Complainant is Warehouse Goods, Inc. of Boca Raton, Florida, United States of America ("US"), represented by Lewis & Lin, LLC, US.
Respondent is Domains By Proxy, LLC - DomainsByP of Scottsdale, Arizona, US / Anthony Barron of Pasadena, California, US. 2. The Domain Name and Registrar
The disputed domain name (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 April 30, 2014. On May 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 8, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 13, 2014.
The Center verified that the Complaint together with the amended Complaint] satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 5, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 12, 2014. 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
Complainant has the following registered trademarks (hereinafter referred to as the "VAPE WORLD Marks"):
VAPE WORLD, USPTO Registration Number 4438806, registered November 26, 2013
VAPE WORLD, USPTO Registration Number 3592011, registered March 17, 2009
VAPE WORLD, Community Trademark Registration Number 011456167, filed December 27, 2012, registered May 23, 2013.
Complainant also claims common law trademark rights in VAPE WORLD "acquired through continuous, exclusive, and extensive use of the domain name and the VAPE WORLD Trademarks for
nearly seven (7) years".
The disputed domain name was created on May 17, 2012. 5. Parties' Contentions A. Complainant
Complainant is an internationally marketed vaporizer company with products ranging from aromatherapy to e-cigarettes. Complainant owns more than thirty domain name registrations using the VAPE WORLD Marks and has spent millions of dollars advertising its products and services online. Complainant sells more than 1,000 different products with millions of units in annual sales. All of Complainant's advertising prominently displays the VAPE WORLD Marks. Complainant's brand has become well known and Complainant has built international goodwill using the VAPE WORLD Marks. Complainant's long standing and prominent usage confers common law interest in the VAPE WORLD Marks in addition to their formal registration. Complainant makes the allegations in paragraph 4(a) of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. Respondent has failed to appear with or without legal counsel. Respondent is in default and has been notified. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the VAPE WORLD Marks. The Disputed Domain Name uses Complainant's mark in its entirety and simply adds a hyphen between the two words. Complainant rightly notes that the use of a hyphen does nothing to distinguish the Disputed Domain Name from Complainant's VAPE WORLD Marks. Prada S.A. v. the peace company,WIPO Case No. D2006-1404. B. Rights or Legitimate Interests
Complainant alleges, and Respondent has not denied, that Respondent was not authorized by Complainant to use the VAPE WORLD Marks. Respondent is not commonly known by or associated with the Disputed Domain Name and has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, and has not made legitimate noncommercial or fair use of the Disputed Domain Name.
Complainant alleges, and Respondent has not denied, that Respondent has used the Disputed Domain Name to redirect users to a website selling products in direct competition with Complainant and thereby used the Disputed Domain Name purely for financial gain based on diversion of Internet users. Complainant rightly states that this does not constitute legitimate use. Citing, Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2004-1052 ("It is undisputed that Complainant and Respondent operate in the same field. Respondent's use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy").
Following Complainant's communication with Respondent regarding the use of the Disputed Domain Name, Respondent altered the website at the Disputed Domain Name to connect through third-party links, some of which are for sites by industry businesses in direct competition with Complainant.
The Panel finds that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. C. Registered and Used in Bad Faith
Considering the circumstances, Respondent cannot have been unaware of Complainant's VAPE WORLD Marks at the time of the registration of the Disputed Domain Name. Respondent has never been licensed or authorized to use the VAPE WORLD Marks and has not made legitimate or noncommercial fair use of the Disputed Domain Name. Respondent is a direct competitor of Complainant and used the Disputed Domain Name to redirect Internet users to websites providing services and products directly in competition with Complainant. Respondent has capitalized on Complainant's well-known VAPE WORLD Marks to take advantage of customer confusion and divert sales to Respondent's own financial benefit.
The Panel finds that Respondent's registration and use of the Disputed Domain Name is in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: June 24, 2014
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