The Complainant is Samuel Kim, United States of America (“United States”), represented by Johnson & Pham, LLP, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / BPW, Mysin Yurievich, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20 and 22, 2021, the Registrar transmitted by email to the Center its verification responses 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 the Complainant on September 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 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 September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 20, 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 BackgroundThe Complainant is an individual located in the United States and the owner of the BIG CHIEF trademark. The Complainant particularly owns the United States trademark registration No. 4,417,441, for BIG CHIEF, registered on October 15, 2013, granting protection for various tobacco related products under class 34 (Annex 5 to the Complaint).
Among others, the Complainant grants licenses to use its trademark BIG CHIEF for cannabis smoking products manufactured, distributed and sold in the State of California. Licensees of the Complainant hold valid licenses issued by the California Department of Cannabis Control authorizing them to manufacture, distribute and/or sell cannabis products within the State of California. Although Big Chief cannabis smoking products are displayed on the website through the domain name
The disputed domain name was registered on October 12, 2020.
The Respondent is supposed to be an individual from the Russian Federation.
The screenshots, as provided by the Complainant (Annexes 6, 8 and 9 to the Complaint), show that the disputed domain name is associated to a website prominently featuring the Complainant’s BIG CHIEF trademark and creating the (false) impression that the website is owned by or associated with the Complainant, and Internet users can buy Big Chief cannabis smoking products via that website.
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its BIG CHIEF trademark.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarTo begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights in BIG CHIEF. As evidenced in the Complaint, the Complainant is the owner of the BIG CHIEF trademark, which has been first registered in the United States in 2013; and, hence, many years before the registration of the disputed domain name (Annex 5 to the Complaint).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BIG CHIEF trademark. The disputed domain name fully comprises the BIG CHIEF trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of the dictionary term “carts” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s BIG CHIEF trademark.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s BIG CHIEF trademark in a confusingly similar way within the disputed domain name.
In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name. On the contrary, the Panel finds on the available record (Annexes 6, 8 and 9 to the Complaint) that the Respondent attempts to misrepresent itself as the Complainant, or at least as a legitimate licensee on the website at the disputed domain name, and provides probably illegal online distribution of purported Big Chief cannabis smoking products.
Also, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.
Bearing all this in mind, the Panel does not see a basis for assessing a bona fide offering of goods or services nor a legitimate noncommercial or fair use by the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users for purposes of commercial gain, particularly for the following reasons.
At the date of registration of the disputed domain name, the Respondent was apparently well aware of the Complainant and its BIG CHIEF trademark, particularly considering the use of the Complainant’s trademark on the website at the disputed domain name. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead Internet users who particularly are searching for legal cannabis smoking products licensed by the Complainant. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.
Additionally, the Panel finds that the Respondent is using the disputed domain name in bad faith. Prominently featuring the Complainant’s BIG CHIEF trademark on the website linked to the disputed domain name, the content of that website (Annexes 6, 8 and 9 to the Complaint), and the nature of the disputed domain name all indicate that the Respondent intentionally tries to misrepresent itself as the trademark owner, or at least as a legitimate licensee, for commercial again, to mislead Internet users who are searching for legal cannabis smoking products licensed by the Complainant into believing that the website is owned by or associated with the Complainant.
Furthermore, the Panel finds that the Respondent’s failure to respond to the Complainant’s contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
Taking these facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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
Kaya Köklü
Sole Panelist
Date: November 2, 2021