The Complainant is Lorillard Technologies, Inc of Greensboro, North Carolina, United States of America (“United States”), represented by Dykema Gossett PLLC, United States.
The Respondent is Krunal Chauhan of Baroda City, Gujarat Province, India.
The disputed domain names <bluecigarettesonline.com> and <buybluecigarettes.com> are registered with GoDaddy.com, LLC
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2014. On August 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 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 August 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2014.
On September 17, 2014, the Center received informal email communications from the Respondent, of which the Center acknowledged receipt.
The Center appointed Luca Barbero as the sole panelist in this matter on September 23, 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.
The Complainant owns several trademark registrations for BLU, BLU CIGS and BLU ECIGS (collectively, the “BLU CIGS Marks”), including the following:
- United States trademark registration No. 3846035 for BLU ECIGS (word mark), registered on September 7, 2010, in International class 34;
- Canadian trademark registration Nos. TMA805311 for BLU CIGS (word mark), registered on August 25, 2011; and TMA767455, registered on May 20, 2010;
- International trademark registration Nos. 1051607 for BLU CIGS (word mark), registered on September 16, 2010, in class 34; 1051365 for BLU ECIGS (word mark), registered on September 16, 2010, in class 34; and 1058275 for BLU ECIGS (figurative mark), registered on October 26, 2010, in class 34.
The Complainant is also the owner of the domain name <blucigs.com>, registered on December 31, 2008, at which it operates a website featuring information about its products and services as well as an ecommerce platform through which the Complainant’s BLU ECIGS electronic cigarettes and accessories are sold.
The disputed domain names <bluecigarettesonline.com> and <buybluecigarettes.com> were registered on July 22, 2014 and resolve to web pages displaying an error message.
The Complainant states that the Complainant and its affiliates use the BLU CIGS Marks in connection with electronic cigarettes and related goods and services. The Complainant specifies that, in May 2009, the Complainant’s predecessor company, Blec LLC, first began using the BLU CIGS Marks and that, since that time, said marks have been continually used by the Complainant’s predecessor and the Complainant. The Complainant points out that, as a result, BLU ECIGS is nowadays the leading electronic cigarette brand in the United States.
The Complainant claims ownership also of common law trademark rights in the BLU CIGS Marks by virtue of its extensive use of the marks in the United States and of the trademark registrations in the United States and in several other countries. The Complainant contends that the disputed domain names are virtually identical to the BLU CIGS Marks as they are a combination of the Complainant’s well-known trademarks with the generic suffix “online” and the “buy” prefix.
The Complainant states that the Respondent has no rights or legitimate interests in the BLU CIGS Marks and in the disputed domain names since the Respondent is in no way affiliated with the Complainant and not licensed to use the BLU CIGS Marks. The Complainant also asserts that the Respondent has not attempted to file any trademark application for the mark BLUE ECIGS and that the Respondent’s lack of any trademark application or registration demonstrates that it has no rights or legitimate interests in the disputed domain names.
The Complainant further states that there is no demonstrable use by the Respondent of the disputed domain names in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the names “Blucigs” or “Bluecigs”.
With reference to the bad faith requirement, the Complainant contends that the Respondent’s intentional use of the Complainant’s trademarks to mislead and divert consumers away from the Complainant’s legitimate business amounts to use in bad faith, as Internet users who wish to purchase the Complainant’s BLU ECIGS and BLU products online are likely to be confused and attracted to the Respondent’s websites. The Complainant asserts that there is no other plausible explanation for the registration and use of the disputed domain names by the Respondent and that, the fact that the disputed domain names resolve to error pages instead of active websites does not prevent a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions within the deadline provided for Response.
After the notification of the Respondent’s default, it sent an informal communication to the Center stating:
“I cannot ever believe that BlueCigarettersOnline. Com is considered as a trademark of company. Blue is a color and Cigarette is a thing name. Please lets proceed with hearing and I’d like to have my say in this as well. This is absolutely not acceptable”.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Panel preliminarily notes that, according to paragraph 13 of the Rules, there shall be no in-person hearings in a UDRP proceeding, unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding a complaint.
In the case at hand, the Respondent was notified by the Center of the Complaint and of the due date for the submission of a Response (September 11, 2014). However, the Respondent failed to submit any response within said deadline.
In view of the above, and in absence of exceptional circumstances which could justify the Respondent’s request for a hearing, the Panel will decide the present case, evaluating whether the Complainant has satisfied to prove each of the three elements mentioned above, on the basis of the sole Complaint.
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of several trademark registrations for BLU CIGS and BLU ECIGS and has therefore established rights in a trademark according to paragraph 4(a)(i) of the Policy.
As stated in prior UDRP decision and in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The Panel finds that the Complainant’s trademarks BLU CIGS and BLU ECIGS are recognizable as such within the disputed domain names, considering that the term “cigs” in the Complainant’s trademarks is a commonly used abbreviation of “cigarettes”, and that the addition of the generic words “online” and “buy” and of the Top-Level Domain suffix “.com” is not sufficient to exclude the likelihood of confusion.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the registered trademarks owned by the Complainant according to paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii)of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph. 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent, has failed to demonstrate any rights and/or legitimate interests in the disputed domain names.
The Complainant has not authorized the Respondent’s use of the BLU CIGS Marks and there is no evidence showing that the Respondent might be commonly known by the disputed domain names. In addition, there is no evidence showing that the disputed domain names, which do not resolve to active websites, might have been used in connection with a bona fide offering of goods or service or with a legitimate noncommercial or fair use.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant has proved ownership of several trademark registrations for BLU, BLU CIGS and BLU ECIGS, filed in the United States and in several countries of the world several years before the registration of the disputed domain names by the Respondent on July 22, 2014 and the Complainant’s trademarks appear to have acquired a certain degree of notoriety in the field of electronic cigarettes.
In light of the fact that the Respondent has not submitted a Response to the Complaint, has not provided any document or statement to demonstrate rights or legitimate interests in the disputed domain names and has failed to explain the reason why it registered the disputed domain names incorporating the Complainant’s trademarks with the addition of the terms “buy” and “online”, the Panel finds that the Respondent’s registration of the disputed domain name cannot be ascribed to a mere coincidence and that the Respondent, on balance, was or could have been aware of the Complainant’s trademarks at the time of registration.
The Panel also finds that the fact the disputed domain names are currently pointed to web pages merely showing an error message does not preclude the finding of bad faith use since, as also established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding (see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In this Panel’s view, even though the disputed domain names are not currently pointing to an active website, the registration of the disputed domain names, in particular of <buybluecigarettes.com>, was very likely made by the Respondent with the purpose to use them in connection with a commercial website. In addition, the Respondent’s registration and use of the disputed domain names is certainly apt to cause confusion among Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant.
In light of the above and noting that the Respondent did not provide any explanation of why he registered the disputed domain name and for which purpose, the Panel concludes that the disputed domain names were registered and are being used in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <bluecigarettesonline.com> and <buybluecigarettes.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: October 18, 2014