NJOY, Inc. v. Brandon Heavin
Claim Number: FA1308001517017
Complainant is NJOY, Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis and Roca LLP, Arizona, USA. Respondent is Brandon Heavin (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njoyvapor.com>, registered with Register.com.
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2013; the National Arbitration Forum received payment on August 28, 2013.
On August 29, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <njoyvapor.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 August 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2013 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@njoyvapor.com. Also on August 30, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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’s Contentions
Policy ¶ 4(a)(i)
· Complainant uses the NJOY mark in connection with the sale of electronic cigarette devices. Complainant registered the NJOY mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,427,769 registered May 13, 2008).
· Respondent registered the <njoyvapor.com> domain name, which adds the descriptive term “vapor”, a term often used to describe the process by which electronic cigarettes deliver nicotine through the vaporizing of liquid.
Policy ¶ 4(a)(ii)
· Respondent is not known as “NJOY” or any derivative thereof. Complainant has not licensed or authorized Respondent to make use of the NJOY mark in any way.
· Respondent is using the <njoyvapor.com> domain name to trade off of the NJOY mark for Respondent’s own gain. Respondent sells electronic cigarette products.
Policy ¶ 4(a)(iii)
· Respondent creates a likelihood of confusion that Internet users will associate the competing products sold through the <njoyvapor.com> domain name’s website with Complainant and the NJOY mark.
· Respondent knew or should have known of Complainant’s rights in the NJOY mark when registering the domain name.
Respondent registered the <njoyvapor.com> domain name on January 22, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 uses the NJOY mark in connection with the sale of electronic cigarette devices. Complainant has registered the NJOY mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,427,769 registered May 13, 2008). Complainant has therefore sufficiently illustrated that it has Policy ¶ 4(a)(i) rights in the NJOY mark for purposes of this proceeding. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends that Respondent registered the <njoyvapor.com> domain name, which adds the descriptive term “vapor”, a term often used to describe the process by which electronic cigarettes deliver nicotine through the vaporizing of liquid. The Panel finds that the addition of the term “vapor”, not only does not distinguish Respondent’s domain name, but enhances the confusing similarity of the domain name as this term describes the functionality of the goods sold under the NJOY mark. The Panel thus concludes that the <njoyvapor.com> domain name is confusingly similar to the NJOY mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent is not known as “NJOY” or any derivative thereof and that it has not licensed or authorized Respondent to make use of the NJOY mark in any way. The Panel notes that the WHOIS information lists “Brandon Heavin” as the registrant of the <njoyvapor.com> domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel found that in the absence of any other evidence, the information in the WHOIS record is the most useful method of determining whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). The Panel therefore concludes that Respondent is not commonly known by the <njoyvapor.com> domain name under Policy ¶ 4(c)(ii).
Complainant
states that Respondent is using the <njoyvapor.com> domain name to trade off of the NJOY mark for
Respondent’s own commercial gain. Complainant shows that Respondent sells
electronic cigarette products through the domain name’s website. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel refused to find a bona fide
offering in a respondent’s use of a domain name to sell products that competed
with the complainant’s business. Likewise, this Panel agrees that Respondent
has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or
services, or a Policy
¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
As the Panel has previously noted, the <njoyvapor.com> domain name resolves to a website that features the phrase “nJOYVapor” along with the offering of various electronic cigarette products. In Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), the panel found Policy ¶ 4(b)(iv) bad faith when the respondent used a confusingly similar domain name to promote goods that competed directly with the goods sold by the complainant under its mark. Similarly, this Panel finds the competitive offerings promoted through the <njoyvapor.com> domain name to be evidence of Policy ¶ 4(b)(iv) bad faith.
The Panel finds that Respondent’s incorporation of Complainant’s entire well-known mark to sell directly competing products clearly shows that Respondent knew of Complainant’s rights to the mark at the time Respondent registered its domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Thus, the Panel finds that Respondent registered and used the domain name 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 <njoyvapor.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 8, 2013
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