WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vapro Supply LLC v. Vapor Acquisitions Company, LLC
Case No. D2019-0909
1. The Parties
The Complainant is Vapro Supply LLC, United States of America (“United States”), represented by Chipperson Law Group, P.C., United States.
The Respondent is Vapor Acquisitions Company, LLC, United States, represented by Hall Estill, United States.
2. The Domain Name and Registrar
The disputed domain name <vaporsupply.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2019, 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 April 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. On May 17, 2019, the Respondent requested an automatic response extension under paragraph 5(b) of the Rules. The Response deadline was extended to May 24, 2019, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on May 23, 2019.
The Center appointed W. Scott Blackmer, William R. Towns, and Sally M Abel as panelists in this matter on June 25, 2019. The Panel finds that it was properly constituted. Each member of 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 wholesale distributor of “electronic cigarettes and vapor accessories” based in Austin, Texas, United States. The online database of the Texas Comptroller of Public Accounts shows that the Complainant was registered as a limited liability company with the Texas Secretary of State on February 28, 2014. The Complainant operates a website at “www.vaprosupply.com”, which advertises the Complainant as “the only company in the vapor industry dedicated to wholesale”, shipping e-cigarette products and vapor accessories to retailers throughout the United States and Canada. The parties agree that the Complainant’s domain name was first registered on August 29, 2013. The Complainant states (although without supporting documentation) that its business has been operating since at least October 1, 2013.
The Complainant holds a number of registered VAPRO trademarks, including United States Trademark Registration Number 4964420 for VAPRO as a standard character mark (registered on May 24, 2016) and Registration Number 4964375 for VAPRO in stylized letters (also registered on May 24, 2016). The Complainant also claims common law rights in VAPRO SUPPLY “dating back to at least October 1, 2013” (presumably as a successor in interest, as that date precedes the Complainant’s company registration). The Complainant applied for United States trademark registration of VAPRO SUPPLY as a standard character mark on December 12, 2018, Serial Number 88226861; the application is pending examination.
According to the Registrar, the Domain Name was created on November 12, 2007, and is registered in the name of TPB Admin, listing the organization as Turning Point Brands in Louisville, Kentucky, United States. Turning Point Brands Inc. (“TPB”) is a Delaware corporation listed on the New York Stock Exchange. TPB, with a website at “www.turningpointbrands.com”, describes itself as “a leading marketer in the Other Tobacco Products (OTP) segment”, with smoking, smokeless tobacco, and vaping products as well as non‑tobacco brands. The Response in this proceeding was filed by a TPB subsidiary, the Respondent Vapor Acquisitions Company, LLC, which operates the website associated with the Domain Name. According to the online database of the Delaware Department of State, Division of Corporations, the Respondent is a Delaware limited liability company that was incorporated on March 16, 2018. The Respondent gives its address in Louisville, Kentucky, United States, evidently at TPB headquarters.
The Response attaches an Asset Purchase Agreement indicating that the Respondent acquired assets of Vapor Supply LLC and related entities on April 27, 2018. This transaction encompassed intellectual property assets including the Domain Name, which a company called Vapor Supply LLC based in Oklahoma City, Oklahoma, United States had previously used for its website selling e-cigarettes and vaping supplies, as shown in screenshots available through the Internet Archive’s Wayback Machine.
Since May 2, 2018, according to the Response, the Domain Name has been used to advertise and sell e‑cigarette and vaping products, since the Respondent assumed control of the Vapor Supply LLC business “engaged in the design, manufacture, marketing and selling of certain vaping devices and related smoke free technologies”. In connection with the acquisition of Vapor Supply’s business, the Respondent entered into a sublicense (also attached to the Response) that allowed it to redirect traffic from a TPB-affiliated website at “www.vaporworld.biz” to the website associated with the Domain Name.
The Domain Name resolves to a website headed “Vapor Supply”, which advertises and sells vaping products. The copyright notice is in the name of “Vapor Supply”, but no company information is given. The “About Us” content is sparse, giving a postal address in Louisville, Kentucky and stating that e-liquids are made in a “lab here on site”. The online database of the Kentucky Secretary of State does not list any company, foreign or domestic, named “Vapor Supply”.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its VAPRO trademark, transposing the letters “r” and “o” and adding the generic term “supply”, with essentially similar meaning and associated with websites dealing with the same products.
The Complainant contends that the Respondent is a direct competitor that has no permission to use the VAPRO mark and otherwise has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent acquired the Domain Name in 2018, not for its descriptive value, but to attack the Complainant’s VAPRO mark. The Complainant argues that the Respondent did this to disrupt the Complainant’s business and mislead Internet users for commercial gain. According to the Complainant, the Respondent had recently acquired another popular website at “www.vaporworld.biz” and promptly redirected it to the website associated with the Domain Name, to further confuse users and undercut the Complainant’s business. The Complainant cites instances of actual customer confusion. The Complainant suggests that the Domain Name acquisition represents deliberate, bad faith infringement on the part of the Respondent, exploiting the Complainant’s trademarks.
The Respondent does not challenge the fact that the Complainant has trademarked VAPRO but asserts that “the term ‘vapor supply’ is a generic designation that is commonly used in the industry to identify businesses that supply electronic cigarettes and vapor accessories”. The Respondent points out that this term appears frequently online and in advertising, offering many examples.
The Respondent claims a right and legitimate interest in using the string “vapor supply” descriptively in the Domain Name. The Respondent also argues that it is known by that name, after acquiring the assets and continuing the business of a company with that name which already used the Domain Name in its business, a Domain Name that was created years before the Complainant or its mark were in existence. Hence, the Respondent also denies acquiring the Domain Name to sell it to the Complainant, deprive the Complainant of a corresponding domain name, disrupt the Complainant’s business, mislead consumers, or tarnish the Complainant’s reputation.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall 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”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant indisputably holds registered VAPRO trademarks. The Domain Name is similar in sound, sense, and appearance, transposing the last two letters of the first word and adding the dictionary word “supply”, which is not distinguishing as it can be reasonably added to the name or description of virtually any product. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
The Complainant also claims VAPRO SUPPLY as a common law mark, but without submitting relevant supporting evidence of acquired distinctiveness as required under the Policy, such as “(i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys” (id., section 1.3). However, this as-yet unregistered mark is not necessary to establish the Complainant’s standing, given its registered VAPRO marks.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s VAPRO trademark for Policy purposes and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has sought to ground its prima facie case by establishing its trademark rights, confusing similarity, and a lack of permissive use. This would normally shift the burden to the Respondent.
The Respondent says it is “known” by the Domain Name, but this requires evidence beyond using the Domain Name itself (see WIPO Overview 3.0, section 2.3). As noted above, the record shows that in 2018 the Respondent acquired assets of an Oklahoma-based business known as Vapor Supply LLC, but it does not appear that the Respondent or TPB established a corresponding trade name or a legal entity with that name.
The Respondent argues as well that it has a legitimate interest in using the Domain Name for its descriptive value in referring to the supply of electronic cigarettes and vapor accessories. As the Domain Name has clearly been used commercially for this purpose since shortly after it was acquired by the Respondent’s parent corporation, this would suffice as a legitimate interest, unless the evidence indicated the probability that the Respondent chose the Domain Name for its trademark value rather than its generic value. That possibility is better addressed in the following section, on bad faith.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Given the complex evidence in the record, especially concerning the Respondent’s corporate acquisition history, the Panel finds that the relevant time for ascertaining bad faith in the registration of the Domain Name is April 27, 2018, when the Respondent acquired the Domain Name in the Asset Purchase Agreement. The Respondent does not deny awareness of the Complainant at that time. The Complainant is a leading wholesaler in the industry, and the Respondent is a direct competitor, with wholesale as well as retail customers across the United States, partly as a result of recent acquisitions.
The fact remains, however, that the Domain Name is comprised of dictionary words that are descriptive in this context (and which happen to be a typo of the Complainant’s mark) and could suit virtually any supplier of vaping products, suggesting that this may be a generic term. The Panel notes, for example, the presence of this term in the names of the following suppliers of electronic cigarettes or vaping products currently advertised online in the United States: The Vapor Supply, Omega Vapor Supply, Nevada Vapor Supply, Vids vapor Supply, DIY Vapor Supply, Florida Vapor Supply, Toot Juice & Vapor Supply, Berland Vapor Supply, Poppas Vapor Supply, Mods Up Vapor Supply, Trill Vapor Supply, Doc's Vapor Supply, Power Vapor Supply, PurePuff Vapor Supply, Vid's Vapor Supply, Vapor Supply (OH), Dakota Vapor Supply, and V3 Vapor Supply. The United States Patent and Trademark Office has registered the standard character marks NATIONAL VAPOR SUPPLY (Registration Number 4792212) and GASLIGHT VAPOR SUPPLY CO. (Registration Number 4996688), in both cases requiring the disclaimer of the term "vapor supply" apart from the entire mark.
The Domain Name was created by another entity years before the Complainant or its mark came into existence. It was used for its descriptive purpose by a business with the same name. The Respondent, another company in the same business, then legitimately acquired both the Domain Name and other assets of that business. The Respondent continues to use the Domain Name in a manner corresponding to its descriptive sense. If the Respondent now seeks to consolidate relevant online businesses around that Domain Name, that fact alone does not prove that it is doing so to disrupt a particular competitor or to exploit its trademark.
Moreover, this Domain Name does not represent, as the Complainant charges, a classic case of “typosquatting”. The Complainant’s VAPRO mark is coined, while the Domain Name simply consists of two dictionary words, possibly a generic term, that describe the Respondent’s commercial offering. The Panel considers that, more probably than not, this is the principal attraction of the Domain Name. If it results in some confusion, the Complainant must accept that this is a consequence of creating a mark that so closely resembles a descriptive dictionary word or possibly generic term.
With the ultimate burden of proof on the Complainant, the Panel finds in favor of the Respondent on both the second and third elements of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
William R. Towns
Sally M Abel
Date: July 9, 2019