WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nu Mark LLC v. Bui, Long

Case No. D2013-1785

1. The Parties

The Complainant is Nu Mark LLC of Richmond, Virginia, United States of America represented by Arnold & Porter, United States of America.

The Respondent is Bui, Long of Chicago, Illinois, United States of America.

2. The Domain Names and Registrar

The disputed domain names <numarkcigarettes.com>, <numarkcigs.com>, <numarkecigarettes.com>, <numarkecigs.com> and <numarkelectroniccigarettes.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2013.

The Center appointed Angela Fox as the sole panelist in this matter on December 5, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a subsidiary of Altria Group, Inc., the parent of various tobacco companies including the Complainant’s affiliate Philip Morris USA Inc., manufacturer of such well-known tobacco brands as MARLBORO.

The focus of the Complainant’s business is on developing and marketing innovative tobacco products, including electronic cigarettes (“e-cigarettes”). The Complainant entered the e-cigarette market in August 2013 when it rolled out the MarkTen range of disposable and re-chargeable e-cigarettes. Appended to the Complaint was a list of 25 domain names owned by the Complainant’s affiliated company, Altria Client Services Inc., all of which include the Complainant’s corporate name and many of which also incorporate descriptive words relating to e-cigarettes, including <nu-mark.com>, <numark-ecig.com>, <numark-ecigs.com>, <numark-ecigarette.com> and <numark-ecigarettes.com>. The domain name <nu-mark.com> is in use by the Complainant for a website promoting its products, including its MarkTen-branded e-cigarettes.

The disputed domain names were registered on June 17, 2013. Attached to the Complaint were screenshots showing that the disputed domain names have been used for directory pages featuring links to third-party websites under topics such as “Smoking Accessory”, “Lighter”, “Ashtray” and other smoking-related themes.

5. Parties’ Contentions

A. Complainant

The Complainant submits that “Nu Mark” has been used as a trade name throughout the United States and that it has become associated with the Complainant through widespread publicity of both the trade name “Nu Mark” and the Complainant’s products, including its MarkTen e-cigarettes.

The Complainant submits that the disputed domain names are confusingly similar to its “Nu Mark” trade name, differing only in the addition of the descriptive words “cigarettes”, “cigs”, “ecigarettes”, “ecigs” and “electroniccigarettes”, and the non-distinctive domain name suffix “.com”.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Respondent has no connection with the Complainant, its parent company or affiliates or with the Complainant’s products. The Respondent has not been known by any name or trade name incorporating “Nu Mark”. The Respondent, moreover, has not been licensed or otherwise authorized to use a domain name incorporating the Complainant’s “Nu Mark” trade name. In using the disputed domain names, the Respondent has sought to attract Internet traffic by capitalizing on the association of the “Nu Mark” trade name with the Complainant’s e-cigarettes, which the Complainant submits does not give rise to a right or legitimate interest in the disputed domain names.

Finally, the Complainant contends that the Respondent acquired and has used the disputed domain names in bad faith, in the knowledge of the Complainant’s rights in the “Nu Mark” trade name and with the intention of diverting Internet traffic intended for the Complainant. The Complainant states that on information and belief, the links on the Respondent’s websites are pay-per-click links from which the Respondent derives revenue and that the Respondent is attempting to profit unfairly from the confusion likely to arise from the use of the disputed domain names.

The Complainant submits that on information and belief the Respondent acquired the disputed domain names from another individual, Matt Jackson, who the Complainant alleges previously held 16 domain names unlawfully incorporating “marlboro” or “philip morris” until Philip Morris USA Inc. filed a complaint against him under the Policy. The Complainant relies on this as further evidence of the registration and use of the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel decides the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) a respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

As noted in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, “the threshold issue” in any UDRP matter is whether a complainant has rights in the trademark or service mark on which it relies under paragraph 4(a)(i) of the Policy.

In this case, the Complainant does not rely on registered trademark rights, but rather on rights in the trade name “Nu Mark”. The Complainant states that it was incorporated in October 2011 and that it maintains a website at “www.nu-mark.com” which provides information about the Complainant and its products. Annexed to the Complaint were print-outs from that website showing “Nu Mark” in use as denoting the Complainant and its business. In addition, the Complainant annexed copies of news stories carried by the Associated Press, UPI, CBSNews.com, Advertising Age online and Convenience Store News, a trade industry publication, in which “Nu Mark” is referred to as being a subsidiary of Altria or Philip Morris USA.

Common law rights may give rise to trademark rights under paragraph. 4(a)(i) of the Policy, provided the complainant has demonstrated that the indicator in question “has become a distinctive identifier associated with the complainant or its goods or services” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph. 1.7). A bald assertion is not normally sufficient, even if a respondent does not dispute it; specific information on the use alleged to give rise to unregistered rights and supporting evidence will normally be required, although the extent of the evidence needed may vary depending on the inherent distinctiveness or otherwise of the identifier and the extent to which it is known. Relevant evidence is likely to include information on length of use, sales data, nature and extent of advertising, media recognition and other evidence tending to show consumer recognition (WIPO Overview 2.0, paragraph. 1.7).

“Nu Mark” is the distinctive part of the Complainant’s corporate name and the Complainant has submitted evidence that it uses “Nu Mark” on its website at “www.nu-mark.com” to denote itself and to provide information about its business and its products, including its e-cigarettes. The Complainant has also submitted evidence that multiple news sources in the national media have used the trade name “Nu Mark” to denote the Complainant and its business in relation to e-cigarettes in news articles published and accessible to the general public online and in print. Moreover, the Complainant has submitted evidence that its corporate group owns a portfolio of domain names including “numark” and “nu-mark” as the distinctive element.

While this evidence is not perhaps very extensive, it does tend to support the Complainant’s claim that “Nu Mark” has become a distinctive identifier associated with the Complainant and its e-cigarettes, at least among the tobacco industry and those who follow business developments in that industry. While more data on general consumer recognition, sales and advertising under the “Nu Mark” trade name might have been helpful, in a business that is brand-led, it is unsurprising that a trade name has not perhaps been given the same front-line consumer prominence as the brands marketed through the business.

Taking into account the inherent distinctiveness of “Nu Mark” in relation to tobacco and related products, the Panel is satisfied that the Complainant’s evidence is sufficient to show that the trade name “Nu Mark” has become a distinctive identifier of the Complainant and its products, including e-cigarettes, in the United States.

The first element of all the disputed domain names is “numark”. That element is essentially identical to the Complainant’s trade name, omitting only the space between “Nu” and “Mark”. Each of the disputed domain names also incorporates a word that is descriptive of the Complainant’s products, respectively, “cigarettes”, “cigs”, “ecigarettes”, “ecigs” and “electroniccigarettes”. The combination of these elements is likely to create the impression that the disputed domain names are domain names of or related to the Complainant.

The Panel finds that the disputed domain names are confusingly similar to a trade name in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain names, and the Respondent has made no attempt to demonstrate that it does.

The Panel notes, however, that the Respondent appears to have been using the disputed domain names to link to landing site pages hosting links to third-party commercial websites offering smoking-related information, products and accessories. The Complainant alleges, and the Respondent does not deny, that the Respondent has been profiting from click-through income arising from that use.

Under paragraph 4(c)(i) of the Policy, a respondent may have a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.

In this case, however, the Respondent’s activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy. The ability of the disputed domain names to attract Internet users is based on the trademark significance of the element “numark”, which is virtually identical to the Complainant’s “Nu Mark” trade name. The Respondent’s use of the Complainant’s trade name to attract Internet users to a website offering links to third-party websites is essentially a form of bait-and-switch selling, which is calculated to mislead Internet users. Such activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest (see similarly mVisible Technologies, Inc. supra; Robert Bosch GmbH v Asia Ventures, Inc., WIPO Case No. D2005-0946; and LEGO Juris A/S v J.h.Ryu, WIPO Case No. D2010-1156).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant’s evidence shows that the disputed domain names were registered on June 17, 2013, just days after national media publicity was given in the United States to the Complainant’s plans to launch a range of e-cigarettes in August 2013.

The Respondent is based in the Complainant’s home market and given the timing and the inclusion within the disputed domain names of descriptive matter directly relevant to the Complainant’s new products, it is highly implausible that the disputed domain names were not registered in the knowledge of the Complainant’s plans as publicized in the national media.

The Complainant submits that the disputed domain names were originally registered by another individual, Matt Jackson, and later transferred to the Respondent, although no evidence of such original ownership and subsequent transfer has been filed. It makes, however, no odds whether the Respondent itself originally registered the disputed domain names or whether someone else did so and then transferred them to the Respondent. In either case, the registrations appear to have been made, and the Respondent appears to have acquired them, in the knowledge of the Complainant’s rights and business plans and with the intention of deriving advantage from that.

As noted above, the disputed domain names have been used to host pay-per-click links to unrelated third-party commercial websites offering smoking-related goods. The Respondent’s use appears to have been calculated to attract Internet users by creating a likelihood of confusion with the Complainant’s “Nu Mark” trade name and then to profit from click-through income arising from the diversion of Internet users. Such conduct is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel concludes that the disputed domain names were registered and have been used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <numarkcigarettes.com>, <numarkcigs.com>, <numarkecigarettes.com>, <numarkecigs.com> and <numarkelectroniccigarettes.com>, be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: December 22, 2013