Warehouse Goods, Inc. v. David Shummer, GRD Corp
Case No. D2014-1236
The Complainant is Warehouse Goods, Inc. of Boca Raton, Florida, United States of America, represented by Lewis & Lin, LLC, United States of America.
The Respondent is David Shummer, GRD Corp of Mount Dora, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2014. On July 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2014, the Registrar 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2014.
The Center appointed Michelle Brownlee as the sole panelist in this matter on August 27, 2014. 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 owns United States Trademark Registration Number 4,438,806 for the mark VAPE WORLD in connection with on-line retail store services featuring aroma therapy vaporizers, tobacco vaporizers and e-cigarettes in International Class 35 and Registration Number 3,592,011 for the mark VAPE WORLD and design in connection with electronic herbal vaporizers not for medical use in International Class 11. The Complainant also owns European Community Trade Mark Registration Number 11456167 in connection with retail services in the field of vaporizers in International Class 35.
The Domain Name was registered on January 16, 2012.
5. Parties’ Contentions
Since 2007, the Complainant has achieved revenues in the tens of millions of dollars, primarily from sales on its website located at “www.vapeworld.com”. Of this revenue, at least 95% was derived from sales in the United States. The Complainant sells more than 1,000 different products to hundreds of thousands of customers in every state and province in North America and around the world, with annual sales in the millions of units, and many millions of units sold over time. The Complainant’s website (“www.vapeworld.com”) receives millions of unique visitors annually. All of the Complainant’s advertising prominently displays the VAPE WORLD trademarks. The Complainant contends that its continuous and substantial use, advertising, and promotion of the VAPE WORLD trademark have made the mark well-known.
The Complainant submits that the Domain Name is identical to the Complainant’s VAPE WORLD trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Complainant has presented evidence that the Respondent has the Domain Name “parked” and is not actively using the Domain Name in connection with a website. The Complainant also presented evidence that the Complainant sent correspondence to the Respondent requesting transfer of the Domain Name and received no reply. The Complainant argues that these circumstances suggest that the Respondent registered the Domain Name for the purpose of selling it to the Complainant or one of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the VAPE WORLD trademark, and the Panel finds that the second level of the Domain Name is identical to the trademark. Accordingly, the Complainant has proved this element.
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence that the Respondent is using the Domain Name in connection with a parked page that simply resolves to the Internet service provider’s page, and, therefore, does not appear to be actively using the Domain Name. The Respondent has not refuted those allegations. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location.
This list of factors is not exhaustive. Other factors can indicate bad faith. The Complainant has presented evidence that the Respondent is not actively using the Domain Name in connection with a website, and that the Respondent did not respond to the Complainant’s correspondence requesting transfer of the Domain Name. The Complainant offered evidence that it has a wellknown online retail business that operates under the domain name . It seems likely that the Respondent knew of the Complainant’s business and registered the Domain Name either to sell to the Complainant, to divert Internet traffic, or for some other confusing purpose, such as phishing. Since the Respondent did not offer any alternative explanation for its registration and use of the Domain Name, it is difficult to imagine any good faith reason why the Respondent would have registered the Domain Name. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Date: September 10, 2014