Decision for dispute CAC-UDRP-108763

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 has evidenced to be the owner of the following trademark registrations relating to its GEEKBAR brand:

- word trademark GEEKBAR, United States Patent and Trademark Office (USPTO), registration No.: 6,275,589, registration date: February 23, 2021, status: active;

- word trademark GEEKBAR, European Union Intellectual Property Office (EUIPO), registration No.: 018225081, registration date: August 26, 2020, status: active.

The disputed domain name was first registered on August 31, 2024. It resolves to a website at “www.geekbar.store” which offers disposable vapes and related products, including the Complainant’s GEEKBAR vapes as well as RAZ vapes manufactured by a competitor of the Complainant on the vapes’ market. The website displays in its footer in small print letters: “All trademarks and copyrights are property of their respective owners and are not affiliated with nor do they endorse this product.”

The Complainant contends that the requirements of the Policy have been met and requests that the disputed domain name should be transferred to it. The Complainant stresses the fact that the GEEK BAR brand was launched prior to the registration of the disputed domain name and is currently operated by the Complainant, with GEEK BAR being the name of one of the most popular lines of disposable vapes on the market. Further, the Complainant submits that the disputed domain name is confusingly similar to the Complainant's GEEK BAR trademark, as the disputed domain name reproduces such trademark in its entirety and without modification. Also, the Complainant takes the view that the Respondent has no rights or legitimate interests with respect to the disputed domain name, inter alia, since the Respondent is not merely selling products thereunder adjacent to the Complainant's GEEK BAR trademark, but rather the Respondent is asserting, in its own words, that it is the ultimate destination for those products and that its stock is authentic. Finally, the Complainant argues that the structure of the website under the disputed domain name, taken as a whole, constitutes a confusion loop of the kind addressed by Paragraph 4(b)(iv) of the Policy which is why the Respondent has registered and is using the disputed domain name in bad faith.

The Respondent contends to operate a legitimate online retail business selling authentic vaping products and requests that the Complaint be denied. Also, the Respondent emphasized that the website under the disputed domain name was not limited exclusively to “Geek Bar” products but also offered a significant collection of RAZ disposable vape products, demonstrating that the website functioned as a multi-brand vape retailer rather than an official brand website.

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.

First, the Panel finds that the disputed domain name is identical to the Complainant’s GEEKBAR trademark, as it incorporates the latter in its entirety, with no additions or alterations whatsoever. Also, numerous UDRP panels have recognized that the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.store”) is viewed as a standard registration requirement and as such is usually disregarded under the first element identity/confusing similarity test. 

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not successfully challenged these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

The Respondent is neither affiliated with the Complainant, nor has it been authorized to use the Complainant’s GEEKBAR trademark, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name, and the Respondent does not appear to have any trademark rights associated with the term “geekbar” on its own. Finally, it is obvious and undisputed between the Parties that the disputed domain name resolves to a website at “www.geekbar.store” which offers disposable vapes and related products, including the Complainant’s GEEKBAR vapes as well as RAZ vapes manufactured by a competitor of the Complainant on the vapes’ market. Such use of the disputed domain name, however, and against the Respondent’s contentions, neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the UDRP, not even so under the so-called Oki Data test which would have required the Respondent e.g. to use the website under the disputed domain name to sell only the trademarked GEEKBAR goods which the Respondent expressly does not; also, and under the Oki Data principles, the Respondent would be required to disclose the non-existing business relationship between the Parties which, again, the Respondent obviously does not to a sufficient extent.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that, therefore, the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Finally, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith.

It is obvious from the circumstances of this case that the Respondent was well aware of the Complainant’s business in the vapes’ industry and its rights in the undisputedly reputed GEEKBAR trademark when registering the disputed domain name, and that the latter is directly targeting the Complainant and such reputed trademark. Moreover, resolving the disputed domain name to a website at “www.geekbar.store” which offers disposable vapes and related products, including the Complainant’s GEEKBAR vapes as well as RAZ vapes manufactured by a competitor of the Complainant on the vapes’ market, leaves no doubt that the Respondent, by registering and using the disputed domain name, had the intention to somehow profit from the reputation attached to the Complainant’s GEEKBAR trademark, and, thus, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s GEEKBAR trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s own website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).