Complainant is Samuel Kim, United States of America (“United States” or “U.S.”), represented by Johnson & Pham, LLP, United States.
Respondent is PrivacyGuaridan.org, United States / Jake Mill, Host Guru, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2021, 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 September 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 8, 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 Respondent of the Complaint, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on October 5, 2021.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 12, 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 BackgroundComplainant states, and provides evidence to support, that it is the owner of U.S. Reg. No. 4417441 for the mark BIG CHIEF (registered October 15, 2013) for use in connection with “Cigarettes; Filter-tipped cigarettes; Filtered cigars and cigarettes; Flavored tobacco; Hand-rolling tobacco; Pipe tobacco; Roll your own tobacco; Rolling tobacco; Smoking tobacco; Tobacco; Tobacco, cigars and cigarettes”.
Complainant further states, and the Panel has confirmed by reviewing records on the website of the U.S. Patent and Trademark Office1 , that Complainant is the owner of two pending trademark applications:
- U.S. App. No. 88672812 for the mark BIG CHIEF EXTRACTS (filed October 29, 2019) for use in connection with “Electronic cigarette liquid (e-liquid) comprised of essential oils”, “Plant extracts for pharmaceutical purposes”, and “Ashtrays for smokers; Cigarette rolling papers; Boxes for electronic cigarettes and electronic cigarette accessories; Cigarette lighters; Electronic cigarette lanyards; Oral vaporizers for smoking purposes; Tobacco grinders; Tobacco pipes”.
- U.S. App. No. 88672839 for the mark BIG CHIEF’N (filed October 29, 2019) for use in connection with “Electronic cigarette liquid (e-liquid) comprised of essential oils”, “Plant extracts for pharmaceutical purposes”, and “Ashtrays; Boxes for electronic cigarettes and electronic cigarette accessories; Cigarette lighters; Cigarette rolling papers; Electronic cigarette lanyards; Oral vaporizers for smoking purposes; Tobacco grinders; Tobacco pipes”.
Complainant further states that it “licenses use of the BIG CHIEF trademarks to authorized licensees for cannabis smoking products manufactured, distributed and sold in the State of California. Complainant only licenses use of the BIG CHIEF trademarks for cannabis smoking products to licensees holding valid licenses issued by the California Department of Cannabis Control authorizing those licensees to manufacture, distribute and/or sell cannabis products within the State. Cali Blue Sky Investments, Inc. registered the domain name bigchiefextracts.com pursuant to such a license from Complainant”.
The Disputed Domain Name was registered on May 8, 2020. According to the original Complaint, the Disputed Domain Name was being used in connection with a website that said it offered “the best cannabis experience through combining our obsession for innovation, knowledge of cannabis science, and precision production processes to deliver a complete product line to consumers under the trusted big chief carts Big Chief’n brand and our Big Chief Extracts delivery capabilities to other brands as a partner”. According to the amended Complaint (and an annex provided in support thereof) “after the Complaint in this administrative proceeding was filed, Complainant learned that Respondent had modified the website linked to the bigchiefextracts.org domain name in such a manner as to be nearly identical to Complainant’s current website”.
5. Parties’ Contentions A. ComplainantComplainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the BIG CHIEF Trademark because it “uses the BIG CHIEF and Big Chief Extracts marks”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]he website linked to Respondent’s domain name is making commercial use of the domain while fraudulently holding itself out as the BIG CHIEF website”; “Respondent has no relationship to Complainant, no relationship to the BIG CHIEF marks, and no relationship to BIG CHIEF products”; and “[a]s further evidenced on the home page, Respondent identifies itself as BIG CHIEF INC.”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent’s registration of the Disputed Domain Name “occurred after Complainant’s ‘BIG CHIEF’ trademark was registered with the USPTO on October 15, 2013, after Cali Blue Sky Investments registered the domain name bigchiefextracts.com on February 16, 2019, and after Complainant’s applications to register the marks ‘Big Chief Extracts’ and ‘Big Chief’n’ were filed on October 29, 2019”; “Respondent fraudulently holds itself out as the BIG CHIEF website”; and “[b]ad faith in this case is obvious given Respondent’s near exact copying of Complainant’s new website design and content”.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly SimilarBased upon the registration cited by Complainant (U.S. Reg. No. 4417441), it is apparent that Complainant has rights in and to the trademark BIG CHIEF. The trademark applications cited by Complainant for BIG CHIEF EXTRACTS and BIG CHIEF’N would not, by themselves, be sufficient to establish rights under the first element of the Policy.
As to whether the Disputed Domain Name is identical or confusingly similar to the BIG CHIEF trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “bigchiefextracts”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the BIG CHIEF Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate InterestsComplainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]he website linked to Respondent’s domain name is making commercial use of the domain while fraudulently holding itself out as the BIG CHIEF website”; “Respondent has no relationship to Complainant, no relationship to the BIG CHIEF marks, and no relationship to BIG CHIEF products”; and “[a]s further evidenced on the home page, Respondent identifies itself as BIG CHIEF INC.”.
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithWhether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any of the foregoing factors is applicable here. However, it is apparent from Respondent’s use of the Disputed Domain Name (both before and after Complainant amended its complaint) that Respondent’s use of the Disputed Domain Name creates a likelihood of confusion. See, e.g., Inter-Continental Hotels Corporation v. lin qing feng,WIPO Case No. D2013-1639 (“The Respondent has been using the disputed domain name in order to pass off the Website as a website of or otherwise authorised or approved by the Complainant. This is clear evidence of bad faith.”)
Further, because the Disputed Domain Name is “so obviously connected with” Complainant, Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. Research In Motion Limited V. Dustin Picov,WIPO Case No. D2001-0492. And, Respondent’s registration of the Disputed Domain Name on May 8, 2020 – just over six months after Complainant filed U.S. App. No. 88672812 for the mark BIG CHIEF EXTRACTS – is also indicative of bad faith. See, e.g., A.P. Møller v. Web Society,WIPO Case No. D2000-0135 (“timing indicates a desire on the part of the respondent to register the names before the complainant itself did so”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Douglas M. Isenberg
Sole Panelist
Date: October 25, 2021
1 “[A] panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.