BBK Tobacco & Foods, LLP dba HBI International v. Asif Lakhani / Neocellular Parts
Claim Number: FA2210002016806
Complainant is BBK Tobacco & Foods, LLP dba HBI International (“Complainant”), represented by Cindy A. Villanueva of Dickinson Wright PLLC, Arizona. Respondent is Asif Lakhani / Neocellular Parts (“Respondent”), represented by Maryam Saad, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elementsdistro.com>, registered with GoDaddy.com, 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.
Adam Taylor as Panelist.
Complainant submitted a Complaint to Forum electronically on October 19, 2022; Forum received payment on October 19, 2022.
On October 20, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <elementsdistro.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 October 24, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2022, 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@elementsdistro.com. Also on October 24, 2022, 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.
A timely Response was received and determined to be complete on November 14, 2022.
On November 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Adam Taylor as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant
asserts rights in the ELEMENTS mark based upon registration of its mark with
the United States Patent and Trademark Office (“USPTO”) and through its
longstanding worldwide use and advertising of such mark, which has become
well-known. Respondent’s <elementsdistro.com> domain name is
confusingly similar to Complainant’s ELEMENTS trademark because it incorporates
the mark in its entirety and adds the descriptive word “distro”, short for
“distribution”, and the generic top-level domain name (“gTLD”) “.com”.
Respondent
does not have rights or legitimate interests in the <elementsdistro.com>
domain name. Respondent is not licensed or authorized to use Complainant’s
ELEMENTS mark and is not commonly known by the disputed domain name. Respondent
also does not use the disputed domain name for any bona fide offering of
goods or services or legitimate noncommercial or fair use. Rather, Respondent
is using the disputed domain name to divert Complainant’s potential customers
to Respondent’s website that sells Complainant’s goods as well as competing
goods, and there is no disclosure that the website is not affiliated with Complainant.
Respondent registered and uses the <elementsdistro.com> domain name in bad faith. Respondent registered and uses the disputed domain name to divert internet users for commercial gain. Respondent had constructive or actual knowledge of Complainant’s longstanding prior rights in the ELEMENTS mark on registration of the disputed domain name. It is unlikely that Respondent was unaware of Complainant’s mark, given the notoriety of the mark and the current use of the disputed domain name to sell Complainant’s products. Respondent’s use of the disputed domain name for a website offering similar distribution services as Complainant, as well as Respondent’s refusal to identify itself, constitute further evidence of bad faith. Respondent sets out to create a likelihood of confusion with Complainant’s mark. Respondent has engaged in opportunistic bad faith.
B. Respondent
Respondent asserts that it opened a retail store “Carbon Vape and Smoke Shop” in 2013 or 2017[i]. Respondent launched a website at the <elementsdistribution.us> domain name in 2018 to enable Respondent to offer its products at wholesale prices to other retailers who Respondent had met through operation of its store. Respondent was not then aware of the ELEMENTS brand. Constructive notice is insufficient to demonstrate bad faith.
Respondent has always been fascinated with chemistry, especially the elements. Such passion of Respondent was well known amongst Respondent’s customers. Respondent became known as “the Elements guy”. The store was named after carbon, an element, and it became known as “the Elements Store”. Respondent developed its own products, and sold third party products, that were “somehow science related”. See Resp. Annex 5. Respondent selected the generic term “elements” for its domain name because they embodied what Respondent, the store and its products were known by. Respondent thereby possessed a legitimate interest in the disputed domain name.
Respondent started attending trade shows in 2020 and decided to simplify its website name to the disputed domain name to make it easier to share with trade show attendees.
Respondent only became aware of the ELEMENTS mark in November 2020, and only started selling Complainant’s products on November 8, 2020, as shown by the product creation dates in Resp. Annex 2.
Complainant’s ELEMENTS mark is not as well-known as Complainant’s other brands. The main product, rolling paper, is no longer popular due to the decline in cigarettes. Nor is the brand even a popular choice amongst those who still use rolling paper products.
Respondent has never been confused with Complainant or its products.
Because Respondent’s industry is heavily regulated, Respondent does not advertise or use search engine optimization. Respondent’s website at the disputed domain name does not appear prominently in search results. Respondent acquires its customers through its acquaintanceship with local retailers and meetings with other retailers at trade shows or on Facebook groups.
The vast majority of Complainant’s customers are large distributors.
Respondent never intended to mislead or divert customers from Complainant. Otherwise, it would have chosen one of Complainant’s more popular brands.
Respondent’s website does not even feature any of Complainant’s products on its landing page.
It is virtually impossible for buyers to confuse Complainant with Respondent, because of the differences between the parties’ respective logos and websites, the sophistication of the clientele buying from each party, the fact that Complainant’s mark is relatively unknown and Complainant’s lack of exclusivity over the ELEMENTS brand.
Through trade shows, Respondent has learnt of at least four other parties in the industry who are using the same mark as Complainant. Complainant must have become aware of such parties at trade shows also. Respondent has personally introduced his business to Complainant representatives at trade shows as “Elements Distro” and they never voiced concern. When registering the disputed domain name, Respondent detrimentally relied on Complainant’s inaction towards others using the same mark. By failing to act against those other parties for a decade, Complainant has acquiesced in their use of the ELEMENTS mark and has waived any rights to request that the disputed domain name be transferred.
Respondent did not see a need for a disclaimer on Respondent’s website as none of the above parties have used one, but Respondent has nonetheless added a disclaimer after receiving the Complaint.
Using a privacy shield is not of itself indicative of bad faith.
The disputed domain name was not registered and is not being used in bad faith, for the reasons stated above.
Complainant owns various registered trademarks for the word ELEMENTS, including Reg. No. 3,471,137 for the mark ELEMENTS, registered with the USPTO on July 22, 2008. See Compl. Annex 6.
Complainant has sold products under the ELEMENTS mark via a website at the <hbiinternational.com> domain name since 2002, and at the <elementspapers.com> and <elementpapers.com> domain names since 2017.
Respondent is a wholesaler of smoking products.
Since 2018, Respondent has sold smoking products via a website at the <elementsdistribution.us> domain name (“the First Domain”).
Respondent registered the <elementsdistro.com> domain name on November 25, 2020.
As of September 20, 2022, the disputed domain name resolved to a website branded “ELEMENTS DISTRIBUTION” offering Complainant’s products for sale as well as those of third parties.
Following the filing of the Complaint, Respondent added the following disclaimer in the footer of the website: “All trademarks are properties of their respective holders. Elements Distribution does not own or make claim to those trademarks used on this website in which it is not the holder. Elements Distribution is not associated with HBI International, its affiliates and do[es] not claim to own its ELEMENTS brand trademark.”
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.
Complainant asserts rights in the ELEMENTS mark based upon registration with the USPTO (e.g., Reg. No. 3,471,137 registered July 22, 2008). See Compl. Annex 6. Registration of a mark with the USPTO is a valid showing of rights under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the ELEMENTS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <elementsdistro.com> domain name is confusingly similar to Complainant’s ELEMENTS trademark. Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum Jun. 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Here, the disputed domain name incorporates the mark in its entirety and adds the descriptive word “distro” and the gTLD “.com”. Therefore, the panel finds that the disputed domain name is confusingly similar to Complainant’s ELEMENTS mark under Policy ¶ 4(a)(i).
While Respondent contends that the <elementsdistro.com> domain name is comprised of a common and generic/descriptive term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii))
It is unnecessary for the Panel to consider this element in view of the Panel’s finding under the third element below.
Respondent asserts that it first adopted the term “elements” when it registered the First Domain for its wholesale business in 2018. Respondent has supplied no supporting evidence in connection with its registration and use of the First Domain, but the Panel sees no reason to doubt Respondent’s assertions in that respect. Respondent further claims that its subsequent registration of the <elementsdistro.com> domain name some two years later, on November 25, 2020, was a simplification/continuation of that use.
The Panel will first consider the likelihood that, contrary to its denial, Respondent was aware of Complainant’s mark when it registered the First Domain.
Complainant says that it is unlikely that Respondent was unaware of Complainant’s ELEMENTS mark, given its notoriety. Complainant invokes annual visitor statistics from 2019 to 2021 ranging between 40,000 and 45,000 in relation to the website at the <hbiinternational.com> domain name, which includes other of Complainant’s brands, as well as around 146,000 visitors to the websites at the <elementspapers.com> and <elementpapers.com> domain names from April 2019 to 2022. Complainant has approximately 100,000 Instagram followers. See Compl. Annexes 12, 14 and 16. Complainant provides no evidence of turnover or marketing spend relating to the ELEMENTS mark and no evidence of any nature relating to the period predating the First Domain.
Complainant also relies on Respondent’s “current” use of the disputed domain name to sell Complainant’s products as indicative of Respondent’s knowledge of Complainant’s ELEMENTS mark. Whereas Respondent has provided evidence that it only started selling Complainant’s products in November 2020, i.e., some two years after registering the First Domain. See further below.
For its part, Respondent denies knowledge of Complainant’s ELEMENTS mark in 2018, describing it as “relatively unknown” and produces evidence which appears to indicate that there had been a gradual decline in Internet searches for “elements rolling paper” since 2004. See Resp. Annex 3.
Respondent says it registered the First Domain with a view to expanding from its current retail store into the online wholesale supply of a range of smoking products.
Respondent ascribes its selection of “elements” in 2018 to the dictionary meaning of that term and to Respondent’s alleged passion for chemistry and the elements, but Respondent has produced no evidence supporting this assertion or its claim that Respondent and its store were respectively known as “the Elements guy” and “the Elements Store”. Respondent also invokes the use of “carbon” in the name of its pre-existing retail store “Carbon Vape and Smoke Shop”, but again without any supporting evidence.
Respondent has produced an undated list of products, some allegedly developed by Respondent itself, which were allegedly sold on Respondent’s website and which included the terms “Radium”, “Cobalt” and “Mercury” in their respective product names, to illustrate Respondent’s alleged interest in science.
Respondent also asserts that it had no motive to create a likelihood of confusion with Complainant, given that the First Domain was not registered to create a website targeting consumers via advertising and search engine optimization techniques but, rather, for the benefit of retailers who had a prior connection with Respondent and who are described by Respondent as “a sophisticated clientele”.
Respondent provides evidence of others in the industry using the word “Element” in their names. See Resp. Annex 4. These third parties include “Element”, a large Russian manufacturer of hookah and tobacco products, which started in 2015 and whose products are allegedly popular all over the world including in United States. There are also two retail “vape” stores in California (dating back to 2013/2017) and “Element Eliquid” (start date unknown).
The Panel finds the question of the likelihood of Respondent’s knowledge of Complainant’s ELEMENTS mark on registration of the First Domain to be evenly balanced. On the one hand, someone engaged in the same industry as Complainant might be expected to be aware of Complainant’s mark. On the other hand, Complainant has provided limited evidence as to the reputation of its mark in the United States in 2018 and, as mentioned above, the dictionary word “element” is used by others in the industry. Furthermore, even if it had been aware of Complainant’s mark, it is not clear what Respondent would have had to gain from registering a domain name implying that it was a distributor of Complainant’s products when it did not in fact resell Complainant’s products at that time and, in any case, Respondent was targeting retailers and not consumers.
As regards Respondent’s state of mind as at the date of registration of the disputed domain name on November 25, 2020, Respondent asserts that it registered the disputed domain name to simplify the First Domain so as to make it easier to share with trade show attendees, i.e., by shortening “distributor” to “distro”. That seems plausible to the Panel.
However, Respondent also says that it had become aware of Complainant’s ELEMENTS mark in November 2020, and had started selling Complainant’s products on November 8, 2020, i.e., shortly before registration of the disputed domain name. See Resp. Annex 2. In the Panel’s view this timing looks suspicious and raises a question over the legitimacy of Respondent’s motive in registering the disputed domain name, even if had legitimately registered the First Domain (as to which the Panel makes no finding).
Ultimately, however, in light of the relatively complex facts that have emerged including as regards Respondent’s prior use of a similar name some two years before it started reselling Complainant’s products, and the limitations on the evidence provided by both parties, and although it has some doubt about Respondent’s credibility, the Panel does not consider that it is in a position to find that Complainant has established on the balance of probabilities that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Of course, it remains open to Complainant to take this case to court for infringement of its intellectual property rights or otherwise, if it considers that it has grounds to do so. If it did so, a court would have the benefit of the tools of litigation such as discovery and examination of witnesses that are not available to the Panel in this limited proceeding.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <elementsdistro.com> domain name REMAIN WITH Respondent.
Adam Taylor, Panelist
Dated: December 2, 2022
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