Decision for dispute CAC-UDRP-107483

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns among others, the following trademarks:

- EUIPO Trademark for GEEK BAR (word mark), Reg. No. 018225081, registered on August 26, 2020, in IC 34, and in force until April 13, 2030;

- United States Trademark for GEEK BAR (word mark), Reg. No. 6275589, registered on February 23, 2021, in IC 34, and in force until August 27, 2031;

- International Trademark for GEEK BAR (word mark), Reg. No. 1676896, registered on June 8, 2022, in International Class (“IC”) 34, and in force until June 8, 2032;

- Chinese Trademark for GEEK BAR (word mark), Reg. No. 45380452, registered on January 7, 2021, in IC 34, and in force until January 6, 2031.

The Complainant is a Chinese company, established in 2016, focused on the technology development, production, sale of the disposable e-cigarette (vaper) GEEK BAR, and provides replacement solutions for users around the world. The Complainant is present, among other countries, in Russia, the United States, the Middle East, and Europe. The Complainant has an active presence across multiple social media platforms, including but not limited to Facebook, Instagram, Pinterest, Twitter/X, TikTok, YouTube, and Discord. The Complainant has also been part of industry exhibitions and has won many awards for its excellent product design, including  ‘Industry Game Changer’, by Hall of Fame Award at MENA Vape Awards 2023.

The Complainant’s trademark GEEK BAR has ten different disposable vape types as GEEK BAR the Pulse Series (Patriot, Pulse, and Pulse X); GEEK BAR Skyview, and the GEEK BAR Wondar, among others. The Complainant’s GEEK BAR products use dual-core technology, providing between 15,000 - 7,500 puffs and a long-lasting use experience.

The Complainant has its R&D division of labor, with more than 100 experienced senior R&D engineers specializing in basic product research, ID design, structure optimization, application of new materials, process processing, product testing, and upgrading, product project management, and patent application. In 2023, the Complainant spent £120 million on a new and sophisticated manufacturing complex located in the Zhuhai National High-Tech Industrial Development Zone in China's Guangdong Province for GEEK BAR distribution plans in the United Kingdom.

The Complainant’s official active website is https://www.geekbar.com/ which domain name was registered on September 30, 2006.

The Panel notes that the Complainant’s business activity and trademark, have been recognized by previous panels, see e.g.: Guangdong Qisitech CO., LTD. v. Paul Jones, CAC-UDRP Case No. 107390; Guangdong Qisitech CO., LTD. v. Xiao Chun Liu, CAC-UDRP Case No. 107372; and Guangdong Qisitech CO., LTD. v. Sagi Isaschar, CAC-UDRP Case No. 107449.

The disputed domain name <geek-barvape.com> was registered on June 17, 2024, and resolves to an active website that offers to sell GEEK BAR products and seeks to imitate the Complainant’s official website.  

1. The Complainant's Contentions:

• Concerning the first element of the Policy, in summary, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark GEEK BAR, which is recognizable, and it is completely contained in the disputed domain name.
  
  
• Concerning the second element of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Respondent’s website is similar to the Complainant's official website; that the Respondent has not indicated its relationship with the Complainant in a prominent area of ​​the website, which makes it difficult for consumers to distinguish; that the Complainant believes that the disputed domain name impersonates or implies sponsorship or recognition by the trademark owner and does not constitute fair use; that the Respondent is not in the identity of the Complainant’s distributor or partner; that the Complainant has never directly or indirectly authorized the Respondent to use the trademark GEEK BAR, including a as domain name or in any form.
  
  

• The Complainant contends that the disputed domain name has been registered and is being used in bad faith, given that before its registration, the Complainant´s trademark GEEK BAR was widely known, and its business activity well spread throughout the world; that therefore, the Respondent was aware of the Complainant’s existence and GEEK BAR trademark’s high degree of distinctiveness; that the Respondent's use of the disputed domain name to deliberately imitate the Complainant's GEEK BAR trademark and brand for profit is consistent with paragraph 4 (b)(iv) of the Policy.

2. The Respondent´s Contentions:

The Respondent according to paragraph 5 of the Rules, submitted its Administrative Response by its due date, on May 13, 2025.

The Respondent provided its Response as follows (without any Annexes and/or Evidence):

The Respondent's Arguments

The disputed domain name is not identical or confusingly similar to the Complainant’s trademark.

While the Complainant owns rights to the GEEK BAR trademark, the disputed domain name is <geek-barvape.com>, a combination of the terms "geek-bar" and "vape."

The addition of "vape" is significant in this context because it modifies the overall impression of the disputed domain name. UDRP precedent has recognized that where additional terms are present, the analysis should consider whether the addition creates a materially different commercial impression (See WIPO Case No. D2020-0453).

The term "vape" is generic and commonly used across the industry for vaping products. Therefore, <geek-barvape.com> refers more broadly to vaping products and does not exclusively target or imply affiliation with the Complainant.

Furthermore, "geek" and "bar" are both common dictionary words, and their combination does not inherently point exclusively to the Complainant. Several businesses use similar "geek" and "bar" combinations across industries unrelated to the Complainant (e.g., "Geek Bar" being a name for social venues, events, etc.).

Thus, there is no sufficient confusing similarity that warrants the transfer of the disputed domain name.

The Respondent has rights or legitimate interests in the disputed domain name.

The Respondent registered <geek-barvape.com> to create a vaping product review and promotion site focused on various vaping brands, not solely the Complainant’s products.

Before notice of this dispute, the Respondent used and prepared to use the disputed domain name in connection with a bona fide offering of goods or services under Paragraph 4(c)(i) of the UDRP.

The Respondent’s use is nominative fair use, which is a legitimate interest. UDRP panels have recognized that resellers, reviewers, and affiliates have legitimate interests when referring to a trademark accurately in offering or discussing genuine goods (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

There was no attempt to falsely suggest that the Respondent was the Complainant or that the Respondent was endorsed or sponsored by the Complainant. The site was intended to fairly describe and promote vaping products among many brands.

Importantly, the Respondent is not seeking to sell counterfeit goods, nor is the Respondent improperly using the Complainant’s brand in a way that would mislead consumers about source or sponsorship.

The disputed domain name was not registered and is not being used in bad faith.

The Respondent did not register the disputed domain name with the intent to sell, rent, or otherwise transfer it to the Complainant or a competitor for valuable consideration. Nor was there intent to prevent the Complainant from using its mark in a domain name.

The Respondent registered the disputed domain name to create a vaping-related informational site, not to create confusion, divert consumers, or damage the Complainant's business.

There is no evidence that the Respondent engaged in a pattern of registering domain names to prevent others from using their marks.

The mere fact that the Complainant’s mark appears in the disputed domain name, together with a generic term ("vape"), is insufficient to establish bad faith without evidence of actual confusion, commercial disruption, or misleading association—which the Complainant has not demonstrated.

UDRP panels have consistently emphasized that bad faith must be proven by concrete evidence, not by mere speculation (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Furthermore, the Complaint mischaracterizes the Respondent’s website. The website did not purport to be the official website of the Complainant but intended to review and discuss products in the vaping industry generally.

       Respondent´s conclusion:

The Complainant has failed to prove:

That the disputed domain name is confusingly similar to a mark in which the Complainant has rights;

That Respondent lacks rights or legitimate interests in the disputed domain name;

That Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Respondent requests that the Panel deny the Complaint and make a finding that there has been no bad faith registration or use.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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 name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is 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.

Preliminary Issue: The Respondent's Suspension Request 

The Panel notes that the CAC formally notified the Respondent of the Complaint on April 23, 2025 and that the administrative proceedings commenced on April 24, 2025. According to paragraph 5 of the Rules, the due date for the Response was May 13, 2025.

On May 9, 2025, the CAC sent a ‘Response Expiration Reminder’ to the Respondent. On the same date, according to paragraph 17 of the Rules, and article 11 of the CAC Supplemental Rules, the Respondent requested the Suspension of the Proceeding until May 23, 2025, ‘due to settlement negotiations commenced by the Parties’. The CAC requested the Complainant’s confirmation within the next three (3) business days, in the same communication. The Panel notes that no additional document, email, or any other proof of such negotiations between the parties was submitted by any of the Parties.

On May 13, 2025, the Respondent submitted its Response on the due date.

On May 13, 2025, the Complainant disagrees with the Respondent’s Suspension Request.

On May 13, 2025, the CAC acknowledged safe receipt of the Respondent’s Response.

In accordance with Paragraph 4(a) of the Policy, the onus is on the Complainant to prove:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The Panel will consider each of these requirements in turn.

1. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of having trademark rights over the distinctive and widely known term GEEK BAR. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

The disputed domain name <geek-barvape.com> reproduces the Complainant’s trademark GEEK BAR and the addition of a hyphen “-“ and the term “vape”; such alterations will not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See WIPO Overview 3.0, section 1.8.

Concerning the gTLD “.com”, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a technical requirement of registration. See WIPO Overview 3.0, section 1.11.1.

Therefore, the Complainant has satisfied the first element of the Policy.

2. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0, explains that:

“(…) a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate but will weigh all available evidence irrespective of whether a response is filed. (…) where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” (emphasis added).

In this case, the Complainant has not licensed or otherwise authorized the Respondent to use its trademark GEEK BAR, including as a domain name. Nothing in the records suggests that the Respondent is an ‘official retailer’ or has been authorized by the Complainant, as a possible distributor and/or about the existence of a prior agreement; neither the Respondent has come forward with such evidence.

The Respondent claims that:

-registered <geek-barvape.com> to create a vaping product review and promotion site focused on various vaping brands, not solely Complainant’s products.

- Respondent’s use is a nominative fair use, which is a legitimate interest. UDRP panels have recognized that resellers, reviewers, and affiliates have legitimate interests when referring to a trademark accurately in offering or discussing genuine goods (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

According to the evidence submitted the Respondent’s website is being used to offer and sell the Complainant’s products GEEK BAR. The Respondent built it, based on the Complainant’s trademark, including the Complainant’s official website material (e.g.: trademark logo, images, branding concept), and claimed to be an “OFFICIAL GEEK BAR RETAILER”.

Section 2.8.1 of the WIPO Overview 3.0, establishes the Oki Data Test, requirements:

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.” (emphasis added).

Concerning these elements the Panel finds that:

(i) the Respondent claimed: “registered geek-barvape.com to create a vaping product review and promotion site focused on various vaping brands, not solely Complainant’s products.”

(ii) no evidence has been put in front of the Panel to prove such condition, on the contrary, the Panel finds that the Respondent claims to be an: “Official GEEK BAR retailer” when according to the Complainant and the evidence is not.

(iii) no arguments and/or evidence has come forward concerning this requirement.  

In this case, to this Panel, is clear that the Respondent purposely selected a distinctive and widely known trademark GEEK BAR without the Complainant’s authorization, for its commercial benefit, which does not constitute a use in connection with a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the disputed domain name, as set out in paragraph 4(c)(i) and 4(c)(iii) of the Policy and furthermore do not comply with the Oki Data Test.

Therefore, the Complainant has satisfied the second element of the Policy.

3. Registered and Used in Bad Faith

Here, the Respondent registered the disputed domain name very well after the Complainant acquired trademark rights over the distinctive term GEEK BAR. Given the facts and evidence of this case, to this Panel, it is clear that the Respondent knew the Complainant’s business and trademark value at the time of the registration of the disputed domain name. See WIPO Overview 3.0, section 3.2.2.   

Concerning the bad faith use, according to the discussed facts, arguments, and submitted evidence, the Panel finds that the Respondent’s use falls within paragraph 4. (b)(iv) of the Policy. In addition, the disputed domain name resolves to a website that seeks to imitate the Complainant’s business activity.  Regarding that panels have held that the use of a domain name for illegal activity (here, claimed as impersonation, or other types of fraud), constitutes bad faith. See WIPO Overview 3.0, section 3.4. 

Therefore, the Complainant has satisfied the third element of the Policy.