PAX Labs, Inc. v. Frank Registrato / Your CBD Source / Vladyslav Dotsenko
Claim Number: FA1910001868346
Complainant is PAX Labs, Inc. (“Complainant”), represented by Stephanie H Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Frank Registrato / Your CBD Source / Vladyslav Dotsenko (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <paxcbd.com>, <paxcbd.net>, and <cbdpax.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2019; the Forum received payment on October 24, 2019.
On October 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paxcbd.com>, <paxcbd.net>, and <cbdpax.com> Disputed Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2019, the Center served a Notice of Deficiency on Complainant, inviting Complainant to amend the Complaint since the Registrar verified that there were multiple Respondents for the Disputed Domain Names and the Complainant had to choose which Respondent and Disputed Domain Names to remove from the Complaint. On October 30, 2019, Complainant filed an amended Complaint and amended annexes.
On October 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@paxcbd.com, postmaster@paxcbd.net, postmaster@cbdpax.com. Also on October 31, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses was served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 20, 2019.
On November 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Respondent’s <paxcbd.com>, <paxcbd.net>, and <cbdpax.com> Disputed Domain Names are confusingly similar to Complainant’s PAX Marks as each name consists of the mark in its entirety, merely adding the descriptive term “cbd” and either the “.net”, or “.com” generic Top-Level domain (“gTLD”).
Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Complainant did not permit Respondent’s use of or license the PAX marks to Respondent and Respondent is not commonly known by the Disputed Domain Names. Additionally, Respondent is not using the Disputed Domain Names to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Complainant concludes, Respondent is using the Disputed Domain Names to host a website that directly competes with Complainant’s business.
Respondent has registered and is using the Disputed Domain Names in bad faith. Respondent has engaged in a pattern of bad faith registration. Additionally, Respondent is attempting to attract Internet users to its competing websites for commercial gain. Respondent had actual knowledge or constructive notice of Complainant’s PAX Mark prior to registering the Disputed Domain Names.
B. Respondent
Respondent is a provider of CBD products. The Disputed Domain Names are not confusingly similar to the PAX Mark, as the word “pax” is a word that means “peace”. Respondent has rights or legitimate interests in respect of the Disputed Domain Names since they are used in accordance with the meaning of the word and not the PAX Marks.
Respondent is using the Disputed Domain Names in connection with its noncompeting business that has had an online presence since 2013.
Respondent did not register or use the Disputed Domain Names in bad faith, as Respondent was not in the same industry as Complainant until Complainant expanded into the CBD and cannabis industries in June 2019.
C. Additional Submissions
Complainant replied to Respondent’s Response on November 25, 2019. Complaint reiterated that it met its burden for all three elements under the UDRP regarding the Disputed Domain Names. Specifically, Complainant stated that Respondent’s claim that he registered the Disputed Domain Names because “pax” is a dictionary term meaning “peace” had no merit. The use of a mark that is also a dictionary term in no way diminishes Complainant’s rights in the PAX Mark as many famous trademarks are dictionary terms. Complainant also rebutted Respondent’s arguments that Respondent did not use the Disputed Domain Names in bad faith. Complainant also submitted an Annex showing updated WhoIs information for <paxcbd.com> as part of the November 25, 2019 submission.
Respondent submitted three additional emails on October 31, 2019, November 1, 2019 and November 20, 2019. In those submissions, Respondent claimed he did not own <paxcbd.com>, that he bought the Disputed Domain Name and was therefore entitled to keep it, that he was having his lawyers review the case, and insisted that he would not transfer the Disputed Domain Names without a fight.
Complainant designs, develops and manufactures vaporization technologies and devices for smoking and vaping under the PAX trademark. Complainant was formerly known as Ploom, Inc. and was founded in 2007.
Complainant is the owner of trademark registrations including, but not limited to: PAX, United States Registration No. 4,437,218, registered on November 19, 2013 for electronic vaporizer products in International Class 34; and PAX, United States Registration No. 5,294,348, registered on September 26, 2017 for software products for vaporizers in International Class 9 (hereinafter collectively referred to as the “PAX Marks”).
Complainant maintains websites at “www.pax.com” and “www.paxvapor.com” through which it advertises and promotes its vaporizer products.
The <paxcbd.com>, <paxcbd.net>, and <cbdpax.com> Disputed Domain Names were registered on March 9, 2017, October 22, 2018, and March 9, 2017, respectively. The Disputed Domain Names are confusingly similar to Complainant’s PAX Marks. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Respondent is not commonly known by the Disputed Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the PAX Marks. Respondent registered and is using the Disputed Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Names should be cancelled or transferred:
(1) the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) the Disputed Domain Names were registered and are being used in bad faith.
The Panel concludes that Complainant has shown to have rights in the PAX Marks based upon registration of the PAX Marks with the United States Patent and Trademark Office (“USPTO”), as referenced above. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel also concludes that the Disputed Domain Names are confusingly similar to the PAX Marks under the Policy ¶ 4(a)(i). The Disputed Domain Names incorporate Complainant’s PAX Marks in their entirety, with the addition of the descriptive term “cbd” and followed by the gTLD “.com” or “.net”. Additions of a generic and/or descriptive term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
In this case, the Panel finds that Complainant has made out a prima facie case. Complainant has not authorized, licensed or otherwise permitted Respondent to use its PAX Mark. Respondent does not operate any business under the name “Pax” nor is Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names.
In addition, Respondent uses the Disputed Domain Names to redirect users to Respondent’s competing website. Use of the Disputed Domain Names to offer competing products and services does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names under the Policy. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (use of a domain name to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the Disputed Domain Names in bad faith.
First, based on the circumstances here, the Respondent registered and is using the Disputed Domain Names in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s PAX Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its PAX Mark. See, e.g., Yahoo! v. Coffey (NAF FA1412001593862) (Forum Jan. 20, 2015).
Second, Respondent’s registration and use of the Disputed Domain Names constitute bad faith under UDRP ¶ 4(b)(iii) because Respondent has disrupted Complainant’s business by (a) unfairly competing with Complainant for Internet traffic, (b) advertising and offering competing products, and (c) interfering with Complainant’s ability to control the use of its federally registered PAX Mark. See Yahoo! v. Coffey (NAF FA1412001593862) (a respondent’s use of a disputed domain name serves to disrupt a complainant’s business as the domain name interferes with the complainant’s ability to control its mark).
Third, Respondent registered the Disputed Domain Names with knowledge of Complainant’s rights in its PAX Mark because the PAX Mark is well known in the vaping and cannabis industries. Respondent selected and registered the three Disputed Domain Names incorporating Complainant’s PAX Mark, and Respondent has used the Domain Names to offer competitive products in the vaping and cannabis industries. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., PAX Labs v. Mclaren (FA1909001861252) (Forum Oct. 3, 2019).
Finally, Respondent has engaged in a pattern of bad faith registration and use. A respondent’s registration of multiple domain names incorporating variants of a complainant’s mark reflects a pattern of bad faith registration under the Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paxcbd.com>, <paxcbd.net>, and <cbdpax.com> Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Dated: November 27, 2019
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