The Complainant is Breazy Inc., United States of America (“United States” or “U.S.”), represented by Lando & Anastasi, LLP Lawfirm, United States.
The Respondent is Domains by Proxy, LLC, DomainsByProxy.com, United States / VR PRODUCTS I LLC, United States, represented by Epstein Drangel Bazerman & James, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 20, 2021. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Response was filed with the Center on June 14, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on June 22, 2021. 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 The Complainant is Breazy, Inc., an electronic cigarette product provider who acquired ownership of the website “www.juicedb.com” in 2019. That website is an electronic cigarette product review site with links to third-party sites through which users can purchase electronic cigarette products. The Complainant is the owner of a United States trademark registration for JUICEDB, U.S. Reg. No. 5,750,643, filed September 24, 2018, and registered in the United States Patent and Trademark Office (“USPTO”) on May 14, 2019. The Complainant claims substantially continuous use of the JUICEDB mark since 2013. The Respondent is VR PRODUCTS I LLC, a company that operates several online retail and wholesale businesses in the electronic cigarette industry, including Vape Ranger, eJuiceDB, and Hemmfy. The Respondent registered the disputed domain name, The Complainant contends that the disputed domain name incorporates the Complainant’s JUICEDB trademark in its entirety, and that the addition of the letter “e” as a prefix does not negate, and in fact creates, a confusing similarity between the Complainant’s mark and disputed domain name. The Complainant asserts that its mark has featured prominently on a popular website since 2013 and it had already achieved significant attention when the Respondent registered the disputed domain name in 2016. As a result, the Complainant contends, it had acquired common law trademark rights as of the time the disputed domain name was registered; in addition, the Complainant owns a U.S. federal trademark registration for JUICEDB. The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name because the Respondent is neither affiliated with the Complainant nor permitted to use the Complainant’s trademark. The Complainant alleges that the Respondent is not commonly known by the disputed domain name. Instead, according to the Complainant, the JUICEDB mark is associated exclusively with the Complainant, and, because the use of a well-known trademark to attract Internet users can never be the basis of a bona fide offering of goods or services, the Respondent cannot rebut the prima facie case that the Respondent lacks legitimate interests in the disputed domain name. Further, the Complainant argues that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark rights. The Complainant supports this contention by pointing out that the Respondent operated the The Complainant also maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark creates a presumption of bad faith and that the Respondent did not register such a domain name by accident. According to the Complainant, because its predecessor was operating the The Respondent contends that the Complainant is not entitled to trademark protection for the JUICEDB mark. The Respondent argues that the Complainant’s domain name is composed of two merely descriptive terms, “juice” and “db” (which stands for “database”), and, because the domain name is used for a database of reviews about vape juices, the domain name is merely descriptive and should not entitle the Complainant to trademark protection. Additionally, the Respondent claims that, because the Complainant allegedly misrepresented the nature of its website to the Panel, the Complainant should not be able to claim trademark protection for the JUICEDB mark. The Respondent contends that it has rights and legitimate interests in the disputed domain name because it had no knowledge of the Complainant’s predecessor’s The Respondent also contends that the Complainant has failed to demonstrate that the disputed domain name has been registered and used in bad faith. In seeking to rebut the Complainant’s bad faith contentions, the Respondent reasserts that it is operating a legitimate business at the website to which the disputed domain name resolves. Further, it contends that the descriptive nature of the JUICEDB mark precludes the Panel from finding that the Complainant’s mark is distinctive, which in turn prevents the Panel from finding that the disputed domain name was registered in bad faith. The Respondent also responds to the Complainant’s privacy proxy allegation by pointing out that there are recognized legitimate uses of privacy and proxy registration services and that previous UDRP panels have found bad faith only when the parties used these services to conceal their identities to prevent UDRP complaint service, which the Respondent claims it did not do here. The Respondent further urges the Panel to find that the Complainant engaged in Reverse Domain Name Hijacking by filing its Complaint in bad faith, with knowledge that it could not win, in an effort to harass the Respondent and deprive it of its domain name. According to the Respondent, the Complainant should have known that it could not succeed in this proceeding and that the Complainant misrepresented its business in an attempt to mislead the Panel. Further, because the Complainant is represented by counsel, the Respondent alleges that the Complainant must be held to a higher standard and an unsuccessful Complaint, filed in bad faith, fails that higher standard. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Although the Complainant owns a U.S. federal registration for the JUICEDB trademark, and although the disputed domain name is nearly identical to that trademark in that it simply adds one letter to the mark (the letter “e”) plus the generic Top-Level Domain (“gTLD”) “.com,” the Respondent argues that the Complainant has not established the first factor both because the Complainant has failed to establish trademark rights and because the disputed domain name is not confusingly similar to the Complainant’s trademark. Those arguments are utterly without merit. The Complainant has submitted evidence that it owns a federal registration for the mark JUICEDB, a fact that the Respondent does not refute. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes in section 1.2, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” That is true regardless of whether the trademark was registered before or after the registration of the domain name. See id. section 1.1.3. This prima facie showing is not by itself conclusive, but it is strong evidence of the validity of the Complainant’s trademark. To overcome that evidence, the Respondent would have had to come forward with compelling evidence that the registration was improperly granted or is likely to be cancelled. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“Given the limited evidentiary record available to the Panel, the absence of any discovery, the inability of the Panel to take testimony and make credibility determinations, and the short time period available to the Panel for decision, a Panel should disregard a United States trademark registration only if Respondent presents ‘compelling evidence’ that the registration was improperly granted or is likely to be cancelled.”) (quoting mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141). The Respondent has not done so, and the Panel also notes that, in general, doing so is extremely rare. In its effort to show that the Complainant’s trademark registration should not be recognized as “a trademark in which the Complainant has rights” for purposes of paragraph 4(a)(i) the Policy, the Respondent argues that the mark “is nothing more than a combination of common terms that merely describe the activities conducted at the domain.” Whether a party has trademark rights is an issue of national law; in this case, the parties are both from the United States and therefore the relevant law to consider in assessing the Respondent’s argument is U.S. law. See WIPO Overview 3.0, section 4.15. Under U.S. law, the use of common or dictionary terms within a trademark does not necessarily establish that such a trademark is unprotectible or that a registration for such a trademark was improperly granted or should be cancelled. Rather, as the United States Supreme Court made clear just last year, a mark comprised of common, descriptive terms may be registered as a trademark in the United States if the mark as a whole is perceived by consumers as indicating source. United States Patent and Trademark Office v. Booking.com B.V., 140 S. Ct. 2298 (2020). Similarly without merit are the Respondent’s arguments that, because the terms “juice” and “DB” (standing for database) are descriptive terms, because the USPTO frequently requires a disclaimer of “juice,” and because there are many domain names that include the term “db,” the combination of these terms is inherently merely descriptive under U.S. law. This argument ignores that the USPTO did not require any disclaimer when it registered the Complainant’s JUICEDB mark; it also does nothing to establish that consumer perception of the term JUICEDB is that the term is merely descriptive of any database of vape juice and therefore lacks distinctiveness. The Panel also rejects the Respondent’s argument that, because the Complainant allegedly misrepresented the nature of its website, the Complainant should not be able to claim trademark rights in the JUICEDB mark. First, the Panel does not believe that the Complainant misrepresented anything about its website; although the website is comprised of reviews of vape juice, the website also includes numerous advertisements for electronic cigarette produces and vape juices and links through which visitors can purchase vape juice. As such, the website appears to be a marketplace. In any event, the Complainant included screen shots of its website in its submission and the website is publicly available for the Panel to visit, so the Complainant’s description of its website did not mislead the Panel in any way. Finally, if the Complainant had engaged in any deceptive description, that might have impacted its credibility with the Panel and the Panel’s assessment of whether the Complaint constituted reverse domain name hijacking, but that would not be relevant to the factual assessment of whether the Complainant has trademark rights. The Respondent’s argument that the Complainant’s alleged misrepresentation to the Panel means that the Complainant lacks trademark rights is a non sequitur. Also frivolous is the Respondent’s argument that the disputed domain name is not confusingly similar to the JUICEDB trademark because, even though they differ by one letter, “that letter makes all the difference.” Specifically, the Respondent argues: “In other words, the terms 'juice' and 'ejuice', while differing by only one letter, may have completely different meanings, and create completely different commercial impressions. A consumer searching the term 'juice' and a consumer searching the term 'ejuice' will likely be looking for two very different products. Accordingly, the term ejuice is distinguishable from the term juice, and Respondent’s domain name is not confusingly similar to Complainant’s cited mark.” That argument is inconsistent with two decades of decisions under the Policy. As the WIPO Overview 3.0 explains in section 1.7: “It is well accepted that the first element [of the Policy] functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. . . . “[I]n cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” In light of these long-accepted principles, and, indeed, common sense, the fact that the disputed domain name incorporates in its entirety the Complainant’s trademark is enough to compel a finding that the disputed domain name is confusingly similar to the Complainant’s trademark for purposes of the first factor of the Policy. That is true even if other letters, like “e”, are added to the trademark to form the disputed domain name because “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8. The Panel moreover notes that, when it comes to assessing the risk of confusion under the second and third Policy elements, the addition of an element such as “e” (or, e.g., “online”) to a trademark may confuse Internet users into believing that the domain name comes from or is related to the trademark owner, such as by being its online presence. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark under the first element of the Policy. B. Rights or Legitimate Interests Once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The respondent may establish such rights or legitimate interests by demonstrating any of the following: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent argues that it has rights and legitimate interests in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy because, before any notice of the dispute, the Respondent had been using the disputed domain name in connection with a bona fide offering of goods. The Respondent also claims that, pursuant to paragraph 4(c)(ii) of the Policy, it is known by the name eJuiceDB, because it has operated a website at which vaping products are offered for sale since 2017. The Complainant argues that the Respondent’s use over the last four years of the disputed domain name for its competing website cannot be deemed bona fide because the disputed domain name infringes the Complainant’s trademark rights. If the Respondent adopted the disputed domain name with knowledge of the Complainant’s website and trademark rights, the Panel would agree that such conduct could undermine any claim of a bona fide use, since an infringing use cannot be bona fide. Sai Machine Tools Pvt. Ltd. v. Mr. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd,WIPO Case No. D2018-2560 (finding offering of goods to be infringing rather than bona fide because “bona fide use is predicated on honest adoption of the name” and Respondent failed to show such honest adoption); and Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., Forum Claim Number: FA0303000149188 (where respondent adopted domain name with actual knowledge of complainant’s trademark and used the domain name in a way likely to cause confusion, the offering of services under such a mark is infringing, not bona fide). For purposes of the Policy though, if the Respondent adopted the name without knowledge of the Complainant’s trademark, the use of a potentially infringing name that was innocently adopted would not constitute the type of abusive registration or cybersquatting that the Policy was designed to address. In that circumstance, although the Complainant might have a claim against the Respondent for trademark infringement, such a claim would raise issues that are beyond the scope of the Policy. Ferox Capital Management Limited v. Ferox Advisors Limited,WIPO Case No. D2013-1926; Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, Forum Claim Number: FA2004001892080; and Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures, Forum Claim Number: FA2012001925050. The critical question, then, is whether the Respondent knew of the Complainant and its trademark rights, and whether it selected the disputed domain name in order to take advantage of the goodwill in the Complainant’s trademark and/or to confuse or divert the Complainant’s customers. On the limited record before the Panel, the Panel finds that the Complainant has not proven that the Respondent acted in that way. Rather, the Panel finds credible the Respondent’s assertion that it selected the disputed domain name for its claimed descriptive meaning. In assessing the credibility of the Respondent’s assertion that it adopted the disputed domain name for this reason, and not to take advantage of any goodwill that the Complainant had in its mark, the Panel notes that the evidence available to the Panel establishes that “ejuice” is a term of art in the electronic cigarette industry (referring to the liquid used in vaping). Indeed, the Complainant’s own website has references to such products as “ejuice” (for example, Paper Street eJuice, Island Paradise eJuice, and White Rabbit eJuice). The evidence submitted by the Respondent also establishes that “DB” is a common abbreviation for “database” used in various domain names. Moreover, before the Complainant filed the Complaint, the phrase “e-liquid ‘database’” appeared on the Respondent’s website, which offers some, albeit limited, support to its argument that it chose the disputed domain name to describe its business as a database of e-liquids, also known as ejuices. Further, although the Complainant asserts that the Respondent must have been aware of the Complainant’s predecessor (which operated the In sum, although the Complainant may have had its suspicions about the Respondent’s claims as to bona fide use given the highly similar domain name that was used for a highly similar business, the Respondent has come forward with evidence sufficient to support its assertion that it registered the disputed domain name for a claimed descriptive meaning, without knowledge of the Complainant’s domain name or trademark rights, for the purposes of making a bona fide offering of vaping products. Accordingly, the Complainant has failed to prove by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. For the reasons articulated above, the Panel finds that the Respondent did not register the disputed domain name in bad faith as far as the Policy is concerned; rather, the Panel finds credible the assertion that the Respondent registered the disputed domain name because it believed the name to be an available, descriptive domain name for its website. As such, the Complainant has failed to establish that the Respondent registered the disputed domain name in 2016 for the purposes of selling the disputed domain name to the Complainant’s predecessor-in-interest, in order to prevent the Complainant’s predecessor-in-interest from reflecting its mark in a corresponding domain name, to disrupt the Complainant’s predecessor-in-interest’s business, or to cause a likelihood of confusion at that time with the Complainant’s predecessor-in-interest. Because the Panel finds that the Respondent did not register the disputed domain name in bad faith, it need not address whether the Respondent has used the disputed domain name in bad faith. The Complainant forcefully asserts that the Respondent has done so because the disputed domain name infringes its trademark rights, but as noted above, that question is one for the courts, not this Panel. PDFFiller, Inc. v. Chris Truxaw, d/b/a Red Software,WIPO Case No. D2015-2200; Ferox Capital Management Limited v. Ferox Advisors Limited,WIPO Case No. D2013-1926; Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, supra; and Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures, supra.. The Complainant’s final argument in support of a finding of bad faith registration and use rests on the fact that the Respondent registered the disputed domain name behind a privacy shield. In the circumstances of this case, the use of a privacy shield does not support a finding of bad faith r. A privacy shield or proxy service may be evidence of bad faith if it is used, e.g., to hide a registrant’s identity, frustrate the ability of a complainant to contact a registrant, to shield facts related to the date that a registrant acquired the domain name at issue, or to undermine a complainant’s ability to assess whether a registrant has engaged in a pattern of cybersquatting. See generally WIPO Overview 3.0, section 3.6. The Complainant has not shown that the Respondent here used a privacy shield for any obviously nefarious purposes. To the contrary, the Respondent’s website identified exactly who the Respondent was, including listing its name, address, and phone number. In sum, the Panel finds that the Complainant has not established, by a preponderance of the evidence, that the Respondent registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking Paragraph 15(e) of the Policy provides that, 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 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. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16. To establish Reverse Domain Name Hijacking, there must be evidence of knowledge on the part of the complainant of the respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge. Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224. The Respondent urges the Panel to find that the Complainant engaged in Reverse Domain Name Hijacking because the Complaint was allegedly brought in bad faith and the Complainant misrepresented its business to the Panel. The Panel is not persuaded that the circumstances of this case justify a finding of Reverse Domain Name Hijacking. The Complainant has a federal registration for the JUICEDB mark, which is closely reproduced in the disputed domain name. There is no question that the disputed domain name is confusingly similar for purposes of the Policy and that the Respondent was operating a very similar website in the exact same industry. The Complainant also has made arguments that the Respondent’s use of the disputed domain name constitutes trademark infringement (an issue, as noted above, that is beyond the scope of this proceeding), which arguments are not facially frivolous. Although the Panel has found that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name or that the Respondent registered and used the disputed domain name in bad faith, the Complainant’s case was most assuredly not so weak as to render the filing of the Complaint an act of bad faith. Moreover, a request for a finding of Reverse Domain Name Hijacking is an equitable remedy, and equitable relief should only be available to a party who comes before a panel with clean hands. Given the Respondent’s frivolous arguments with respect to the Complainant’s trademark rights and with respect to the confusing similarity of the disputed domain name and the Complainant’s federally registered trademark, the Panel would not in any event consider it appropriate to enter a finding of Reverse Domain Name Hijacking in favor of the Respondent. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; and Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. The Panel therefore concludes that the Complainant has not engaged in Reverse Domain Name Hijacking. 7. Decision For the foregoing reasons, the Complaint is denied. David H. Bernstein
Sole Panelist
Date: July 6, 2021
Full & Egal Universal Law Academy