The Complainant is MVH I, Inc., United States of America (“United States”), represented by 101Domain GRS Ltd., United States.
The Respondent is Sam Matthews, United Arab Emirates, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On January 4, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On January 5, 2021, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2021. The Response was filed on January 27, 2021. The Center appointed Jane Seager as the sole panelist in this matter on February 5, 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 a company engaged in the production and sale of electronic-cigarette (“e-cigarette”) products and accessories. For use in connection with the Complainant’s products, the Complainant is the owner of the following trademarks: - United States Trademark Registration No. 5652774, MYLÉ, filed on November 22, 2017, and registered on January 15, 2019 (first use in commerce on May 7, 2016); and - International Trademark Registration No. 1462089, MYLÉ, registered on March 4, 2019. The Complainant operates its primary website at “www.mylevapor.com”, where it provides an online marketplace for customers, wholesalers, and distributors. The disputed domain name was registered on February 21, 2019. The disputed domain name previously resolved to a website displaying the Complainant’s MYLÉ-branded products for sale. On December 11, 2020, the Complainant sent a notice to the hosting provider of the website to which the disputed domain name previously resolved. The hosting provider subsequently suspended the website to which the disputed domain name resolved. At the time of this decision, the disputed domain name resolves to a website titled “Dubai Vape” that offers various third-party e-cigarette products and related accessories for sale. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the MYLÉ trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has not licensed or allowed the Respondent to use its MYLÉ trademarks. The Complainant asserts that the Respondent has no registered trademarks for “mylé”. The Complainant submits that the Respondent is not commonly known by the disputed domain name, nor is the Respondent making any legitimate non-commercial or fair use of the disputed domain name. The Complainant argues that the Respondent’s use of the disputed domain name has the effect of diverting potential customers away from the Complainant, disrupts the Complainant’s business, and tarnishes the Complainant’s MYLÉ trademark. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent has used the disputed domain name fraudulently to mislead Internet users seeking MYLÉ-branded products into buying unauthorized products. The Complainant asserts that the Respondent is therefore profiting from the Complainant’s reputation in the e-cigarette industry. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent claims to be a part owner of a company that sells e-cigarette products online in the United Arab Emirates, including MYLÉ-branded products. The Respondent states that his company had been purchasing products from the Complainant for the past two years, that the Complainant had always known about the Respondent’s websites, and had nevertheless actively sold its products to the Respondent’s company. The Respondent asserts that he has made substantial investment in the disputed domain name and associated website. The Respondent states that he first received notice from the Complainant regarding his use of the Complainant’s trademark in December 2020, following which all references to the Complainant’s products were removed from the Respondent’s website. The Respondent notes that there are many third-party websites selling MYLÉ-branded products in the United Arab Emirates. The Respondent submits that the Complainant does not have exclusive rights over the use of the word “mylé” in the United Arab Emirates. The Respondent asserts that the Complainant has no legitimate rights to stop the Respondent from using the disputed domain name. In this regard, the Respondent argues that the Complainant has failed to provide any evidence that its MYLÉ-branded products are authorized in the United Arab Emirates, and that the Complainant failed to provide evidence of any intention to invest in the United Arab Emirates market. The Respondent further submits that the disputed domain name was acquired by the Respondent prior to the registration date of the Complainant’s United States trademark registration for MYLÉ. The Respondent asserts that he has been trading in good faith since February 21, 2019, and that he has no intention of competing with the Complainant – a United States company. 6. Discussion and Findings In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 6(a) of the Policy: (i) the disputed 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 the disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith. In light of the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior panel decisions decided under the UDRP, including as expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate; see Kent Ro Sytems Limited / Mr. Mahesh Gupta v. Umer Khokhar,WIPO Case No. DAE2020-0004. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the MYLÉ trademark, the registration details of which are provided in the factual background section above. The disputed domain name comprises the Complainant’s MYLÉ trademark in its entirety, altered only by the omission of the acute accent diacritic above the letter “e”. The country code Top-Level Domain (“ccTLD”) “.ae” may be disregarded for the purposes of comparison under the first element. The Panel finds that the Complainant’s trademark is immediately recognizable in the disputed domain name. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s MYLÉ trademark. The Complainant has satisfied the requirements of paragraph 6(a) of the Policy. B. Rights or Legitimate Interests The Complainant argues that the Respondent’s use of the disputed domain name is unauthorized, and has the effect of misleading customers away from the Complainant’s websites. The Respondent submits that his company has, until recently, enjoyed a healthy relationship with the Complainant who has known about the Respondent’s sale of the Complainant’s products on the Respondent’s website. The Respondent adds that all references to the Complainant’s products have been removed from the website to which the disputed domain name resolves. There is no evidence of any license or express agreement between the Parties for the Respondent to act as a reseller or distributor of the Complainant’s goods. Prior panels have recognized that resellers or distributors using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods or services and thus have a legitimate interest in such a domain name. The following cumulative requirements, as outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data” criteria), are applied in determining whether a respondent is making fair use of a domain name; see WIPO Overview 3.0, section 2.8.1: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The risk of misrepresentation has also led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark; see WIPO Overview 3.0, section 2.8.2. Turning to the present case, the Panel notes that prior to the Complainant’s pre-Complaint correspondence of December 11, 2020, the disputed domain name resolved to a website that offered the Complainant’s MYLÉ-branded e-cigarette products for sale. Screen captures submitted in evidence by the Complainant show that, at that time, the Respondent’s website appeared only to sell MYLÉ-branded products. There is no evidence that the products previously offered for sale via the Respondent’s website were counterfeit. The Respondent’s website layout, color scheme, and product images closely resembled the Complainant’s website available at “www.mylevapor.com”. The Panel notes that the Respondent’s website included a banner stating: “WARNING: This product contains nicotine. Nicotine is an addictive chemical. MYLE.AE has no affiliation to MYLÉ VAPOR. We are purely a reseller of their brand in the UAE” While the Respondent’s website did contain a disclaimer, the Panel is of the view that such a disclaimer could be easily overlooked by Internet users as a nicotine warning. By adding a brief disclaimer-like statement to the website’s nicotine warning, the Panel finds that the Respondent has failed to prominently disclose its lack of relationship with the owner of the MYLÉ trademark. Further noting that the look and feel of the website to which the disputed domain name previously resolved closely resembled that of the Complainant’s website, the resulting impression left by the Respondent’s website was that it was an official website of the Complainant, or of an official reseller of the Complainant, in the United Arab Emirates. At the time of this decision, the disputed domain name resolves to a website titled “Dubai Vape”, offering third-party e-cigarette products and accessories for sale. As the Respondent is no longer acting as a reseller of the Complainant’s products, but rather is offering goods that compete with those offered by the Complainant, the Panel does not consider the Respondent’s current use of the disputed domain name to be bona fide. Finally, in light of the high degree of similarity between the disputed domain name and the Complainant’s trademark, in the absence of any express authorization from the Complainant for the Respondent to act as a reseller or distributor of the Complainant’s products, the Panel finds that use of the disputed domain name to sell e-cigarette products would likely mislead Internet users as to the source of the goods offered on the website to which the disputed domain name resolved. In light of the above, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 6(c)(i) of the Policy. The Respondent has not come forward with any evidence of registered trademark rights in “mylé”. The Respondent’s use of the disputed domain name, as described above, does not give rise to any reputation in the disputed domain name, independent from the Complainant’s trademark, such that the Respondent may be said to have become “commonly known” by the disputed domain name pursuant to paragraph 6(c)(ii) of the Policy. Nor is the Respondent making legitimate non-commercial or fair use of the disputed domain name in accordance with paragraph 6(c)(iii) of the Policy. The Panel finds that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the requirements of paragraph 6(a)(ii) of the Policy. C. Registered or is Being Used in Bad Faith As noted above, the disputed domain name was registered on February 21, 2019. The Complainant’s United States trademark, MYLÉ, was registered on January 15, 2019. A review of historic screen captures of the Complainant’s website “www.mylevapor.com” at Archive.org indicates that the Complainant appears to have offered its goods online since at least December 6, 2017. The Respondent’s claim that his registration of the disputed domain name predates the Complainant’s registration of its United States trademark is misguided. Further noting the near instantaneous and global reach of the Internet, the Panel does not consider the Complainant’s lack of registered trademark rights in the United Arab Emirates to prevent a finding of bad faith registration of the disputed domain name. In fact, it is clear from the contents of the website to which the disputed domain name previously resolved, that the Respondent was well aware of the Complainant and its rights in the MYLÉ trademark. The Panel infers that the Respondent registered the disputed domain name, carrying with it a high degree of implied affiliation with the Complainant, in order to derive commercial benefit from the unauthorized use of the Complainant’s trademark online. The Panel finds that the disputed domain name was registered in bad faith. The Panel further finds that by using the disputed domain name, as described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s MYLÉ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods offered therein, in bad faith pursuant to paragraph 6(b)(iv) of the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 6(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name Jane Seager It has been accepted that 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. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (“www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past; see WIPO Overview 3.0, section 4.8.
Panelist
Date: February 19, 2021
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