WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Khalid Ali v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Frank Rawlings

Case No. D2021-2812

1. The Parties

The Complainant is Khalid Ali, United States of America (“United States”), self-represented.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Frank Rawlings, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <ziggyssmokeshop.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2021, 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 August 27, 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 amendment to the Complaint on September 9, 2021.

The Center verified that the Complaint together with the amendment to 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 September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on October 13, 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.

4. Factual Background

The Complainant is a United States retailer specialized in the sale of products for smoking and related accessories.

The Complainant has provided evidence of ownership of the United States trademark registration No. 4702513 for ZIGGY’S SMOKE SHOP (word mark), filed on February 24, 2014 and registered on March 17, 2015, in International Class 35.

The Complainant operates its main website at the domain name <ziggyssmokeshops.com>, which was registered on April 4, 2017, and is used by the Complainant to advertise and offer for sale products for smoking and related accessories under the trademark ZIGGY’S SMOKE SHOP.

The disputed domain name <ziggyssmokeshop.com> was registered on June 22, 2021 and is currently not pointed to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name is identical to its trademark ZIGGY’S SMOKE SHOP and nearly identical to the domain name <ziggyssmokeshops.com>, at which it operates its main website.

The Complainant indicates that the Respondent registered and used the disputed domain name in bad faith by pointing it to a website featuring contents taken from the Complainant’s website, in an effort to confuse visitors into believing that the website is operated by the Complainant and harvest credit card data without fulfilling orders.

B. Respondent

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

6. Discussion and Findings

According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has established rights over the trademark ZIGGY’S SMOKE SHOP based on the United States trademark registration cited under section 4 above.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark ZIGGY’S SMOKE SHOP is entirely reproduced in the disputed domain name but for the addition of an apostrophe and the generic Top-Level Domain (“gTLD”) “.com”, which can be disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel infers from the Complainant’s statements that the Complainant has not authorized the Respondent to register the disputed domain name, incorporating its registered trademark.

Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Frank Rawlings, might be commonly known by the disputed domain name.

The Complainant submitted that the Respondent has pointed the disputed domain name to a website misappropriating content taken from its official website. The Panel notes that, at the time of the drafting of the Decision, the disputed domain name is not pointed to an active website and no screenshot of the website previously displayed at the disputed domain name is available within the annexes to the Complaint and also among the screenshots saved by the Internet Archive (“www.archive.org”).

However, in the absence of a Response and noting that the disputed domain name, being substantially identical to the Complainant’s trademark, carries a high risk of implied affiliation, the Panel finds on balance that the passive holding of the disputed domain name shows that the Respondent did not intend to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See section 2.5.1 of the WIPO Overview 3.0.

Therefore, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent inter alia Manheim Auctions Inc’s 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 the holder’s website or location or of a product or service on the holder’s website or location.

The Panel finds that, in light of the prior registration and use of the Complainant’s trademark ZIGGY’S SMOKE SHOP in connection with the Complainant’s retailing services of products for smoking and related accessories and considering the virtual identity of the disputed domain name with the Complainant’s trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.

As to the use of the disputed domain name, the Panel notes that it is currently not pointed to an active website. As indicated in section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

In the case at hand, in view of i) the distinctiveness of the Complainant’s prior trademark; ii) the Respondent’s registration of a domain name virtually identical to the Complainant’s prior trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iv) the Respondent’s failure to respond to the Complaint, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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 name <ziggyssmokeshop.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: October 27, 2021