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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ITG Brands, LLC v. James Oewm

Case No. D2015-2192

1. The Parties

Complainant is ITG Brands, LLC of Greensboro, North Carolina, United States of America ("United States"), represented by Dykema Gossett PLLC, United States.

Respondent is James Oewm of Plano, Texas, United States.

2. The Domain Name and Registrar

The disputed domain name <koolecigs.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 30, 2015.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 8, 2016. 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

Complainant, ITG Brands, LLC, is the owner of the KOOL trademark for cigarettes. Complainant and its predecessors have been offering cigarettes under the KOOL mark since the 1930's. Complainant is the registered owner of various trademarks in the United States for KOOL, including United States Registration No. 747,482 (registered April 2, 1963) and for KOOL, and design, including United States Registration Nos. 508,538 (registered April 12, 1949) and 2,218,529 (registered January 19, 1999).

Respondent registered the disputed domain name, <koolecigs.com>, on August 13, 2013. The URL associated with the disputed domain name resolves to a parked webpage with sponsored advertisements. Respondent has no affiliation with Complainant, nor any license to use its trademarks.

5. Parties' Contentions

A. Complainant

Complainant contends that (i) <koolecigs.com> is identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

Specifically, Complainant contends that it is the owner of the KOOL trademark for cigarettes, and that Respondent has incorporated its mark in the disputed domain name and merely added the descriptive element "ecigs," which is an abbreviation for "electronic cigarettes." Complainant contends that its KOOL mark is well known, and that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <koolecigs.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, KOOL, and combines it with "ecigs," which is an abbreviation for "electronic cigarettes," a form of the "cigarettes" covered by Complainant's registrations.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph (4)(a) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.

Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the] website or location." Respondent is using the URL associated with the disputed domain name to resolve to a parked web page with sponsored links, presumably for its own commercial gain. Furthermore, Respondent provided false contact information for its address, which thwarted attempts to be contacted, as well as the delivery attempts of the Complaint by the Center.

Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <koolecigs.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Date: January 15, 2016

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