Decision for dispute CAC-UDRP-107389

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 that it has rights in the “GEEK BAR” trademark based on the following trademark registrations:

The Complainant has adduced evidence that implies it owns or controls the domain name <geekbar.com>, however, the Panel is unable to verify this using WHOIS nor has the Complainant expressly asserted this in its Complaint.

The Complainant is Chinese company established in 2016.

It is a leading global vaping manufacturer where it develops, manufactures, and sells disposable electronic cigarettes produces under the “GEEK BAR” trademark. Its products are sold in Russia, the United States, the Middle East, Europe, and many other countries.

It has a sizeable manufacturing facility, R&D, and operations in China and has invested in a new plant to grow its UK distribution.

The disputed domain names were created by the respective Respondents on the following dates:

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant Response has been filed.

Are the disputed domain names 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)?

To satisfy this element, the Complainant must demonstrate that each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights.

The test for confusing similarity involves a straightforward comparison between the Complainant’s trademark and the disputed domain names. This typically involves a side-by-side comparison of the disputed domain names and the textual components of the trademark to assess whether the mark is recognisable within the disputed domain names.

The assessment is generally considered a "low threshold" test, primarily functioning as a standing requirement.

Several key principles apply:

1. When a domain name incorporates the entirety of a trademark, i.e., it is a character for character match, it will usually satisfy the confusing similarity requirement regardless of other elements contained in the domain name.
2. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to the complainant's trademark in a disputed domain name does not prevent a finding of confusing similarity under the first element.
3. The generic Top-Level Domain (gTLD) suffix is disregarded in the assessment of confusing similarity as it is a technical or functional requirement of domain name registration.

Applying these principles here, the Complainant has established rights in the “GEEK BAR” trademark. All these trademark registrations predate the creation of the disputed domain names.

Each of the disputed domain names incorporates, in its entirety, the Complainant’s “GEEK BAR” trademark. The only differences are the addition of what appears to be the geographic indicators of “cn” (representing China) and “sa” (representing Saudi Arabia) and the gTLD suffix “.com”.

The addition of these geographic terms does not prevent a finding of confusing similarity, as they do not diminish the prominence of the “GEEK BAR” trademark within the disputed domain names.

On the contrary, such additions are likely to enhance the potential for confusion as they might suggest to internet users and consumers that these are regional locations associated with the Complainant.

Accordingly, the Panel considers that the each of the disputed domain names is confusingly similar to the Complainant’s “GEEK BAR” trademark and this ground is made out.

Has the Complainant shown that the Respondents have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy)?

A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name.

A respondent may establish its rights or legitimate interests through various means, including:

• demonstrating it has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
• prior to any notice of the dispute, showing it has made or prepared to make bona fide offerings of goods or services under the disputed domain name; or
• demonstrating legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in question.

If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.  See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.

The Complainant has adduced evidence that it holds exclusive trademark rights to the "GEEK BAR" mark predating the registration of the disputed domain names. 

The Respondents have not filed any administrative compliant response and have not rebutted the Complainant’s prima facie case or provided any evidence of rights or legitimate interests in the disputed domain names.

On the preponderance of the evidence adduced, the Panel finds that:

1. Each of the Respondents is not affiliated with the Complainant in any way, nor a licensee or authorised agent, distributor, or partner of the Complainant and has not been granted permission to use the “GEEK BAR” trademark in the disputed domain names or otherwise.
2. There is no evidence from the WHOIS information or otherwise that the Respondents have been commonly known by their respective disputed domain names or have made any bona fide use of them.
3. There is no evidence that the Respondents holds any rights in the name “GEEK BAR”.
4. The Respondents’ websites are designed to mimic or impersonate the Complainant and offer what appear to be unauthorised products for sale. Given the authenticity verification process of the e-cigarette products provided by the Respondents appears to be similar to that of the Complainant’s official website, it is difficult for consumer to distinguish between the product offerings. This does not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use.

In the absence of any response from the Respondents to rebut this prima facie case, the Panel considers that the Complainant has satisfied the second element of the Policy, and accordingly this ground is made out.

Has the Complainant 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)?

Under this element, the complainant must establish that the disputed domain names were both registered and are being used in bad faith.

For a finding of registration in bad faith, it is necessary to demonstrate that the respondent was aware of the complainant’s trademark rights at the time of registration.

Further, paragraph 4(b) of the Policy sets out non-exhaustive circumstances which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith:

1. 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 or to a competitor, for valuable consideration in excess of documented out-of-pocket costs; or

2. the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

3. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.

Registration of a disputed domain name that is confusingly similar to a well-known trademark by a party with no connection to that trademark or not having the authorisation from the owner of the trademark or not having any legitimate reasons to use the disputed domain name creates a strong presumption of bad faith.

From the evidence adduced by the Complainant, the Panel finds that the Respondents have registered and are using the disputed domain names in bad faith for the following reasons:

1. The disputed domain names were created after the Complainant’s “GEEK BAR” trademarks were registered in various countries. The WHOIS records and the Complainant’s trademark registrations support this finding.
2. The Complainant has established its “GEEK BAR” trademark is used in connection with its e-cigarette products, achieving significant recognition in various markets, including the United Kingdom, United States of America, Russia, Middle East, and Europe. The evidence adduced supports its brand popularity by its strong sales performance, extensive online presence, social media influences, participation in industry exhibitions, and other numerous product reviews on platforms such as YouTube.
3. When the respective terms “GEEK” and “BAR” are combined to form a single term “GEEK BAR”, it is not a common word in English, French, or other languages. The Panel infers that it is highly unlikely that the Respondents coincidentally selected this term for the disputed domain names without prior knowledge of the Complainant’s “GEEK BAR” trademark.
4. The Respondents’ incorporation of the Complainant’s “GEEK BAR” trademark into the disputed domain names and using them to create websites that are “exactly the same as the [Complainant’s] official website” make it difficult for consumers to distinguish between the unauthorised websites and the official websites. The Panel considers this deliberate mimic or impersonation of the Complainant’s websites as indicating the Respondents’ awareness of the Complainant’s “GEEK BAR” trademark. This leads to a strong inference that the Respondents intentionally sought to create confusion among internet users as to the source, sponsorship, affiliation, or endorsement of their websites.

The Respondents’ failure to submit any administrative compliant response to rebut these findings or provide any legitimate explanation for the registration and use of the disputed domain names incorporating the Complainant’s “GEEK BAR” trademark is telling.

Given the evidence adduced and the Complainant’s contentions, the Panel finds that the disputed domain names were registered and are being used in bad faith. This ground is made out.

The Panel will address each of the following procedural matters in turn:

1. Whether to consolidate the disputed domain names into a single proceeding?
2. The appropriate language for the conduct of the proceeding.
3. The notification to the Respondents of this proceeding.

Consolidation of the disputed domain names in a single dispute

The Complainant requests consolidation of the disputed domain names into a single proceeding.

Rule 10(e) empowers the Panel to decide such a request in accordance with the Policy and the Rules.

Consolidation of multiple domain names into a single proceeding may be appropriate where:

1. the disputed domain names are subject to common control; and

2. consolidation would be procedurally efficient, fair, and equitable to all parties.

Previous UDRP panels have found that consolidation may be appropriate when there are sufficient indicia of common control, even if no single factor alone proves common ownership or control. See Under Armour Inc v Fei Niu (2018) CAC Case 101969 and WIPO Case No. D2013-0994); Pandora A/S v Larry Sack (202) 103259.

The Complainant asserts the following:

1. The disputed domain names resolve to the same websites. Despite the different registrant names, this indicates that the disputed domain names are under common control, as they are used in an identical manner and serve similar online content.

2. WHOIS information for the disputed domain names are hidden. The real name of the Respondent is “Shan Xun Yang” for both disputed domain names, as notified by CAC to the Complainant.
   
   
3. The registration services for the disputed domain names suggest a link in management and control.
   
   
4. Consolidation would be fair and equitable to all parties, as it prevents unnecessary duplication of proceedings and ensures consistent findings regarding domains that are clearly related in use and ownership.

The Respondents have not disputed the Complainant's assertions of common control or provided any explanation for the similarities identified.

Having regard to all the relevant factors, the Panel is persuaded that the evidence points to a single entity, i.e. “Shan Xun Yang”, who controls the disputed domain names.

The Panel considers it would be procedurally efficient, fair, and equitable to all parties given that these websites are essentially the same as the Complainant’s official website.

Accordingly, the Panel finds that by the preponderance of the evidence adduced in support of consolidation and determines that consolidation into a single complaint is appropriate in this case.

Language of the proceedings

According to the information provided by the Registrars, one the language of the Registration Agreement is in English and the other is in Chinese.

Pursuant to Paragraph 11(a) of the Rules, unless otherwise agreed by the parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant requests the proceeding be conducted in English, despite both parties appear to be from China and likely understand the Chinese language.

In support of this request, the Complainant asserts the following factors to enliven the Panel’s discretion:

1. The Respondents created websites that are in the English language. This demonstrates an ability to understand, communicate and conduct business in English. As such, the Respondents would not be prejudiced by having English as the language of the proceeding.
2. Using English would facilitate the Panel in reading and understanding the proceeding thereby ensuring efficiency and clarity.
3. Paragraph 11(b) of the Rules provides a procedural basis for the request.

The Respondents have not filed any responses or objected to the use of English as the language of the proceeding.

After considering all relevant circumstances, the Panel, exercising its discretion, determines that English shall be the language of this administrative proceeding.

The Panel seeks to balance procedural efficiency with fairness to both parties considering the linguistic evidence presented and the need for timely resolution of the dispute.

Notification of proceedings to the Respondents

When forwarding a Complaint, including any annexes, electronically to the Respondents, paragraph 2 of the Rules states that CAC shall employ reasonably available means calculated to achieve actual notice to the Respondent.

Paragraphs 2(a)(i) to (iii) set out the sort of measures to be employed to discharge CAC's responsibility to achieve actual notice to the Respondents.

On April 15, 2025 the CAC by its non-standard communication stated as follows (omitting irrelevant parts):

CAC notified the Respondents about the administrative proceeding via available means of communication: e-mail notification; written notice; additional contact e-mail found on the disputed domain name website www.geekbarcn.com.

The written notice nor the delivery of the Complaint was never returned back to the Czech Arbitration Court. No other address for correspondence was found on the disputed domain names.

CAC received notifications that the e-mails sent (both in English and Chinese) to postmaster@geekbarsa.com and to postmaster@geekbarcn.com were returned back as undelivered. The e-mail notice was also sent to ledoms@outlook.com, ledomseo@outlook.com and to anti-counterfeits@geekbar.com, but CAC did not receive any proof of delivery or notification of undelivery.

No further e-mail addresses could be found on the disputed sites.

The Respondents never accessed the online platform.

Given the reasonable measures employed by CAC as set out in the above non-standard communication, 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.

The Complainant is a Chinese company established in 2016.

It develops, manufactures, and sells disposable electronic cigarette products under the “GEEK BAR” trademark, which is registered in multiple jurisdictions, including the European Union, United States of America, China, and under the Madrid system.

Its trademark registration dates predate the creation of the disputed domain names.

It is a leading global brand with significant market presence in Russian, the United States, the Middle East, and other regions.

The disputed domain names were registered well after the Complainant established it trademark rights.

The Panel determines that:

• The disputed domain names incorporate the Complainant’s “GEEK BAR” trademark in its entirety with the addition of geographic indicators “sa” (Saudi Arabia) and “cn” (China). These disputed domain names resolve to websites that closely mimic or impersonate the Complainant’s official website, making it difficult for consumers to distinguish between the Respondents’ website and the Complainant’s legitimate online presence. The inclusion of the geographic indicators does not prevent a finding of confusing similarity, particularly when the “GEEK BAR” trademark remains recognisable within the disputed domain name.
  
  
• The Respondents are not known by the disputed domain names. They are not affiliated with the Complainants nor have not been authorised or licensed to use the “GEEK BAR” trademark. There is no other evidence that the Respondents hold any rights in “GEEK BAR”. The Respondents use of the disputed domain names to operate websites that mimic or impersonate the Complainant’s official website, including product authentication features, does not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use.

• The Respondents registered the disputed domain names with knowledge of the Complainant’s prior rights in the “GEEK BAR” trademark, given the trademark’s distinctive and global reputation. The Respondents’ use of the disputed domain names to operate websites that closely mimic or impersonate the Complainant’s official website, including the use of identical branding and authentication processes, is evidence of an intent to attract, for commercial gain, internet users. This creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites.

• The consolidation of the proceedings concerning the disputed domain names is appropriate, given the evidence of common control by “Shan Xun Yang”.
• English is the appropriate language for these proceedings, despite one Registration Agreement being in Chinese, due to the evidence of the Respondents' familiarity with English (including English-language content in the disputed domain names and websites) and considerations of procedural efficiency.

Accordingly, the Panel finds that:

1. The disputed domain names <geekbarsa.com> and <geekbarcn.com> are confusingly similar to the Complainant's "GEEK BAR" trademark.
   
   
2. The Respondents have no rights or legitimate interests in respect of the disputed domain names.
   
   
3. The disputed domain names have been registered and are being used in bad faith.