R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc. v. John Diegel / wildtech
Claim Number: FA2302002032849
Complainant is R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is John Diegel / wildtech (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vusevapeofficial.co>, registered with NameCheap, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 21, 2023; Forum received payment on February 21, 2023.
On February 22, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <vusevapeofficial.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2023 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@vusevapeofficial.co. Also on February 24, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 made the following contentions.
Complainant, R.J. Reynolds Vapor Company and RAI Strategic Holdings, Inc., is engaged in the manufacture, distribution, and sale of tobacco and nicotine products, including electronic cigarettes, pods, and cartridges filled with e-liquid, and accessories and related products. Complainant asserts rights to the VUSE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,230,347, registered on October 23, 2012). See Compl. Ex. K. Respondent’s <vusevapeofficial.co> domain name is confusingly similar to Complainant’s VUSE mark as it contains Complainant’s mark in its entirety, merely adding the descriptive terms “vape” and “official” and the country code top-level domain (“ccTLD”) “.co” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <vusevapeofficial.co> domain name. Respondent is not licensed or authorized to use Complainant’s VUSE mark and is not commonly known by the disputed domain name. Furthermore, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant. Additionally, Respondent uses the disputed domain name to sell Complainant’s goods.
Respondent registered and uses the <vusevapeofficial.co> domain name in bad faith. Respondent registered and uses the disputed domain name to pass off as Complainant for commercial gain. Respondent registered and uses the disputed domain name to create initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture, distribution, and sale of tobacco and nicotine products, including electronic cigarettes, pods, and cartridges filled with e-liquid, and accessories and related products.
2. Complainant has established its rights to the VUSE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,230,347, registered on October 23, 2012).
3. Respondent registered the <vusevapeofficial.co> domain name on July 17, 2022.
4. Respondent uses the disputed domain name to pass itself off as Complainant. and to purport to sell Complainant’s goods.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: R.J. Reynolds Vapor Company and RAI Strategic Holdings, INC.. Complainants assert that they are affiliated companies with the same corporate group. See Compl. Ex. D.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. Accordingly, throughout this decision, the Complainants will be collectively referred to as “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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the VUSE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,230,347, registered on October 23, 2012). See Compl. Ex. K. Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant has provided evidence of registration of the VUSE mark with the USPTO. Therefore, as the Panel agrees, it finds Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VUSE mark. Complainant contends that Respondent’s <vusevapeofficial.co> domain name is confusingly similar to Complainant’s VUSE mark as it contains Complainant’s mark in its entirety, merely adding the descriptive words “vape” and “official” and the country code top-level domain (“ccTLD”) “.co” to form the disputed domain name. The addition of words that describe the goods or services in connection with a mark and a ccTLD does not sufficiently distinguish a disputed domain name from a mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light 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 also EThomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the VUSE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VUSE mark and to use it in its domain name, adding the descriptive words “vape” and “official” which do not negate the Confusing similarity between the domain name and the trademark;
(b) Respondent registered the <vusevapeofficial.co> domain name on July 17, 2022;
(c) Respondent uses the disputed domain name to pass itself off as Complainant, and to purport to sell Complainant’s goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <vusevapeofficial.co> domain name as Respondent is not licensed or authorized to use Complainant’s VUSE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “John Diegel/wildtech”. See Registrar Verification Email; Compl. Ex. P. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <vusevapeofficial.co> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to pass itself off as Complainant. The use of a disputed domain name to resolve to a website that replicates a complainant’s website and displays a complainant’s products is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant points to the notoriety of its mark and the use of the disputed domain name to appear to be an official website of or for Complainant through the repeated and prominent use of Complainant’s VUSE logos. See Compl. Ex. L; Compl. Ex. M; Compl. Ex. N; Compl. Ex. O. Thus, as the Panel agrees, it finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant submits that Respondent uses the <vusevapeofficial.co> domain name to sell Complainant’s goods. The use of a disputed domain name to offer to sell a complainant’s products without a license or authorization does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Here, Complainant points to Respondent’s lack of licensure or authorization, the attempt to pass itself off as an “official” website of Complainant, the listing of Complainant’s products on the disputed domain name’s resolving website, and the requirement of a purchase of over $200 USD as relevant criteria and the Panel agrees. See Compl. Ex. N; Compl. Ex. O. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <vusevapeofficial.co> domain name in bad faith as Respondent registered and uses the disputed domain name to pass itself off as Complainant for commercial gain. An attempt by a respondent to attract internet users for commercial gain by registering and using a disputed domain name to pass itself off as a complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant points to the notoriety of its VUSE mark, the use of Complaint’s mark and copies of pictures of Complainant’s VUSE products, and the inclusion of a header tab that states “Vuse Official Online Shop”. See Compl. Ex. L; Compl. Ex. M; Compl. Ex. N; Compl. Ex. O. As such, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered and uses the <vusevapeofficial.co> domain name in bad faith as this creates initial interest confusion. Evidence of bad faith registration and use under Policy ¶ 4(a)(iii) is present where a mark used in a disputed domain name is so obviously connected with a complainant and its products that it would lead people to believe that the domain name is connected with the complainant. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name). Here, Complainant points to the full inclusion of its VUSE mark in the disputed domain name, and the inclusion of the word “vape” which relates directly to Complainant’s VUSE products, and the word “official” suggesting that the disputed domain name is likely related to Complainant. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vusevapeofficial.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 24, 2023
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