Decision for dispute CAC-UDRP-107541

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

Imiracle (Shenzhen) Technology Co., Ltd., the subject of the Complaint 1 in this case, was established in 2017. Imiracle (HK) Limited, the subject of the Complaint 2 in this case, was established in 2022. The above two companies are the trademark holders of the ELF BAR brand and are responsible for the day-to-day operations of the ELF BAR brand. The business licenses of Complainant 1 and Complainant 2, hereinafter collectively referred to as the Complainant.

The Complainant has filed trademark applications with the trademark offices of the countries and regions in which the Complainant has frequent business activities. To date, the Complainant owns the rights to the ELF BAR trademark in several countries. In particular, the Complainant is the owner of the following trademarks, which were registered long before the registration of the disputed domain names:

UK Registration Number UK00003646223 for ELF BAR, effective date is October 15, 2021, designating goods and services in international classes 34. 

European Union Registration Number 018365272 for ELF BAR, effective date is May 19, 2021, designating goods and services in international classes 34. 

International Trademark Registration Number 1619099 for ELF BAR, effective date is July 22, 2021, designating goods and services in international classes 34. 

The registrant of the 14 disputed domain names is 1337 Services LLC. According to Section 4f of the Uniform Domain Name Dispute Resolution Policy, the complainant requested that the complaints be consolidated. According to the WHOIS database query results, the registration service agency is determined to be Tucows Domains Inc.

The Complainant is headquartered in Shenzhen and has branches in Shanghai, Hong Kong, the United States, Ireland and Germany. ELF BAR is a range of disposable vapes that, have become one of the most popular brands on the market. Like most other disposable vapes, they are pre-filled with e-liquid and usually contain a small single-use battery. The Complainant states that the ELF BAR is known for its fruity, sweet, candy-inspired e-liquids, with more than 30 flavors available across a range of 24 disposable device styles. To date, the Complainant's consumer base has covered dozens of countries around the world, with monthly sales of over 10 million units and over one million consumers.  

To date, the ELF BAR brand has reached over 50 countries on five continents. In some countries, between 2020 and 2022, the percentage of vapers using disposables rose from 6-7% to 45-50%. The Complainant states that much of that growth was due to brands like ELF BAR. ELF BAR has also been warmly embraced by younger vapers, which is evident on social media. The elfbar hashtag on TikTok had 1.5 billion views at the start of 2023. In the United States, the largest vape market in the world, ELFBAR became one of the most popular brands of disposable e-cigarettes in 2022. Distributor company Demand Vape claims to have sold more than $132 million worth of ELFBAR e-cigarettes in 2022. 

The disputed domain name <elfbarsau.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarsau, and the Complainant believes that the letter s is the plural form of elfbar and does not form a new meaning. Au is the abbreviation of Australia and is a common word.

The disputed domain name <elfbarsbr.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarsbr, and the complainant believes that the letter s is the plural form of elfbar and does not form a new meaning. Br is the abbreviation of Brazil and is a common word.

The disputed domain name <elfbarie.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarie, and the Complainant believes that ie is the abbreviation of Ireland and is a common word.

The disputed domain name <elfbarpl.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarpl, and the Complainant believes that pl is the abbreviation of Poland and is a common word.

The disputed domain name <elfbarsdk.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarsdk, and the Complainant believes that the letter s is the plural form of elfbar and does not form a new meaning. Dk is the abbreviation of Denmark and is a common word.

The disputed domain name <elfbarcl.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarcl, and the Complainant believes that cl is the abbreviation of Chile and is a common word.

The disputed domain name <elfbarpe.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarpe, and the Complainant believes that pe is the abbreviation of Peru and is a common word.

The disputed domain name <elfbarsmx.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarsmx, and the Complainant believes that the letter s is the plural form of elfbar and does not form a new meaning. Mx is the abbreviation of Mexico and is a common word.

The disputed domain name <elfbarbe.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarbe, and the Complainant believes that be is the abbreviation of Belgium and is a common word.

The disputed domain name <elfbargr.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbargr, and the Complainant believes that gr is the abbreviation of Greece and is a common word.

The disputed domain name <elfbarit.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarit, and the Complainant believes that it is the abbreviation of Italy and is a common word.

The disputed domain name <elfbarse.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarse, and the Complainant believes that se is the abbreviation of Sweden and is a common word.

The disputed domain name <elfbarhr.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarhr, and the Complainant believes that hr is the abbreviation of Croatia and is a common word.

The disputed domain name <elfbarsco.com> removes the top-level domain name .com, and the remaining part of the disputed domain name is elfbarsco, and the Complainant believes that the letter s is the plural form of elfbar and does not form a new meaning. Co is the abbreviation of Colombia and is a common word.

The Complainant believes that commonly used words in the disputed domain names should not be subjected to a confusion comparison test with the Complainant's trademark. The disputed domain names completely contain the Complainant's ELF BAR trademark. The Complainant submits that the disputed domain names contain all or at least one of the main features of the Complainant's ELF BAR trademark and are likely to cause confusion.

According to WAYBACK MACHINE historical data, the content of the webpage pointed to by the above-mentioned disputed domain names is highly relevant to the Complainant's business, and the respondent did not indicate its relationship with the Complainant in a prominent position on the website, making it difficult for consumers to distinguish. The Complainant believes that the disputed domain names impersonate or imply the sponsorship or approval of the trademark owner, and do not constitute fair use.

The Complainant did not find that the Respondent had trademark rights in the name of ELF BAR. The Complainant has never directly or indirectly authorized the Respondent to use the trademark ELF BAR and the disputed domain names in any form.        

The Complainant believes that the ELF BAR trademark itself has acquired a high degree of distinctiveness through the Complainant's extensive use. As already mentioned, the content of the webpages pointed to by the above-mentioned disputed domain names are highly relevant to the complainant's business. The Complainant submits that the fact that the disputed domain names are identical or confusingly similar to the terms in which the Complainant has rights precludes the possibility that the Respondent may have accidentally chosen as a domain name a name that is identical or confusingly similar to the terms in which the Complainant has rights. If the Respondent did not know of the existence of the ELF BAR brand, it could not have operated a website with the same content as the Complainant's official website, and therefore, the Complainant conclusively establishes that the Registrant was aware of the existence of the Complainant's prior trademark rights at the time of registration of the disputed domain names.

The Complainant believes that the Respondent did not avoid the Complainant’s trademark when he knew or should have known the Complainant’s trademark, and the act of choosing to apply for the disputed domain names was malicious.

The website pointed to by the disputed domain names does not accurately and prominently disclose the relationship between the Respondent and the Complainant. The Respondent has directed the disputed domain names to websites related to the Complainant's business, the content of which also features the Complainant's ELF BAR trademarks on several occasions. The Complainant believes that the Respondent is using the disputed domain names intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of his website.

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.

The Complainant has, to the satisfaction of the Panel, shown 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.

A. Consolidation of the Proceeding

The Complainant requested that the present proceeding be consolidated to address all 14 disputed domain names in a single proceeding pursuant to Paragraph 4(f) of the Policy and Article 11 of the CAC UDRP Supplemental Rules.

The Complainant provided evidence that all 14 disputed domain names are registered by the same Respondent, 1337 Services LLC, as confirmed by WHOIS data. Furthermore, the domain names all follow an identical naming pattern, incorporating the Complainant’s ELF BAR trademark combined with a country abbreviation or pluralization. The registrants of the disputed domain names (Respondents) have different e-mail addresses in the WHOIS data (as verified by the Registrar).

The Panel finds that the disputed domain names are subject to common control and that it is procedurally efficient and equitable to consolidate the complaints. Consolidation will further ensure consistency of decision-making and avoid unnecessary duplication of proceedings.

In accordance with established UDRP practice and the discretion provided under Paragraph 4(f) of the Policy, the Panel therefore grants the request for consolidation and will render a single decision with respect to all 14 disputed domain names.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ELF BAR trademark.

The disputed domain names each incorporate the Complainant’s ELF BAR trademark in its entirety, followed by country abbreviations (e.g., "au," "br," "ie") or the plural form "elfbars," which does not create a new meaning and does not dispel the confusing similarity.

The addition of geographical or descriptive terms does not prevent a finding of confusing similarity (WIPO Overview 3.0, para. 1.8). The Complainant’s trademark remains clearly recognizable in all the disputed domain names.

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

C. Rights or Legitimate Interests

The Respondent is not authorized by the Complainant to use its ELF BAR trademark.

The Panel finds no evidence that the Respondent is commonly known by the disputed domain names, nor that the Respondent has acquired any trademark rights in ELF BAR.

The websites at the disputed domain names reproduced content highly relevant to the Complainant’s business, and the Respondent failed to prominently disclose its lack of affiliation with the Complainant, misleading consumers.

Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial use under Paragraph 4(c) of the Policy.

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

D. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and is using the disputed domain names in bad faith, for the following reasons:

1. Knowledge of the Complainant’s Trademark

The Complainant has demonstrated that ELF BAR is a globally recognized trademark with significant goodwill and presence in the international vaping market. ELF BAR products are sold in over 50 countries and rank among the most popular disposable vaping products worldwide.

The disputed domain names incorporate the Complainant’s trademark in its entirety. Given the fame of the ELF BAR brand, and the direct use of country codes corresponding to major ELF BAR markets, it is inconceivable that the Respondent was unaware of the Complainant’s prior trademark rights when registering the domain names.

2. Targeting of ELF BAR’s Global Markets

The deliberate choice of domain names such as <elfbarsau.com> (Australia), <elfbarsbr.com> (Brazil), <elfbarie.com> (Ireland), <elfbarit.com> (Italy), etc., demonstrates an intentional targeting of markets where ELF BAR is active. The combination of the Complainant’s trademark with country identifiers strongly suggests that the Respondent sought to exploit the Complainant’s brand recognition in each of these jurisdictions.

Prior panels have consistently found that registration of domain names incorporating a famous trademark together with a geographic term indicates a clear intent to target the trademark owner’s market and mislead consumers (see e.g., Red Bull GmbH v. Credit Du Nord / Hugo Chicha, WIPO Case No. D2015-2302).

3. Use of the disputed domain names to Mislead Consumers

The Respondent has used the disputed domain names to point to websites closely imitating the Complainant’s official websites and/or offering goods that appear to be ELF BAR products. The websites give no indication that they are unaffiliated with the Complainant, creating a likelihood of confusion among consumers.

Such use falls squarely within the example of bad faith provided in Paragraph 4(b)(iv) of the Policy: intentionally attempting to attract, for commercial gain, Internet users by creating confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement.

4. Pattern of Bad Faith Registration

The fact that the Respondent registered 14 disputed domain names following the same pattern (ELF BAR + country identifier) indicates a pattern of bad faith conduct rather than an isolated registration.

UDRP panels have frequently held that multiple domain registrations targeting a single complainant’s trademark constitute a pattern of bad faith (see e.g., LEGO Juris A/S v. WhoisGuard Protected / Aleksandr Strekalov, WIPO Case No. D2017-1420).

5. Likelihood of Consumer Harm

Given the widespread use of ELF BAR products and the growing importance of online sales in this sector, the Respondent’s conduct carries a high risk of causing actual consumer confusion and harm to the Complainant’s goodwill.

Consumers visiting the Respondent’s websites are likely to believe they are dealing with an official or authorized ELF BAR entity. The Respondent’s failure to provide any disclaimer of affiliation exacerbates this risk.

Taking all of the above factors into account—knowledge of the Complainant’s famous trademark, deliberate targeting of its key markets, misleading use of the domain names, pattern of bad faith registrations, and likelihood of consumer harm—the Panel concludes that the Respondent has both registered and used the disputed domain names in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.