Decision for dispute CAC-UDRP-106678

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Names.

The Complainant has established by evidence that it is the owner of the following trademarks:

(a) the European Union trademark No.018365272, registered on 19 May, 2021;

(b) the United Kingdom trademark No.UK00003646223, registered on 15 October 2021;

The Complainant is a Chinese company that has been engaged since 2017 in the manufacture and sale of e-cigarettes and related goods and services. Since 2018 the Complainant has offered its products for sale under the ELFBAR brand which has become internationally well-known. The Complainant owns a series of trademarks under which it conducts its business including: (a)the European Union trademark No.018365272, registered on 19 May, 2021; and (b)the United Kingdom trademark No.UK00003646223, registered on 15 October 2021, (collectively "the ELFBAR trademark"). It has used the ELFBAR trademark for its official website at www.elfbar.com where it advertises and promotes its products.

The Respondent registered all of the Disputed Domain Names on the same date, namely 27 March 2024 and it has caused them to resolve to separate websites where it advertises e-cigarettes and related products using the Complainant's ELFBAR trademark, giving the false impression that this has been done with the knowledge and consent of the Complainant, that the products are genuine products of the Complainant and that they are being offered for sale with the knowledge and consent of the Complainant, all of which the Complainant maintains is untrue. The Complainant is concerned about this conduct which it submits is clearly being engaged in for the commercial gain of the Respondent and to the detriment of the Complainant. Accordingly, the Complainant has instituted this proceeding to have the Disputed Domain Names transferred to itself.

COMPLAINANT

The Complainant made the following contentions.

1. The Complainant is a Chinese company that has been engaged since 2017 in the manufacture and sale of e-cigarettes and related goods and services. Since 2018 it has offered its products for sale under the ELFBAR brand which has become internationally well-known. The Complainant has subsequently developed an extensive business in its products around the world.

2. Its business has been developed by means of online and offline sales and through social media, leading to extensive sales, particularly in the United States.

3. The Complainant owns, among others, the ELFBAR registered trademark referred to above.

4. The Complainant has thus developed a high level of renown and popularity and its trademark, name and brand have become well-known and were well-known by the time the Respondent registered the Disputed Domain Names as hereafter appears.

5. The Complainant owns, among others, the ELFBAR registered trademark referred to above.

      6. The Respondent registered the following domain names on the respective dates relating to each such domain name (collectively “the Disputed Domain Names”):

elfbarcanada.net , 27 March 2024; elfbarargentina.com, 27 March 2024; elfbarchile.com, 27 March 2024; elfbarschweiz.com,27 March 2024; elfbarbelgie.com, 27 March 2024; elfbarbelgique.com ,27 March 2024;         elfbarcolombia.com , 27  March 2024; elfbardanmark.com, 27 March 2024; elfbarfrance.com, 27 March 2024; elfbarnorge.com, 27 March 2024; elfbarperu.com, 27 March 2024; elfbarslovenia.com  27 March 2024; elfbarsverige.com    27 March 2024; elfbaruae.com, 27 March 2024; elfbarlietuva.com, 27 March 2024; elfbarazerbaijan.com, 27  March 2024; elfbarbulgaria.com, 27 March 2024; elfbareesti.com 27 March 2024; elfbargreece.com, 27 March 2024; elfbarisrael.com, 27 March 2024; elfbarkuwait.com, 27 March 2024; elfbarlatvija.com, 27 March 2024;  elfbarnz.com, 27 March 2024; elfbarromania.com, 27 March 2024; elfbarrussia.com, 27 March 2024; elfbarsrbija.com, 27 March 2024; elfbarsuomi.com, 27 March 2024; elfbarhrvatska.com, 27 March 2024; elfbarjapan.com, 27 March 2024; elfbarkazakhstan.com, 27 March 2024; elfbarnederland.com, 27 March 2024; elfbarpolska.com; 27 March 2024; elfbarsuisse.com, 27 March 2024; elfbaruruguay.com, 27 March 2024; elfbaraustralia.net, 27 March 2024; elfbaraustria.net, 27 March 2024; elfbarbrasil.net, 27 March 2024; elfbarcz.net , 27 March 2024; elfbardeutschland.net, 27 March 2024; elfbaritalia.net, 27 March 2024; elfbarmoldova.net,  27 March 2024; elfbarportugal.net, 27 March 2024; elfbarspain.net , 27 March 2024; elfbarturkey.net, 27 March 2024; elfbaruk.net, 27 March 2024; elfbarukraine.net, 27 March 2024; elfbarireland.com, 27 March 2024; elfbarhungary.com, 27 March 2024; elfbarmexico.com, 27 March 2024; elfbarsouthafrica.com, 27 March 2024.

Each of the Disputed Domain Names consists of the Complainant’s ELFBAR trademark with a country name and/or abbreviation which is a geographic indicator and the generic Top Level Domain “.com” or “.net”, none of which can negate a finding of confusing similarity between a domain name and a trademark.

Each of the Disputed Domain Names is therefore confusingly similar to the ELFBAR trademark.

The Respondent has caused each of the Disputed Domain Names to resolve to a separate website.

The Respondent has no rights or legitimate interests in any of the Disputed Domain Names. In that regard, the Complainant must first establish a prima facie case and, if it is successful, the onus of proof reverts to the Respondent to disprove that case.

The prima facie case in this proceeding is established by evidence that:

                    (a) each of the Disputed Domain Names is so formulated that it misleads consumers into believing that there is an affiliation between the Complainant and the Respondent, which there is not;

                    (b the websites to which the Respondent has caused each of the Disputed Domain Names to resolve purports to offer the Complainant’s e-cigarettes and related goods and services for sale and, by implication, with the knowledge and consent of the Complainant;

                   (c) the Complainant has never authorized the Respondent to use the ELFBAR trademark in a domain name or by any other means;

                   (d) the Respondent has never acquired any trademark or similar rights in ELFBAR or any similar term;

                   (e) the Respondent is not commonly known by any of the Disputed Domain Names or any similar name;

                   (f) the Respondent is not related to the Complainant in any way, and does not carry out any activity for, nor have any business with, the Respondent; and

                   (g) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in any of the Disputed Domain Names.

The Respondent has registered and used each of the Disputed Domain Names in bad faith. That is so because:

                  (a) the Respondent had actual knowledge of the Complainant and its trademark prior to the registration of the Disputed Domain Names;

                  (b) the Disputed Domain Names had acquired a high degree of distinctiveness prior to their registration;

                  (c) the content of websites to which the Disputed Domain Names resolve is the same or similar to the content of the official website operated by the Complainant at www.elfbar.com, including the extensive use of the Complainant’s    trademark on those websites;

                 (d) the Respondent could have registered a domain name that did not infringe the Complainant’s trademark rights, but it did not do so;

                 (e) instead, the Respondent chose and registered a series of domain names that are confusingly similar to the Complainant’s trademark, which was an act of malice;

                 (f) the Respondent has used the Disputed Domain Names so as to create a likelihood of confusion with the Complainant’s trademark within the meaning of paragraph 4(b)(iv) of the Policy); and

                 (g) all of the acts, facts, matters and circumstances show that the Respondent has registered and used the Disputed Domain Names in bad faith.

RESPONDENT

The Respondent did not file a Response in this proceeding.

The Complainant has established by evidence, to the satisfaction of the Panel, that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

DISCUSSION AND FINDINGS

This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.

A. Administrative compliance

By notification dated July 15, 2024, and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that the Complaint did not sufficiently identify the Respondent. The notification invited the Complainant to have regard to the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder. Also on July 16, 2024, the Complainant filed an Amended Complaint and the CAC determined that the Complaint should be admitted to proceed further in the Administrative Proceeding.

The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.

B. Substantive matters

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that in the case of each of the Disputed Domain Names:

(i) the 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 respect of the domain name; and

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

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant has adduced evidence that the Panel accepts, that the Complainant is the registered owner of the following registered trademarks:

(a) the European Union trademark No.018365272, registered on 19 May, 2021;

(b) the United Kingdom trademark No.UK00003646223, registered on 15 October 2021;

(collectively “the ELFBAR trademark” or “the trademark”).

The Panel therefore finds that the Complainant “has” a trademark which the Policy requires it to prove and which it has done.

It will be seen that the ELFBAR trademark was registered well-before the Disputed Domain Names were registered, which was on March 27, 2024. The Complainant has verified that the Respondent is the registrant of all of the Disputed Domain Names. The Panel has verified this evidence by examining the WHOIS search results for each and every of the Disputed Domain Names and found them to be in order and to verify the registration date of each domain name.

The Panel next finds that the Disputed Domain Names are confusingly similar to the ELFBAR trademark for the following reasons.

First, each domain name includes the entirety of the ELFBAR trademark, namely “ELFBAR”. Accordingly, it is clear that the domain names have been inspired by and are an attempt to copy the ELFBAR trademark. It is also clear and has been held many times in prior UDRP decisions that when internet users see an entire trademark used in a domain name in this way, they naturally conclude that the domain name is an official domain name of the trademark owner or at least that it is being used with the permission of the trademark owner. No such permission has been given by the Complainant in the present proceeding.

Secondly, each Disputed Domain Name has also had included in it one of a series of geographic indicators by way of the name of a country such as “canada” or “southafrica”, or an abbreviation of the country, all of which invoke the name of a region where the Complainant conducts in its business. This cannot negate a finding of confusing similarity between the domain name and the trademark which is otherwise established, as the use of the region in conjunction with the trademark means that the domain name is drawing attention to the Complainant's trademark as it is used in that region. Such findings have been reached in many prior UDRP cases and are a regular practice in this field. That is because internet users naturally accept that each domain name means and invokes the Complainant, its trademark and brand and the use of the respective domain name in each such region of activity.

Thirdly, the Respondent has also added the gTLD “.com” in most cases and “.net” in the remaining cases, which likewise cannot negate a finding of confusing similarity between the respective domain name and the trademark, as all domain names must have such an extension.

Fourthly, the fact that the Disputed Domain Names have been created by making those additions to the trademark shows that the Respondent is about some activity designed to do damage to the Complainant by some means involving use of the Complainant's trademark in the Disputed Domain Names. In fact, it can be assumed that internet users who came across any of the Disputed Domain Names whether they were searching for the Complainant or simply in search of e-cigarettes, would assume that the domain name was an official domain name of the Complainant and that it was being used for a legitimate purpose by or with the consent of the Complainant involving the sale of e-cigarettes, which, of course, is not true.

Internet users would also conclude that the respective domain name would lead to an official website of the Complainant, or one approved by it, which is also not true.

Taken as a whole, the internet user would look at the relevant domain name and conclude that it is similar to the trademark and also that it is confusingly similar to it, because it gives rise to a question mark as to whether it really is an official domain name of the Complainant or not.

The Panel therefore finds that the Disputed Domain Names are confusingly similar to the ELFBAR trademark and that this conclusion is supported by the prior UDRP decision cited by the Complainant.

The Complainant has thus made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are 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 or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in any of the Disputed Domain Names, the Complainant will have failed to discharge its onus with respect to that domain name and the complaint will fail.

It is also well-established that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests and that when such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent cannot do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the Disputed Domain Names.

At this point, the Panel notes and takes into account that the Disputed Domain Names were all registered on the same date, that the contents of the websites to which they resolve are virtually the same as each other and that they are all the same as or substantially similar to the Complainant’s official and genuine website. This shows that the intention of the Respondent has been to mount a wholesale assault of the Complainant by using a long series of domain names and their resolving websites to copy the Complainant and undermine its business.

In particular, the prima facie case that the Complainant has to make out is established by the following considerations, taking them in the order in which they have been raised by the Complainant:

the evidence shows that what has happened in this case is that each of the Disputed Domain Names is so formulated that it misleads consumers into believing that there is an affiliation between the Complainant and the Respondent as the Registrant of the respective domain names, whereas the evidence shows that there is no such affiliation between them at all; thus, as an example, one could not but conclude when looking at the domain name <elfbarcanada.net> that it meant and was intended to mean that it is a domain name invoking the use of the ELFBAR trademark in Canada and for some use connected or affiliated with the Complainant’s well-known brand of ELFBAR e-cigarettes, and that this was being done by a legitimate association with the Complainant, when the evidence shows that this is untrue and therefore deceptive;

the evidence shows that what has also happened is that the Respondent has caused each of the Disputed Domain Names to resolve to a website purporting to offer the Complainant’s ELFBAR e-cigarettes for sale and, by implication, with the knowledge and consent of the Complainant, all of which the evidence shows is untrue and therefore deceptive;

the evidence of the foregoing is contained in Annexe 12 to the Complaint, which is a series of screenshots of the web pages to which each and every of the Disputed Domain Names resolves; in other words, they show the use to which the Respondent has put the domain names; they are each virtually the same as all of the others and there is therefore no need to set them out in detail; but the Panel has examined them all; they contain frequent use of the Complainant’s ELFBAR trademark, the Elfbar name and brand, photographs of the products, descriptions of e-cigarette products for sale as “Elf Bar Electronic Cigarette”, photographs of a model smoking an e-cigarette, descriptions of precise products such as “Elfbar Funkey Lands Disposable Vape (with product number) Watermelon Rasberry Duo Ice”, a graphic logo or drawing with the word “ELFBAR” under it, a range of different products depending on the website, and other expressions such as “ELFBAR PRODUCTS”; thus, the Respondent has deliberately and frequently used the ELFBAR trademark, name and products, without permission, to sell its own products, whether they are counterfeit or goods illegally bought and now being illegally resold, which is dishonest; consequently, this could not possibly confer a right or legitimate interest in the domain names that were used to carry out this subterfuge;

the evidence of the foregoing is also seen from an examination of the official website of the Complainant at www.elfbar.com; this shows, as the Panel has seen from an examination of that website, extensive use of the ELFBAR trademark, the type of products for sale under the ELFBAR trademark and brand, being the same genre of products displayed on the Respondent’s websites, and the same logo or drawing as on the Respondent’s websites with the word “ELFBAR” under it; the Respondent's websites also have the same or similar colours, look and feel as the Complainant's official website; thus, the Respondent has in effect copied the Complainant's own and official website; again, this must negate any suggestion that the Respondent has a right or legitimate interest in the domain names used to carry out this subterfuge;

the combined effect of the evidence of the Respondent’s websites and of the Complainant’s own website is that the Respondent’s websites are virtually the same as each other and the same as or similar to the Complainant’s official website to the extent that the Respondent has tried to copy the Complainant’s name, trademark, brand and website;

the evidence is that the Complainant has never authorized the Respondent to use the ELFBAR trademark in a domain name, website or by any other means;

the evidence is that the Respondent has never acquired any trademark or similar rights in ELFBAR or any similar term;

the evidence is that the Respondent is not commonly known by any of the Disputed Domain Names or any similar name; the Respondent is named Zhang Qiang and is therefore presumably known by that name and not by any of the Disputed Domain Names;

the evidence is that the Respondent is not related to the Complainant in any way, and does not carry out any activity for, nor have any business with, the Respondent;

all of the foregoing evidence shows that the Respondent does not have a right or legitimate interest in any of the Disputed Domain Names; and

there is no other ground shown by the evidence on which it could conceivably be shown that the Respondent has a right or legitimate interest in any of the Disputed Domain Names.

This evidence establishes the prima facie case made out by the Complainant.

The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default. Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent’s website or other on-line 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 site or location.

There is no need to repeat the details of the evidence set out already, as they relate equally to the issue of bad faith as well as to rights and legitimate interests; the conduct of the Respondent in registering the domain names clearly shows bad faith registration and its conduct since their registration shows bad faith use.

First, the Disputed Domain Names were clearly registered in bad faith because the Respondent copied the ELFBAR trademarks in the domain names and made it clear in the terms of the domain names that its intention was to copy the Complainant, invoke its trademark, pass itself off as the Complainant and mislead internet users.

Secondly, the Disputed Domain Names have been used in bad faith. That is so because the Respondent has used them to resolve to a series of websites for the clear purpose of competing with the Complainant by using its trademark, passing itself off as the Complainant and misleading internet users, all of which amounts to use in bad faith. What the Respondent has done is to pretend that it is the Complainant or that it is operating with the knowledge and approval of the Complainant and to offer products for sale that carry the Complainant’s trademarks and brand, depict those products, promote them in the same way as the Complainant has promoted them, and use the same style, look and feel of the Complainant’s website to try to sell those products, obviously for illicit commercial gain.

Specifically, the Panel finds that the evidence that has already been described has shown that the Respondent registered and used the Disputed Domain Names in bad faith on the grounds relied on by the Complainant, which are as follows:

the evidence has shown that the Respondent had actual knowledge of the Complainant and its trademarks prior to the registration of the Disputed Domain Names; the Respondent must have had actual knowledge of the Complainant and its trademarks, which has long been a ground for finding bad faith registration and, by retaining and using the domain names, their use; the Respondent could not possibly have started and continued with its subterfuge and fraud on internet users if it did not have actual knowledge of the Complainant’s name, trademark, business and activities;

as has been shown by the evidence, the Complainant’s trademark had acquired a high degree of distinctiveness throughout the world prior to the registration of the Disputed Domain Names;

the content of the websites to which the Disputed Domain Names resolve is virtually the same in each case and the same or very similar to the contents of the Complainant’s own website at www.elfbar.com, including the extensive use of the Complainant’s trademark on those websites,

as the Complainant points out and the Panel agrees, the Respondent could have registered a domain name or domain names that did not infringe the Complainant’s trademark rights, but it did not do so; instead, it chose and registered a series of domain names that are confusingly similar to the Complainant’s trademarks, which was an act of malice, in view of the number of domain names registered and that all of them were registered for a similar and dishonest purpose;

the evidence shows that the Respondent has used the Disputed Domain Names so as to create a likelihood of confusion with the Complainant’s trademarks within the meaning of paragraph 4(b)(iv) of the Policy, a well-established ground of bad faith; and

all of the acts, facts, matters and circumstances revealed by the evidence show that the Respondent has registered and used the Disputed Domain Names in bad faith.

Finally, in addition to the specified grounds of bad faith and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the Disputed Domain Names, retaining them, and using them, the Respondent registered and used them in bad faith within the generally accepted meaning of that expression.

Accordingly, the Complainant has shown the third of the three elements that it must establish.

The Complainant has therefore made out its case and is entitled to the relief it seeks.

The Disputed Domain Names should therefore be transferred to the Complainant.