Swisher International, Inc. v. brad umile
Claim Number: FA2110001968878
Complainant is Swisher International, Inc. ("Complainant"), represented by Elizabeth Lee D'Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is brad umile ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hempirevapes.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021; the Forum received payment on October 13, 2021.
On October 15, 2021, Network Solutions, LLC confirmed by email to the Forum that the <hempirevapes.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@hempirevapes.com. Also on October 19, 2021, the Written Notice of the Complaint, notifying Respondent of the email addresses 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers cigars and other products for purchase online and in shops throughout the world. Complainant has used HEMPIRE as a trademark for cigarette rolling papers made from hemp since 2005, and currently uses the mark for products sold in 21,500 stores across the United States. Complainant claims that its HEMPIRE brand is the number one selling brand of hemp rolling paper by volume in the United States. Complainant owns a United States trademark registration issued in 2010 for HEMPIRE in standard character form, along with other pending applications, and also asserts common law rights in the mark. Complainant also states that the United States Patent & Trademark Office has refused registration of other marks incorporating HEMPIRE for CBD and related products on the grounds that they would cause a likelihood of confusion with Complainant's registered HEMPIRE mark.
Respondent registered the disputed domain name <hempirevapes.com> in June 2018. The domain name is being used for a website entitled "Hempire Vapes" that offers or purports to offer various CBD and hemp-related products for sale. Complainant sent a letter to Respondent in August 2021, asserting its rights in the HEMPIRE mark and demanding that Respondent cease use of HEMPIRE in Respondent's store name, products, or social media; Respondent did not comply or otherwise respond. Complainant states that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <hempirevapes.com> is confusingly similar to its HEMPIRE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <hempirevapes.com> incorporates Complainant's registered HEMPIRE trademark, adding the generic term "vapes" (which is related to Complainant's products) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Swisher International, Inc. v. Michael Johnson, FA 1968728 (Forum Nov. 12, 2021) (finding <hempirehutcbd.com> confusingly similar to HEMPIRE); Swisher International, Inc. v. Justin Jones / Golden Valley Media, FA 1945104 (Forum June 10, 2021) (finding <hempiredirect.com> confusingly similar to HEMPIRE); JUUL Labs, Inc. v. Fadi Kasto, FA 1878488 (Forum Feb. 12, 2019) (finding <juulvapes.com> confusingly similar to JUUL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, combining it with "vapes," a generic term related to Complainant's products. The domain name is being used for a website that prominently displays the mark and that appears to offer products that compete with those offered by Complainant. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Swisher International, Inc. v. Michael Johnson, supra (finding lack of rights or interests in similar circumstances); Swisher International, Inc. v. Justin Jones / Golden Valley Media, supra (same). The Panel notes that Respondent has neither responded to Complainant's cease and desist letter nor elected to participate in this proceeding.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's registered mark; is using it to promote what appear to be directly competing products; and has neither responded to Complainant's correspondence nor participated in this proceeding. Respondent's conduct is indicative of bad faith registration and use under the Policy. See, e.g., Swisher International, Inc. v. Michael Johnson, supra (finding bad faith in similar circumstances); Swisher International, Inc. v. Justin Jones / Golden Valley Media, supra (same); cf. Swisher International, Inc. v. Hempire State Smoke Shop, FA 1952939 (Forum July 27, 2021) (denying complaint where respondent participated in proceeding and alleged that complainant had previously acquiesced in respondent's use of mark). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hempirevapes.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 15, 2021
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