Complainant is Starpixel Marketing LLC dba Vape Magazine of Saint Peters, Missouri, United States of America, represented by The Ingber Law Firm, United States of America.
Respondent is Geoffrey Stonham of Phoenix, Arizona, United States of America, represented by Lewis Roca Rothgerber Christie LLP, United States of America. 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 April 19, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on April 29, 2016. On May 17, 2016, Respondent requested an extension to file its Response. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to May 23, 2016. The Response was filed with the Center on May 21, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 6, 2016. 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 provides a publication about the electronic cigarette industry, and has been in operation since at least as early as 2013. Complainant owns the trademark application for the following mark (Serial No. 86/682,442) in Class 16 for “Magazines featuring stories, articles, photography and advertising in the field of the electronic cigarette industry trends, fashion, and culture”:
Complainant filed this application on July 2, 2015; in its original application, Complainant expressly disclaimed rights in the words “VAPE MAGAZINE” apart from the mark as shown. The application has since been amended to disclaim only the word “MAGAZINE”, and has been refused registration on the Principal Register based on the fact that the mark is merely descriptive. Complainant has amended its application to the Supplemental Register. Complainant began business as “Vape News Magazine” in the fall of 2012, and registered on December 12, 2012. On June 1, 2014, Complainant changed the name of its publication to “Vape Magazine.”
The disputed domain name was registered on December 10, 2011. In early 2014, Complainant contacted Respondent to inquire about purchasing the disputed domain name. Respondent stated that he was not interested in selling the disputed domain name, but offered his domain name rental services. Respondent uses the disputed domain name to lease third-level domains and to publish information about the electronic cigarette industry. 5. Parties’ Contentions A. Complainant
Complainant alleges that it has used the VAPE MAGAZINE mark continuously since at least as early as February 1, 2013, and that the disputed domain name is identical to its VAPE MAGAZINE mark. Complainant additionally states that Respondent began using the disputed domain name in conjunction with a competing electronic cigarette industry services magazine online on April 9, 2015, which has since caused consumer confusion with its VAPE MAGAZINE mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name was inactive for four years. Complainant states that Respondent published his first post on the website hosted by the disputed domain name on April 9, 2015, well after Complainant launched its Vape Magazine and after being contacted by Complainant about purchasing the disputed domain name. Complainant cites several examples of consumer confusion between Complainant’s magazine and the disputed domain name.
Complainant alleges that Respondent’s registration of the disputed domain name was in bad faith because it was commercial and he is a “professional domainer”. Complainant alleges that Respondent is using the disputed domain name in bad faith because he attempted to rent out the disputed domain name to Complainant, and he began using the disputed domain name intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. B. Respondent
Respondent alleges that Complainant does not have valid, enforceable rights in the VAPE MAGAZINE mark because (1) Complainant relies on a pending trademark application for its argument, and (2) the VAPE MAGAZINE mark is generic or at least descriptive, as evidenced by Complainant’s original disclaimer in its trademark application and the trademark examiner’s refusal, resulting in the amendment to the Supplemental Register.
Respondent further alleges that the disputed domain name is not confusingly similar to Complainant’s VAPE MAGAZINE mark because of the existence of numerous third party marks including the terms “vape” and “magazine”, which Respondent contends are more similar to Complainant’s mark than the disputed domain name is. Respondent also contends that the onus of any confusion is on Complainant, because it adopted the mark after already knowing of Respondent’s ownership of the disputed domain name.
Respondent contends that he has rights or legitimate interests in the disputed domain name because (1) he was the first to register the domain name, which consists of generic terms, and (2) he has been using it to offer third-level domain rentals since at least as early as June 26, 2013.
Respondent contends that he did not register the disputed domain name in bad faith because Complainant was not using the VAPE MAGAZINE mark when the disputed domain name was registered, and Complainant did not even form as an entity until 15 months after the disputed domain name was registered. Respondent contends that he is not using the disputed domain name in bad faith because (1) the commercial nature has no bearing on bad faith, and most “.com” domain names are used commercially; (2) he is not a professional domainer, and this has no bearing on bad faith regardless; and (3) Respondent’s correspondence with Complainant does not evidence bad faith. Rather, Respondent contends that he has stuck to his legitimate business model of leasing third-level domain names to others.
Finally, Respondent contends that the Panel should find Complainant liable for Reverse Domain Name Hijacking because Complainant knew it lacked enforceable trademark rights, knew Respondent had legitimate interests in the disputed domain name, and knew it could not show bad faith registration and use of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has not proved by a preponderance of the evidence that it has rights in the purported mark VAPE MAGAZINE. Complainant’s trademark application confers no rights prior to registration. Without a trademark registration on the Principal Register, Complainant does not receive the presumption that its mark is inherently distinctive and has acquired secondary meaning. Pet Warehouse v. P, Inc.,WIPO Case No. D2000-0105. Although common law rights may support a UDRP complaint, when a mark is highly descriptive, Complainant has the burden of proving that it has acquired secondary meaning in its mark. Id. The Panel finds that Complainant has failed to do so. Complainant’s allegations and evidence are insufficient to prove that its highly descriptive mark1 has acquired distinctiveness. Even though Complainant submitted more evidence of secondary meaning to the USPTO than it has submitted here, the USPTO examiner rejected the evidence as insufficient, whereupon Complainant amended its application to the Supplemental Register, which does not confer proprietary rights. 15 U.S.C. § 1094. See The Generations Network, Inc. v. 6684874 Canada Inc.,WIPO Case No. D2008-0606, citing Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968). The Panel finds that Complainant has failed to carry its burden to prove that it has the requisite rights to satisfy paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel need not address whether Complainant has satisfied paragraph 4(a)(ii) of the Policy due to its findings herein regarding paragraphs 4(a)(i) and (iii) of the Policy. C. Registered and Used in Bad Faith
Given that Complainant has failed to prove the requirements under paragraph 4(a)(i), a finding of bad faith is not necessary. The Panel emphasizes, however, that the disputed domain name was registered nearly a year before Complainant began doing business as Vape News Magazine, and approximately two and a half years before Complainant began using VAPE MAGAZINE in commerce. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1 (consensus view regarding registration of a domain name before a complainant acquires trademark rights). Accordingly, the Panel finds that Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. 7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules states, in relevant part:
“If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
“A finding of Reverse Domain Name Hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.” C Ltd. v. Alton L. Flanders,WIPO Case No. D2004-0047. Complainant knew that Respondent registered the disputed domain name well before Complainant began its business, and nearly two and a half years before it began using VAPE MAGAZINE in commerce. The Panel finds that it was bad faith Reverse Domain Name Hijacking to allege bad faith registration under these circumstances, especially given Complainant’s tenuous claim of rights under paragraph 4(a)(i) of the Policy. 8. Decision
For the foregoing reasons, the Complaint is denied, and the Panel finds Reverse Domain Name Hijacking in this case.
Lawrence K. Nodine
Sole Panelist
Date: June 23, 2016
1 The Panel makes no finding about whether Complainant’s mark is generic.
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