Westmore · UDRP DecisionSmoke-apex.com, Smokeapex.com
The Panel ordered transfer of both disputed domain names. It found them confusingly similar to the Complainant’s APEX mark because each incorporated APEX with the descriptive or possibly generic term “smoke.” The Respondent lacked rights or legitimate interests because the domains were used for pay-per-click links to competitors and the Respondent did not rebut the Complainant’s prima facie case. Registration and use in bad faith were established from the domains’ composition, their registration after the Complainant’s use and federal registration of APEX, and their use for unauthorized pay-per-click links.
The timeline behind smoke-apex.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind smoke-apex.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The case illustrates how a domain that combines an entire trademark with a term directly associated with the trademark owner’s products may strengthen, rather than dispel, the inference of targeting. It also shows the significance of competitor-focused pay-per-click use across both the rights-or-legitimate-interests and bad-faith analyses.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nu Mark LLC v. Registration Private, / Domains By Proxy, LLC / Matt Robinson Case No. D2017-2085 1. The Parties The Complainant is Nu Mark LLC of Richmond, Virginia, United States of America, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Registration Private, / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Matt Robinson of Delray Beach, Florida, United States of America. 2. The Domain Names and Registrar The disputed domain names <smoke-apex.com> and <smokeapex.com> are registered with GoDaddy.com, LLC (“the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2017 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 November 1, 2017. 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 November 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2017. The Center appointed Evan D. Brown as the sole panelist in this matter on December 7, 2017. 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 develops and markets electronic cigarettes and related products that people use for “vaping” – a term describing an act analogous to “smoking” tobacco products. It owns several registrations in the United States for the trademark APEX for these goods, including, by way of example, Reg. No. 5,082,503, issued November 15, 2016. The Complainant has used the APEX mark since at least as early as August 2016. The Respondent registered the disputed domain names on July 13, 2017, and set them up to display web pages having pay-per-click links to the websites of third parties providing goods competitive to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that: (i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in its APEX mark, evidenced by numerous registrations for that mark in the United States for electronic cigarettes and related products. The disputed domain names are confusingly similar to the Complainant’s mark, in that they incorporate the mark in its entirety, with the only accompanying word being “smoke” which, given the nature of the Complainant’s goods, is a highly descriptive term, if not generic. Neither the word “smoke” nor the “.com” portion meaningfully distinguishes the disputed domain names from the Complainant’s mark. Accordingly, the Complainant has satisfied this first element of the Policy. B. Rights or Legitimate Interests The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names, and if the Respondent fails to rebut that prima facie showing. In this case, the Complainant has made that showing, and the Respondent did not come forward with any evidence to rebut the showing. The Panel finds that (a) the Respondent’s use of the disputed domain names to display pay-per-click links to the websites of the Complainant’s competitors is not a bona fide offering of goods or services, (b) the Respondent has not been commonly known by the disputed domain names, and (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks. For these reasons, the Panel finds that the Complainant has succeeded on this second element of the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.” The Panel finds that the Respondent registered the disputed domain names in bad faith, particularly due to the use of the word “smoke” – a concept closely associated with the Complainant’s goods – subsequent to the time the Complainant’s goods had entered the market under the APEX mark and become subject to federal trademark registrations. Bad faith use is clear from the Respondent’s activities of using the disputed domain names to establish websites displaying unauthorized pay-per-click links. 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 names <smoke-apex.com> and <smokeapex.com> be transferred to the Complainant. Evan D. Brown Sole Panelist Date: December 21, 2017
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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