Decision for dispute CAC-UDRP-108741

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 is the owner of multiple trademark registrations incorporating GEEK BAR, including, inter alia:

• International Trademark Registration No. 1676896 for the mark GEEK BAR (word), registered on June 8, 2022 in class 34; and
• United States Trademark Registration No. 6275589 for the mark GEEK BAR (word), registered on February 23, 2021 in class 34; and
• European Union Trademark Registration No. 018225081 for the mark GEEK BAR (word), registered on August 26, 2020 in class 34.

The Complainant, established in 2016, is engaged in the research, development, manufacture, and international distribution of disposable electronic cigarette products under the GEEK BAR trademark. Since its establishment, GEEK BAR products have been marketed and sold in numerous jurisdictions, including the United Kingdom, the United States, countries in the Middle East, and other European markets, resulting in substantial market penetration and the development of a significant global customer base.

The Complainant has also operated domain name <geekbar.com>.

The disputed domain name was registered on September 29, 2024.  At the time of this Decision, the disputed domain name resolves to a commercial website prominently displaying the GEEK BAR trademark and logo, reproducing images of GEEK BAR-branded products, and featuring “Shop”, “Cart”, and “Checkout” sections through which such products are presented for sale.

The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

(1) the disputed domain name is confusingly similar to the Complainant’s trademark, since it incorporates the GEEK BAR mark in its entirety. The prefix "metamoon” and the omission of spaces between words is a technical necessity of the domain name system does not prevent confusion. The gTLD “.com” does not prevent the likelihood of confusion between the disputed domain name and the Complainant and its trademark;

(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name.  The Respondent is not affiliated with the Complainant, has no license or authorization to use the GEEK BAR mark, and is not commonly known by the disputed domain name. The Complainant also claims that the term “metamoon” refers to a specific flavor within the Complainant’s GEEK BAR Pulse product range, and its combination with the GEEK BAR trademark creates the impression that the disputed domain name leads to an official page dedicated to that product. The Complainant submits that this impression is reinforced by the associated website, which prominently reproduces the GEEK BAR trademark and logo, presents various GEEK BAR product editions, and uses promotional content without disclosing the Respondent’s lack of affiliation with the Complainant.  The Complainant also argues that the Respondent cannot rely on the reseller principles set out in Oki Data. Such conduct negates any claim of legitimate interests; 

(3) the disputed domain name was registered and is being used in bad faith. Registering the disputed domain name so obviously connected to a well-known mark without authorization is itself evidence of bad faith. Since the disputed domain name incorporates the Complainant’s GEEK BAR mark with the addition of the term “metamoon”, there is reason to believe that the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark. The disputed domain name resolves to a commercial website that prominently reproduces the GEEK BAR trademark and logo, product imagery, product names, and promotional content relating to various GEEK BAR Pulse editions. Such use of the disputed domain name creates the false impression that the website is an official or authorized GEEK BAR platform and is intended to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website.

The Complainant requests transfer of the disputed domain name.

The Respondent

The Respondent did not reply to the Complainant’s contentions.

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

To succeed, in a UDRP complaint, a complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which a complainant has rights;

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

3) that the disputed domain name has been registered or is being used in bad faith.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so.  Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.  The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. 

The Panel has taken note of the WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”) and, where appropriate, will decide consistent with the consensus views captured therein.

Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. 

The Complainant has demonstrated ownership of its GEEK BAR trademark in various jurisdictions. The Panel is therefore satisfied that the Complainant has valid registered trademark rights. See WIPO Overview 3.1, section 1.2.1.

With the Complainant’s trademark rights established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. As clarified in WIPO Overview 3.1, section 1.7, this element primarily serves as a standing requirement, and the test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s mark and the disputed domain name, focusing on whether the Complainant’s mark is recognizable within the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s GEEK BAR trademark, as it incorporates the Complainant’s mark in its entirety, with the only differences being the omission of the space between the words and the addition of the prefix “metamoon”. In accordance with WIPO Overview 3.1, section 1.8, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under the first element, as the Complainant’s mark remains clearly recognizable within the disputed domain name.

In line with established UDRP practice, the generic Top-Level Domain “.com” is disregarded when assessing confusing similarity. See WIPO Overview 3.1, section 1.11.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and the requirement under paragraph 4(a)(i) of the Policy is satisfied.

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 name.

While the overall burden of proof remains with the Complainant, UDRP panels have consistently recognized that requiring a complainant to prove a negative would often be impracticable, as the relevant evidence concerning a respondent’s rights or legitimate interests is typically within the respondent’s knowledge. Accordingly, once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to demonstrate such rights or legitimate interests under paragraph 4(c) of the Policy.

In the present case, the Complainant asserts that it has not authorized the Respondent to use its GEEK BAR trademark in any manner. The Panel further notes that the Complainant has established trademark rights in GEEK BAR and has confirmed that it has no relationship with the Respondent. The Respondent has not been authorized, licensed, or otherwise permitted to use the Complainant’s trademark. There is also no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The evidence before the Panel shows that the disputed domain name wholly incorporates the Complainant’s GEEK BAR trademark and are used to impersonate the Complainant. The Respondent’s website reproduces the Complainant’s trademark, logo, and the overall presentation of the Complainant’s official website, offering alleged GEEK BAR products for sale. At the time of this Decision, the disputed domain name resolves to websites presenting the Complainant’s products while prominently displaying the Complainant’s branding, thereby creating a false impression of affiliation or endorsement. Such use cannot constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor does it qualify as legitimate noncommercial or fair use without intent for commercial gain under paragraph 4(c)(iii). The manner in which the Respondent uses the disputed domain name indicates an intent to mislead consumers and to take unfair advantage of the Complainant’s reputation rather than to pursue any legitimate business purpose.

Should the Complainant’s products sold on the website to which the disputed domain name is directing Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have any rights or legitimate interests in using the disputed domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion.

According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.1, section 2.8.1, 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. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Even if the Respondent was offering the Complainant’s genuine products, the Panel finds that the manner in which the Complainant’s trademark and logo are used on the website, combined with the absence of any clear and prominent disclaimer, creates a misleading impression of affiliation. Such use is likely to lead Internet users to believe that the website is operated by, or at least affiliated with, the Complainant.

Accordingly, the Complainant has established a strong prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case or to provide any evidence demonstrating rights or legitimate interests under paragraph 4(c) of the Policy.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered and is being used in bad faith.

The Complainant’s GEEK BAR trademark registrations predate the registration of the disputed domain name.  The evidence shows that the Complainant’s trademarks were registered and had already gained substantial recognition well before the Respondent registered the disputed domain name in 2024.  The Complainant’s mark is distinctive and well known in manufacturing and international distribution of disposable electronic cigarette products.

The Respondent’s incorporation of the Complainant’s GEEK BAR trademark in its entirety, combined with the addition of the prefix "metamoon” and the gTLD “.com”, reinforces an impression of association with the Complainant.  This strongly indicates that the Respondent was fully aware of the Complainant and its reputation at the time of registration.  Given the distinctiveness of the mark and the Complainant’s extensive public presence, it is inconceivable that the Respondent independently selected the disputed domain name without prior knowledge of the Complainant.

By using the disputed domain name to operate websites that prominently display the Complainant’s GEEK BAR trademark, logo, and product imagery, the Respondent has created a clear likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of those websites.  Such conduct is inherently misleading and constitutes an intentional attempt to trade on the reputation and goodwill of the Complainant’s well‑known trademark.  Under paragraph 4(b)(iv) of the Policy, intentionally attracting Internet users for commercial gain by creating such confusion is a classic indicator of bad faith use.

The Respondent’s conduct also demonstrates deliberate concealment.  The website contained no imprint or identifying information, and the Whois record lists only the Registrar’s contact details rather than those of the actual registrant.  This intentional anonymity, coupled with the imitation of the Complainant’s website, clearly indicates an attempt to mislead Internet users into believing that the disputed domain name is operated by, or affiliated with the Complainant.

On the balance of the evidence, the Panel finds that the Respondent’s registration of the disputed domain name was motivated by the notoriety and goodwill of the Complainant’s GEEK BAR trademark.  The Respondent’s use of the disputed domain name to host a deceptive, imitation website constitutes a classic example of bad faith under paragraph 4(b)(iv) of the Policy, as it reflects a deliberate effort to exploit the Complainant’s mark to attract users under false pretenses.

Taken together, these circumstances demonstrate a deliberate and sustained effort by the Respondent to exploit the Complainant’s reputation and to mislead consumers for commercial gain.

Accordingly, the disputed domain name was both registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.