Nu Mark LLC v. LSSKOREA
Claim Number: FA1606001678479
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is LSSKOREA (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greensmokeasia.com>, registered with Gabia, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 9, 2016, Gabia, Inc. confirmed by e-mail to the Forum that the <greensmokeasia.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 June 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2016 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@greensmokeasia.com. Also on June 15, 2016, 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 July 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 as follows:
Complainant has rights in the GREEN SMOKE trademark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,860,744, registered Oct. 12, 2010). Complainant uses the mark in connection with the sale of electronic cigarettes.
Respondent’s <greensmokeasia.com> domain name is confusingly similar to the GREEN SMOKE mark. The domain name contains Complainant’s entire mark and differs only by the removal of spacing between the words, addition of the geographic term “asia” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage that offers products that compete with Complainant and/or are counterfeit while prominently displaying the GREEN SMOKE mark and copyrighted material. On the website Respondent falsely claims it is Complainant’s “Exclusive Distributor in Asia” when it is not.
Respondent has engaged in bad faith registration and use. Respondent has created a likelihood of confusion for commercial profit, which disrupts its business. Furthermore, Respondent had actual knowledge of Complainant’s trademark rights at the time the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GREEN SMOKE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent currently uses the at-issue domain name to address a webpage that offers products that compete with Complainant while prominently displaying the GREEN SMOKE mark, copyrighted material, as well as misstatements about the relationship between Respondent and Complainant.
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 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 (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.”).
Further, Pursuant to UDRP Rule 11(a), the Panel finds evidence suggesting that Respondent is conversant in the English language. For instance, Respondent’s <greensmokeasia.com> website is predominantly in English, the domain name is in English and so is the domain name’s WHOIS record. Therefore, the instant proceeding may held in English. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the GREEN SMOKE mark with the USPTO is sufficient to establish its rights in a mark under Policy ¶ 4(a)(i) even though the Respondent may reside outside the jurisdiction of the trademark registry. See Viber Media S.ŕ r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”).
Respondent’s domain name contains Complainant’s entire GREEN SMOKE trademark less its space, followed by the geographic identifier “asia” and the top level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <greensmokeasia.com> domain name is confusingly similar to Complainant’s GREEN SMOKE trademark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also, Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Where there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might conclude that Respondent has rights or interests in respect of the <greensmokeasia.com> domain name.
WHOIS information for the <greensmokeasia.com> domain name lists “LSSKOREA” as the domain name’s registrant and there is nothing in the record that suggests the Respondent is otherwise commonly known by the <greensmokeasia.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Further, Respondent’s confusingly similar <greensmokeasia.com> domain name addresses a website that contains hyperlinks that link to competitors of Complainant. Presumably, Respondent collects click-through fees from such links. Respondent’s use of the domain name suggests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Moreover, Respondent failed to respond to the Complaint. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, multiple bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
As mentioned above concerning Policy ¶ 4(a)(ii), Respondent’s <greensmokeasia.com> domain name is used to address a website that displays hyperlinks relating to Complainant’s competitors. This impedes Complainant’s customers from reaching Complainant’s products and thereby disrupts Complainant’s business. Using the domain name to divert internet users to Complainant’s competitors demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, the use of the confusingly similar domain name to lull internet users into believing the domain name is affiliated with or sponsored by Complainant when it is not shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also, Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Finally, the <greensmokeasia.com> domain name was registered knowing that Complainant has trademark rights in GREEN SMOKE. Respondent’s prior knowledge is evident from Respondent’s offer of coupons for Complainant’s products and its display of Complainant’s products and trademark, on the <greensmokeasia.com> website. Therefore, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greensmokeasia.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 13, 2016
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