Alien Liquids vaporizer e-liquids under the strapline, “Otherworld experience”. The Alien Liquids branding on each bottle of e-liquid is super-imposed over a graphic of an alien head.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights, namely its trade marks for ALIEN VAPE described above. The disputed domain name replicates the first, and dominant, portion of the Complainant’s trade mark and couples it with the term “liquids”, which is generic or descriptive in the context of e-liquids. Given the shared term “Alien” and the identical nature of the goods, the disputed domain name is confusingly similar to the Complainant’s trade marks. Indeed, descriptive or generic terms should not be considered when comparing the trade mark in issue to the disputed domain name.

The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been an authorized representative or agent of the Complainant. It does not own any trade mark registrations and cannot present any other indicia of trade mark rights, nor is it identified or commonly known by the disputed domain name. Instead, the Respondent operates a website dedicated to the sale of infringing “Alien Liquids” e-liquids. These products are designed to trade upon the goodwill associated with the Complainant and its ALIEN VAPE trade marks. Through the use of similar “Alien” branding and use of a similar “alien head” the Respondent’s website deliberately gives consumers the false and misleading impression that it is affiliated with, or sponsored by, the Complainant when that is not the case. The Respondent is using the disputed domain name to mislead Internet users searching for the Complainant’s products into visiting its unauthorized commercial website. The Respondent is engaged in intentional infringement of the Complainant’s ALIEN VAPE marks through the use of the disputed domain name. Such use does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name.

Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The website to which the disputed domain name resolves is intended to divert potential customers of the Complainant to the Respondent’s competing website. Internet users may become confused as to the Complainant’s affiliation with the disputed domain name, based on the confusing similarity between the disputed domain name and the Complainant’s trade mark. Accordingly, it is appropriate to find that the Respondent has registered and is using the disputed domain name in bad faith by intentionally attracting Internet users to its website in order to create a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship and affiliation of the Respondent’s website.

The evidence suggests that the Respondent had actual knowledge of the Complainant’s prior rights in the ALIEN VAPE marks before registering the disputed domain name. First the Complainant first used its ALIEN VAPE trade mark in 2008, that is about 8 years before the Respondent’s registration of the disputed domain name. Second, the Complainant’s products are well known in many countries. Third, the Respondent has adopted both the word and the design portions of the ALIEN VAPE marks namely the word “Alien” and the Complainant’s “alien head” design logo. Furthermore, the infringing marks are used on the same type of e‑liquids. There is no explanation for this near-exact copying other than the Respondent had actual knowledge of the Complainant.

Lastly, the Respondent committed these acts under the cloak of anonymity by using a privacy service. Use of a privacy service, when combined with other factors indicative of bad faith, supports a finding of bad faith. There is no other reason which might explain why the Respondent had used a privacy service.

B. Respondent

The Respondent did not serve a formal Response to the Complaint. However, On September 19, 2018 and September 19, 2018, the Respondent sent two informal emails querying what is the problem with the disputed domain name. On September 24, 2018, it sent an email to the Center containing three hypertext links which were followed by the following remarks; “I can continue… there are lots of brands that have alien style, WIPO come on guys, don’t just amend over a person who contacted a lawyer. Its obvious this is not a copy and, even though we are not in the same country, My best”. The hypertext links are to the website of another vendor of alien-themed e-liquids, based in the United States, called “AlienVapor.com” (this name also corresponding to its website address), a product of another e-juice vendor, which is termed “Alien visons e-juice” and which is also sold by a United States company and an Instagram page for an Argentinian company, also selling e-liquids, which uses an image of an alien head as a prominent feature of its product marketing.

6. Discussion and Findings

Paragraph 10(b) of the Rules obliges the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel therefore treats the Respondent’s brief email of September 24, 2018 as its informal response to the Complaint.

Paragraph 4(a) of the Policy provides that the Complainant needs to prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of 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

The Complainant has established, through its ownership of the trade marks detailed above, that it has rights in the trade mark ALIEN VAPE.

When considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name is not identical to the mark. The appropriate approach to considering whether it is confusingly similar is set out at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

In the context of a trade mark registered for goods including e-liquids, the words “vape” in the Complainant’s trade mark and “liquids” in the disputed domain name are descriptive. The distinctive and dominant recognizable feature of both is the word “alien”.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;

(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or

(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The circumstances set out at paragraphs 4(c) (ii) and (iii) are inapplicable; there is nothing to suggest that the Respondent has been commonly known by the disputed domain name and its use of the disputed domain name is clearly commercial in character.

The disputed domain name is ostensibly being used in connection with an offer of goods. Whether that offer should be considered to be bona fide within the meaning of paragraph 4(c)(i) can be broken down into three issues. First, the offering will not be bona fide if the evidence suggests that the Respondent’s intention in establishing and designing its website has been to confuse Internet users into thinking that it is either the Complainant’s website or a website authorized or operated by him. Nor, second, will the Respondent’s offering be bona fide if its intention has been to create a sham website, deliberately intended to make it difficult for the Complainant to secure the disputed domain name through proceedings under the Policy. Third, as a pre-requisite to a finding that either of these scenarios applies, the renown of the Complainant’s ALIEN VAPE trade mark will need to have been sufficient for the Respondent, on balance, to have been aware of it.

First, is the Respondent’s website and its products intended to lead Internet users to confuse them with those of the Complainant? It has not been possible to obtain a fully rounded picture of the Respondent’s website from the extracts provided by the Complainant, nor has he provided screen prints of his own website. As explained at section 4.8 of the WIPO Overview 3.0: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent….”.

The Panel has accordingly visited both the Complainant’s and the Respondent’s websites, so that a proper comparison can be made, and it has also visited the sections of the third party websites accessed via the links provided by the Respondent in its informal email response.

The home page of the Complainant’s website displays rotating imagery, primarily showing one of its e-liquid products positioned amongst a cluster of fruit against an outer space backdrop, as evidenced by an asteroid belt backdrop. Lower down, the Complainant’s e-liquid bottles are positioned against their carton containers. The packaging features white elements with additional colours used in order to denote the various flavours of the Complainant’s products. The flavours generally have alien-related names such as “Aurora”, “Roswell”, and “Area 51”. The central point of both the cartons and bottles features a circular black and white logo. Across the central portion of the circle is a horizontal band containing the words “ALIEN VAPE” in large font and “PREMIUM E-JUICE” in much smaller font. Above this band is a graphic of the head and shoulders of an alien. The head takes the form of that shown in the Complainant’s figurative United States trade mark, that is, it is circular in shape, save for the lower portion, which points to a chin. Its overall colouring is silver, save that blue and white are used to denote the eyes.

The top section of the Respondent’s home page depicts its products positioned against a selection of backgrounds; these change every few seconds and include garden, urban landscape and interior photographs. A range of different flavoured bottles are promoted and displayed together with descriptions of the flavours. No cartons are shown. The predominant colours used for the Respondent’s bottles are black and gold with the words “Alien” and “Liquids” being picked out in gold and white respectively and positioned within the outline of an alien head. The Respondent’s alien head is not circular in shape; it features very obvious ears and bulging cheeks. Silver is used to denote what might be the eyes. The remainder of the head is black with the outline picked out in differing colours on the bottles (to denote different flavours) against a black background. The names of the e-liquid flavours are not alien-themed and include “Blueberry Pie”, “Breakfast Club”, and “Appleasure”.

The website also features a larger scale photograph of the bottle used by the Respondent which contains descriptions about its key features. At the very bottom of the webpage is a question “What are you waiting for?”, followed by a contact email address.

The commonality between the websites and products comprises the use of the word “Alien” as the dominant component of the Parties’ products and trading styles and the use of an alien head as part of the imagery and branding. It should be noted that, whilst “Alien Liquids” is considered confusingly similar to the Complainant’s ALIEN VAPE trade mark for the purposes of the first element of the Policy, the brand names are clearly not identical. Overall, the content and layout of the Respondent’s website and the design of the get-up on its bottle is markedly different from that of the Complainant’s website and bottle and do not give the impression of either being copied from the Complainant or intended to confuse Internet users by suggesting some form of connection with his brand.

Second, does the Respondent’s website give the appearance of being a sham? There are some oddities in its website. There is nothing which indicates that any of the products displayed are actually for sale, nor any information about the Respondent or its objective in setting up the website. The only contact information provided is an email address: “info@alien-liquids.com”. The Panel also takes into account the fact that the Respondent has used a privacy service to protect its identity. As discussed below, this can be a relevant consideration but needs to be balanced against the apparent investment on the Respondent’s part in the presentation and design of its website and bottles, which produce the impression of a genuine website. The Panel also gives some limited weight to the Respondent’s assertion that “Its obvious this is not a copy”. The Panel does not consider that the evidence, in its totality, points to the Respondent’s website being a sham.

Third, is the evidence of the Complainant’s repute sufficient to establish that it is likely to have come to the attention of the Respondent? The Complainant says that he has been trading under the name Alien Vape since 2008, although his two United States ALIEN VAPE trade marks claim a first use in commerce date of April 2013. The Complainant does not expressly claim any rights in Argentina, where the Respondent is (at least ostensibly) based. Beyond stating that he has sold “significant amounts” of his products in the European Union, South America and the Middle East, no details of the distribution of the Complainant’s sales are given other than that the Complainant’s products are sold in 3,000 stores worldwide and in about 1,000 stores in the United States. No information is given about the volume of sales save that annual revenues are stated to be “in the hundreds of thousands of dollars”, which means that it is not possible to form any view about the scale of the Complainant’s business in a global context.

Similarly, no information is given to support the Complainant’s assertion of “extensive advertising” of his products and the claim that “the Complainant owns valuable common-law and registered trade mark rights in ALIEN VAPE® in the U.S. and around the world” other than the two United States trade marks and the comment that “Complainant also heavily promotes his ALIEN VAPE® products through his website at www.alienvape.com”. Moreover, whilst the Complainant claims that he “vigilantly defends” his brand and says that he “regularly enforces his trademark rights in the Federal Courts of the United States”, this claim also lacks any particularity.

Based on the information provided in the Complaint, it is not possible to form a view as to the global reach of the Complainant’s brand, other than that it seems to have been overstated by the Complainant, or to conclude that the Respondent was likely to have been aware of the Complainant’s business as at the time of its registration of the disputed domain name. In this respect, as the hypertext links provided by the Respondent indicate, there are other alien-themed e-liquid products for sale, including in the United States, which suggests that the Complainant is not the only vendor of e-liquids to conceive of selling a range of alien-themed products. This creates sufficient doubt as to the likelihood of the Respondent having derived its alien concept solely from the Complainant.

As explained at section 2.1 of the WIPO Overview 3.0: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Note that a complainant still needs to get to the point of establishing a prima facie case. As commented on by the panel in Grundfos Holding A/S v. PrivacyProtect.org / Incredible SEO Mehul (Sailesh Patel / Ajay Soni), WIPO Case No. D2011-1355; “While Respondent’s case is not assisted by the absence of a response, this is not a case in which there are strong or even typical indicia of cybersquatting (such as, for example, a pattern of abusive registration of domain names by Respondent) – in fact, quite the contrary. The evidentiary burden on a Complainant in such a case to present appropriate supporting material for its claims is commensurately higher in order to establish a prima facie case under the second element of the Policy”.

By a narrow margin, the Panel finds that the Complainant has failed to demonstrate a prima facie case under this element of the Policy. Whilst the position is finely balanced, even if the scales had tipped in favour of the Complainant under this element of the Policy, in the light of the Panel’s finding under the third element, as set out below, it would not have affected the Panel’s overall finding.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. This is the ground relied upon by the Complainant as evidence of the Respondent’s bad faith and use.

As explained at section 4.2 of the WIPO Overview 3.0; “The applicable standard of proof in UDRP cases is the ‘balance of probabilities’ or ‘preponderance of the evidence’; some panels have also expressed this as an ‘on balance’ standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true”. In other words, if a complainant’s assertions are no more compelling than any contrary explanation, it does not succeed.

Weighing in the balance against the Respondent are the following. First, there are aspects of its website that are odd. The content is sparse. It is not transactional and the only contact point is an email address. Beyond asserting in its email dated September 24 that “there are lots of brands that have alien style…Its obvious this is not a copy”, the Respondent has unhelpfully not provided a detailed response which could have explained when and why its business was established. It is not the role of the Panel to either join (let alone, try to find) the dots of the Respondent’s case and this omission counts against it. The same applies to the fact that the Respondent had protected its identity through use of a privacy service. As explained at section 3.6 of the WIPO Overview 3.0; “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith”. Again, whilst the use of a privacy service is not determinative, it goes in the balance.

Against these factors must be placed the following. First, as described earlier, save for two areas of similarity, the Parties’ websites and branding, coupled with the shape and appearance of the products and their presentation are markedly different. The Respondent’s products and website simply do not give the impression of having been designed in order to create confusion with those of the Complainant or as a sham exercise to make it difficult for the Complainant to recover the disputed domain name through proceedings under the Policy. The Parties’ websites share an alien-related name and make use of alien heads as part of their branding but, as the Respondent has pointed out, they are not the only companies to consider an alien theme for promoting e-liquids. Second, as discussed above, the Complainant has failed to produce any real evidence of the repute of its Alien Vape brand and its assertion that it “owns valuable common-law and registered trade mark rights in ALIEN VAPE® in the U.S. and around the world”, is largely unsupported.

The burden is clearly on the Complainant to provide information about the nature and scale of its business. See, for example; PJS International SA v. Carl Johansson, WIPO Case No. D2013-0807 where information of this type was similarly lacking and the panel declined to make a bad faith finding. In a similar vein, see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, where the panel commented that;

“…….. renown or goodwill of a mark is an objective matter entirely within the knowledge of and documentation available to a complainant. Every plaintiff in an infringement action must prove as an affirmative aspect of his case that his mark has commercial recognition at the date of infringement; a complainant under the Policy must do so to show that the domain name was registered in bad faith. In this proceeding such proof from 2002 – if it exists – could have been found and submitted by Complainant without the need to obtain anything from Respondent. Compare Pierce Brosnan v. Network Operations Center, supra (providing statistics on the number of motion pictures complainant starred in as well as the total box office sales from those motion pictures). In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent”.

The Panel consider whether it was appropriate to issue a procedural order under paragraph 12 of the Rules inviting the Complainant to supply additional information but decided not to do so for the same reason as that articulated by the panel in Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC, WIPO Case No. D2011-1451 namely that “giving the Complainant a second bite at the apple would not be in line with the spirit of expediency and efficiency suggested in the Policy”. See also the other similar decisions on this point referenced in Bigfoot Ventures LLC v. Shaun Driessen, WIPO Case No. D2016-1330.

Having regard to all of the above, the evidence in the Complaint insufficient to enable the Panel to conclude, on a balance of probabilities, that the Respondent’s intention in registering and using the disputed domain name has been to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Panel therefore concludes that the Complainant has failed to establish that the disputed domain name was registered and is being used in bad faith.

The Panel notes that the Complainant remains free to pursue his claims, including for possible trade mark infringement, in a competent court.

7. Decision

For the foregoing reasons, the Complaint is denied.

Antony Gold
Sole Panelist
Date: November 7, 2018