WIPO Domain Name Decision D2018-1305 for skyhighsmokeshop.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kasem Aoufe v. Asatur Shamamyan Case No. D2018-1305 1. The Parties
The Complainant is Kasem Aoufe of Tempe, Arizona, United States of America (“United States”), represented by Wright Law Group, PLLC, United States.
The Respondent is Asatur Shamamyan of North Hollywood, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2018. Subsequently on June 12, 2018, the Center transmitted, by email, to the Registrar a request for registrar verification in connection with the disputed domain name. Later on June 12, 2018, the Registrar transmitted, by email, its verification response to the Center confirming that the Respondent is listed as the registrant and providing the contact details. The Complaint, pursuant to a request from the Center dated June 19, 2018 to correct certain formal deficiencies in the Complaint, filed an amended Complaint on June 20, 2018. Hereinafter, all references to the Complaint will refer to the amended Complaint, unless the specific context necessitates otherwise.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, on June 20, 2018, the Center formally notified the Respondent of the Complaint and that the proceedings commenced that day. In accordance with the Rules, paragraph 5, the Center set the due date for Response to July 10, 2018. On July 10, 2018, the Respondent timely filed its Response with the Center.
The Center appointed Peter L. Michaelson as the sole panelist in this matter on July 27, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
As reflected in the registration record for the disputed domain name in the public WhoIs database (a copy of that record has been provided by the Registrar as part of its verification message to the Center), the disputed domain name was originally registered on July 3, 2009. Subsequently, during 2018, the Respondent apparently acquired it and became the registrant of the disputed domain name. The registration is set to expire on July 13, 2019. A. The Complainant’s SKY HIGH marks (collectively the “SKY HIGH Marks”)
As indicated in the Complaint, the Complainant owns two United States trademark registrations for the term “SKY HIGH”. The Complainant has provided, in Annex 3 to the Complaint, copies of the registration certificates for these registrations, the pertinent details of which are:
1. SKY HIGH (block letters)
United States Registration No. 4,751,784
Registered: June 9, 2015; Filed: October 18, 2014
This mark is registered for use in connection with: “Retail shops featuring smoking articles” in international class 35. This registration indicates that, in conjunction with these goods, first use of the mark and first use in commerce commenced on April 30, 2009.
2. SKY HIGH (block letters)
United States Registration No. 4,619,680
Registered: October 14, 2014; Filed: August 21, 2013
This mark is registered for use in connection with: “Vaporizing pens, namely, smokeless cigarette vaporizer pipe” in international class 34. This registration indicates that, in conjunction with these goods, first use of the mark and first use in commerce commenced on April 30, 2009. B. The Parties and their activities
Both parties operate what are commonly known as either a “head shop” or “smoke shop”. Each party, through its corresponding establishment, advertises and offers for sale, to its respective customers and potential customers, cannabis-related paraphernalia and services which are quite similar to and directly compete with those offered by the other party. The Complainant operates through an actual physical store located in Tempe, Arizona as well as via e-commerce conducted through its website; while the Respondent, based in the Los Angeles, California metropolitan area, offers its goods solely via e-commerce effected through its website at .
The Complainant contends, in paragraph 12(C) of the Complaint, that, for a long time, it was the prior registrant of the disputed domain name, but, through an inadvertent book-keeping error at its end, the registration lapsed. The Respondent then registered the name during 2018 and started using it later as the address of its website. The Complainant states that its counsel attempted to contact the Respondent to re-acquire the name but the Respondent failed to reply.
From August 1, 2017 through July 9, 2018 and as indicated in the Respondent’s profit and loss statement provided in Annex 3 to the Response, the Respondent incurred thousands of dollars in inventory, warehousing, and marketing expenses in conjunction with implementing its e-commerce business, including its website.
The Respondent filed a United States trademark application for the words “SKY HIGH SMOKE SHOP” on December 12, 2017 for use in conjunction with, in international class 34: “Retail store services featuring tobacco accessories, pipe accessories, torch lighters, vaporizers, vaporizer accessories, rolling papers, tobacco pipes, glass tobacco pipes, tobacco water pipes, room deodorizers, tobacco pipe cleaning accessories, rolling accessories, pipe storage bags and cases, and tobacco grinders; On-line retail store services featuring tobacco accessories, pipe accessories, torch lighters, vaporizers, vaporizer accessories, rolling papers, tobacco pipes, glass tobacco pipes, tobacco water pipes, room deodorizers, tobacco pipe cleaning accessories, rolling accessories, pipe storage bags and cases, and tobacco grinders”; and, in international class 35: “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, Internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels”. In the application, the Respondent claimed, in conjunction with all the services it enumerated across both classes, a date of first use and first use in commerce of September 7, 2017. This application is currently pending though registration has been refused through a non-final office action mailed June 19, 2018. Through that action, and based on evidence which the Examining Attorney discovered from the Respondent’s website, the Examiner refused registration of the mark on the basis that the Respondent does not and cannot have a bona fide intent to lawfully use the mark in commerce as the specific services listed by the Respondent in its application are related to drug paraphernalia which are illegal under the Federal Controlled Substances Act 21 U.S.C.§§ 801-971 (“Federal CSA”). As of August 2, 2018, the Respondent has not responded to the office action though it has until December 19, 2018 to timely do so.
The Respondent states that it purchased the disputed domain name from “GoDaddy Auctions”, a domain name auction service associated with the Registrar, to intentionally acquire an “aged domain name which did not contain any cannabis related terms” so to ensure approval with the Respondent’s merchant processor. Furthermore, the Respondent denies that it was ever contacted by the Complainant’s counsel. See, Response at Section III(C). 5. Parties’ Contentions A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to its mark SKY HIGH.
Specifically, the disputed domain name “incorporates the most relevant portions of Complainant’s registered trademarks and Respondent uses the websites associated with the disputed domain names to advertise competing and substantially identical goods and services to the same smoke shop customers and potential customers that are serviced by Complainant.”
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that, for either of two reasons, the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.
The Respondent is not commonly known by the domain name and has acquired no trademark or service mark rights in that domain name.
Further, the Respondent is not making any legitimate noncommercial or fair use of the name, without intent for commercial gain to misleadingly to divert consumers or to tarnish the Complainant’s mark.
(iii) Registered and Used in Bad Faith
The Complainant also contends that, for either of two reasons, the Responde