TVB Inc. v. Leslie Turnbo
Claim Number: FA1505001619527
Complainant is TVB Inc. (“Complainant”), represented by Melissa H. Gray of Klemchuk LLP, Texas, USA. Respondent is Leslie Turnbo (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houstonvaporbar.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2015; the Forum received payment on May 14, 2015.
On May 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <houstonvaporbar.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2015 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@houstonvaporbar.com. Also on May 20, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 contends that it has rights in the THE VAPOR BAR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,635,252, filed June 12, 2013, registered on November 11, 2014). The Complainant contends that it began using this mark in 2011, well before the Respondent registered the disputed domain name.
Complainant contends that the Respondent’s <houstonvaporbar.com> domain name is confusingly similar to Complainant’s THE VAPOR BAR mark because it is differentiated from its trademark by only the removal of the word “the,” and the addition of the geographically descriptive term “houston” and the generic top-level domain (“gTLD”) “.com.’
Complainant asserts that the Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Leslie Turnbo” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s THE VAPOR BAR mark.
Complainant next asserts that the Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to sell products in competition with Complainant.
The Complainant asserts that the Respondent has engaged in bad faith use and registration of the disputed domain name. As evidence of this fact, the Complainant points to the fact that that the Respondent registered the <houstonvaporbar.com> domain name for the purpose of disrupting Complainant’s business, the Respondent registered the disputed domain name in order to capitalize on the confusion of Internet users, thereby profiting commercially and the Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE VAPOR BAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Respondent registered the disputed domain name on July 23, 2013.
As the Respondent has failed to file a Response in this matter, the Panel will make its determination based on the undisputed and reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant engages in the manufacture and sale of e-cigarettes and related products in conjunction with the THE VAPOR BAR mark. Complainant alleges it has rights in the THE VAPOR BAR mark through its registration with the USPTO (Reg. No. 4,635,252, registered on November 11, 2014). Complainant has provided documentation of this registration in Exhibit A. Registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). The creation of the <houstonvaporbar.com> predates Complainant’s USPTO registration. However, Complainant urges that the relevant date of Complainant’s rights in the THE VAPOR BAR mark date back to its application filing date, June 12, 2013. In addition, Complainant seems to be asserting common rights in its trademark that date back to 2011. Based either on the filing date of the trademark at issue or the common law rights it seems to have established in 2011, the Complainant has created trademark rights prior to and superior to the registration of the disputed domain name. Accordingly, the Panel finds that Complainant has rights in the THE VAPOR BAR mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <houstonvaporbar.com> domain name is confusingly similar to Complainant’s THE VAPOR BAR mark because it is differentiated by only the removal of the word “the,” and the addition of the geographically descriptive term “houston” and the gTLD “.com.’ Past panels have found that the addition of a “.com” designation does not affect Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007)(“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Past panels have also found that deleting words from a mark, but retaining distinctive portions of the mark in creating a domain name creates a confusingly similar domain name. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Complainant urges that the term “houston” is geographically descriptive of Complainant’s business operations because Complainant conducts business in Houston, Texas. Past panels have agreed that such geographically descriptive terms do not adequately distinguish a domain name and a mark under Policy ¶ 4(a)(i). See BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”).
Therefore, the Panel finds that Respondent’s <houstonvaporbar.com> domain name is confusingly similar to Complainant’s THE VAPOR BAR mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Leslie Turnbo” as Registrant. Respondent has failed to provide further evidence to indicate that it is commonly known by the domain name. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. Complaint further alleges that Respondent conducts business under the name “The Vapor Gypsy,” and has attached Exhibit E, showing <houstonvaporbar.com> and Exhibit F, showing <thevaporgypsy.com>, to demonstrate this. Past panels have found such evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Accordingly, the Panel finds that Respondent is not commonly known by the <houstonvaporbar.com> domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use because Respondent uses the resolving website to compete with Complainant.
Complainant alleges that Respondent uses the <houstonvaporbar.com> to attract Internet users to its own website to sell products that compete with Complainant. Complainant has provided documentation of <houstonvaporbar.com> in Exhibit E as well as of its own website in Exhibit C for comparison.
As such and as it is uncontroverted, there appears to be competing use here; therefore, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) and has no rights or legitimate interests in or to the disputed domain name.
Complainant alleges that Responded registered and uses the <houstonvaporbar.com> domain name for the purpose of disrupting Complainant’s business operations. Complainant argues that Respondent uses the resolving website to sell products that compete with those sold by Complainant. Complainant has provided documentation of Respondent’s use of the website in Exhibit E as well as of its own website in Exhibit C for comparison. Past panels have found registering a confusingly similar domain name to that of a competitor to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith in use and registration. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). The Panel finds that the Respondent’s use of the disputed domain name disrupts the Complainant’s business. As these assertions are not rebutted, the Panel finds that the Respondent registered and uses the <houstonvaporbar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <houstonvaporbar.com> domain name to confuse Internet users about the identity of Respondent. Complainant argues that Respondent knew of Complainant’s mark and registered the domain name in order to confuse Internet users about ownership of the resolving website in order to use Complainant’s good will to profit therefrom. Complainant has provided evidence of Respondent’s prior trademark application in Exhibit G, in which Respondent attempted to register the “THE VAPOR BAR, LLC” mark. Complainant urges that it informed Respondent of its own business operations. Complainant argues that Respondent, thereafter, used the <houstonvaporbar.com> domain name to sell products that compete with those of Complainant in a manner suggesting a connection between Complainant and the resolving website. Past panels have found such use to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that such behavior by Respondent here indicates that the Respondent registered and uses the <houstonvaporbar.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE VAPOR BAR mark. Complainant alleges that Respondent previously attempted to register the “THE VAPOR BAR, LLC” mark, as shown in Exhibit G, at which point Complainant alleges it contacted Respondent about its own business operations in conjunction with the THE VAPOR BAR mark. Complainant alleges that Respondent then ceased attempting to use the “THE VAPOR BAR, LLC” mark. Complainant argues that such behavior shows Respondent had actual knowledge of Complainant’s THE VAPOR BAR mark. Complainant also argues that Respondent’s use of the resolving website to compete with Complainant suggests an intentional attempt to capitalize on Complainant’s reputation, which would be impossible to do without actual knowledge of Complainant’s mark.
The Panel finds that Respondent had actual knowledge of Complainant’s rights in the THE VAPOR BAR mark at the time of registration. Therefore, the Panel finds that Respondent registered and used the <houstonvaporbar.com> domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <houstonvaporbar.com> domain name transferred from the Respondent to the Complainant.
__________________________________________________________________
Kenneth L. Port, Panelist
Dated: June 14, 2015
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