WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MVH I, Inc. v. Murad Lakhdhir
Case No. D2020-3554
1. The Parties
The Complainant is MVH I, Inc., United States of America (“United States”), represented by Brand Enforcement Team 101 Domain, United States.
The Respondent is Murad Lakhdhir, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <mylevapedubai.com> (the “Domain Name”) 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 December 30, 2020. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2021, 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 January 6, 2021.
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 January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on February 8, 2021. 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.
On February 14, 2021, the Respondent sent an unsolicited filing by email to the Center comprising a short sentence indicating that MYLE is not registered officially in United Arab Emirates, and a long list of domain names. The Respondent did not give any indication as to how the filing was relevant to the case or why it was unable to provide the information earlier or in a timely manner. Accordingly, in accordance with paragraphs 10 and 12 of the Rules, the Panel declines to accept or consider the filing.
4. Factual Background
The Complainant has since 2016 manufactured and distributed electronic cigarettes and vaping products under the MYLE mark. It now distributes them to customers in over 20 countries and five different regions, including the Middle East. The Complainant is the proprietor of United States trademark number 5,652,774 MYLÉ registered on January 15, 2019, and of International trademark number 1462089 MYLÉregistered on March 4, 2019. Its primary online presence is at “www.mylevapor.com”, but it also owns a substantial portfolio of several hundred domain names comprising variations of the term “MYLE”, including “myle”, “mylevapor” and “mylevape” in both generic (“gTLD”) and country code (“ccTLD”) top level domains.
The Domain Name was registered on March 26, 2019, and redirects to the website at “www.mylevapeuae.com” with the heading “MYLÉ VAPE DUBAI” offering for sale a wide range of MYLÉ branded products at what claim to be substantially discounted prices. The “About” page on the website comprises what purports to be an open letter from the CEO of the Complainant under his personal name. The foot of the home page states “Mylevapeuae.com have no affiliation with Myle Vape, Inc. this is not official website of Myle Vape, Inc.”
5. Parties’ Contentions<
The Complainant contends that the Domain Name is confusingly similar to its MYLÉ mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant relies on the fact that it has not licensed or allowed the Respondent to use the MYLÉ mark for any purpose and states that the Domain Name is solely being used to prevent customers from navigating to the Complainant’s true MYLÉ products. The Complainant claims that “By diverting potential customers away from a domain that uses Complainant’s trademark, to potentially navigate to Respondent’s infringing domain space, Respondent is using the domain to actively disrupt Complainant’s business and tarnish Complainant’s established trademark ‘MYLE’”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(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.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the MYLÉ (the “Mark”) both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark for almost five years. Ignoring the gTLD “.com” and the acute accent over the letter “E” of the Mark for this purpose, the Domain Name differs from the Mark only by the addition of the words “vape” and “dubai”. In the view of the Panel, this addition of a dictionary term referring to the Complainant’s primary product (“vape”), and the geographical term “Dubai”, do not detract from the confusing similarity between the Mark and the Domain Name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
This Panel regards the Complaint as poorly drafted. In setting out its arguments in respect of rights or legitimate interests, the Complainant refers to the website at the Domain Name preventing “customers from navigating to the Complainant’s true ‘MYLE’ products” and diverting them away to the Respondent’s “infringing domain space”. If the Panel were to rely only on the submissions made under this heading, it would struggle to find that the Complainant had made out a prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the Domain Name was registered not for the purpose of a genuine offering of goods and services but there is no evidence that the products offered for sale on the website are anything but the genuine products of the Complainant, even though they appear to be offered at discounted prices.
Furthermore, there is no evidence either that the Respondent is offering any products other than those of the Complainant.
Although there has been no Response by the Respondent, the Panel has in mind that previous UDRP panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. The Oki Data test as set out in section 2.8 of the WIPO Overview 3.0 outlines the following cumulative requirements for such a finding:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site only to sell the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
As the Panel indicates above, the first two requirements appear in this case to be met. As far as the fourth requirement is concerned, there is no evidence from the Complainant that the Respondent has attempted to corner the market in domain names reflecting the Mark, although the Panel notes that the Domain Name redirects to another website namely <mylevapeuae.com>.
Turning to the third requirement, the Respondent’s website carries at its foot the disclaimer that “mylevapeuae.com have no affiliation with Myle Vape, Inc. this is not official website of Myle Vape, Inc.”. To that extent, the Respondent could be said to have attempted to disclose the absence of any relationship with the Complainant. However, the website is headed “MYLÉ VAPE DUBAI” and the About page of the website comprises what purports to be an open letter from the CEO of the Complainant giving various commitments to supporting customers in their decision to find an alternative to smoking combustible cigarettes and to educating users on the health benefits of decreasing dependency on such products and the like.
In the Panel’s view, the heading of the website and the use of what claims to be a letter in the personal name of the CEO of the Complainant are likely to mislead customers into believing that the Respondent is an authorized reseller of the Complainant’s products and that the use of the Domain Name is authorized or approved by the Complainant. On this basis, the site therefore fails to make clear in an accurate and prominent way the Respondent’s relationship with the Complainant.
Accordingly, the Panel does not consider that the Respondent has met the Oki Data test, and that there is a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond formally to the Complaint or to take any steps to counter the prima facie case established by the evidence available to the Panel. In the circumstances, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Name and the above finding, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.
On balance, the Panel considers that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the Mark. The composition of the Domain Name, the heading of the Respondent’s website, and the use of the name of the CEO of the Complainant for a purported open letter, were intended to confuse Internet users into believing that the Domain Name was being operated by or authorized by the Complainant. Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mylevapedubai.com> be transferred to the Complainant.
Date: February 20, 2021