WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Smoke Anywhere USA, Inc. v. Alterna Cig

Case No. D2013-1188

1. The Parties

The Complainant is Smoke Anywhere USA, Inc. of Hallandale, Florida, United States of America, represented by Venable, LLP of United States of America.

The Respondent is Alterna Cig of Cos Cob, Connecticut, West Jacksonville, Florida, and Stamford, Connecticut, United States of America.

2. The Domain Name and Registrar

The disputed domain name <alternacig.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 July 3, 2013. On July 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided the registrant’s 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2013.

The Center appointed William R. Towns as the sole panelist in this matter on August 18, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is in the business of manufacturing, distributing and selling electronic cigarettes, also known as “e-cigarettes” or “e-sigs”, under the trademark ALTERNACIG. The Complainant has been in this business since February 2009 and obtained a federal registration for the mark from the United States Patent and Trademark Office (USPTO) on June 1, 2010. The Complainant asserts first use of the mark in January 10, 2009 and registered the domain name <alternacig.com> in February 24, 2009.

The Complainant allowed the domain name registration to lapse (inadvertently according to the Complainant), and the Respondent registered the disputed domain name on April 8, 2012. The disputed domain name currently resolves to a website promoting Vapefest, a fundraiser to further e-cigarette research, at which attendees can try and buy new e-cigarette products. The Vapefest website contains links to websites of various vendors of e-cigarette products.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly to its ALTERNACIG mark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent is using the disputed domain name in bad faith. The Complainant asserts that it has spent nearly USD 1 million advertising its e-cigarette products under the ALTERNACIG mark since February 2009, both over the Internet and on television. According to the Complainant, more than 2,000 television commercials have aired on 50 different channels and networks in the United States.

The Complainant avers that in the midst of a television and online advertising campaign promoting the ALTERNACIG brand in 2012, it had unintentionally allowed its registration of the disputed domain name to lapse but discovered it too late to prevent the Respondent from registering the disputed domain name. According to the Complainant, the Respondent is an individual residing in Connecticut with no presence in the e-cigarette business and no e-cigarette products. According to the Complainant, it was only after the Complainant contacted the Respondent that the Respondent began to make an active use of the disputed domain name with a pay-per-click website containing advertising links to sites offering competing e-cigarette products.

The Complainant suggests that the Respondent likely was aware of the Complainant’s rights in the ALTERNACIG mark when registering the disputed domain name, but at a minimum had constructive notice of the Complainant’s rights in the ALTERNACIG mark due to the registration of the mark with the USPTO in 2010. The Complainant notes that the Respondent’s registration of the disputed domain name took place long after the Complainant had acquired rights in the ALTERNACIG mark, and that the Respondent’s only use of the disputed domain name has been to generate pay-per-click advertising revenue by trading on the goodwill in the Complainant’s mark. In light of the foregoing, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant also maintains based on the foregoing that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent is using the disputed domain name in an attempt to mislead Internet users into believing they are accessing the Complainant’s website, when instead they are arriving at a website containing pay-per-click advertising links to third-party sites promoting e-cigarette products competing with those of the Complainant. Thus, the Complainant concludes that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or endorsement of the website or the products promoted thereon.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the disputed 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 with respect to the disputed domain name; and

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

Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the Complainant’s ALTERNACIG mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name is comprised of the Complainant’s mark in its entirety. The generic top-level domain “.com” generally is not considered for purposes of the identity or confusing similarity under the first element of the Policy.

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

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is identical to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark or commonly known by the disputed domain name. The Respondent notwithstanding has registered and is using the disputed domain name with a website featuring advertising links to third-party sites where e-cigarette products competing with those of the Complainant are offered.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

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

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel considers it more likely than not that the Respondent was aware of the Complainant and had the Complainant’s ALTERNACIG mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights through the creation of Internet user confusion. Internet users could easily expect the disputed domain name, which is identical to the Complainant’s ALTERNACIG mark, to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

The record before the Panel does not reflect the Respondent’s use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, and in the absence of any reply by the Respondent, the record reflects only the Respondent’s intent to exploit and profit from the goodwill and reputation of the Complainant’s mark. As noted above, the Respondent has not been commonly known by the disputed domain name or authorized to use the Complainant’s mark. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. In short, absent any reply by the Respondent, the record evinces that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the record evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The record on balance reflects that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

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 name <alternacig.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: September 2, 2013

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.