Decision for dispute CAC-UDRP-108804

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, amongst others, of the following trademark registrations: 

- Chinese registration No. 32379735 for GEEK VAPE, filed on July 27, 2018 and registered on April 14, 2019 in class 34;

- Chinese registration No. 32417461 for GEEKVAPE, filed on July 23, 2018 and registered on April 6, 2019 in class 34;

- UK registration No. UK00917584368 for GEEKVAPE, filed on December 11, 2017 and registered on March 26, 2018 in class 34;

- EU registration No. 17584368 for GEEKVAPE, filed on December 11, 2017 and registered on March 26, 2018 in class 34;

- U.S. registration No. 5519058 for GEEKVAPE, filed on December 14, 2017 and registered on July 17, 2018 in class 34;

- Canadian registration No. 1147429 for GEEKVAPE, filed on February 2, 2019 and registered on October 25, 2022 in classes 9 and 34; and

- Swiss registration No. 767620 for GEEKVAPE, filed on August 5, 2021 and registered on August 9, 2021 in classes 34 and 35.

Founded in 2015, Shenzhen Geekvape Technology Co., Ltd ("the Complainant") has developed and marketed a broad portfolio of vaping devices and accessories under the GEEKVAPE mark, sold through its official website and authorized retail channels worldwide. In August 2021, the Complainant announced an investment of several billion yuan (approximately US$1.55 billion) to construct an intelligent manufacturing industrial park in the Guangdong-Hong Kong-Macao Greater Bay Area, with the support of the Shenzhen Municipal Government, as part of its long-term growth strategy to serve customers across more than 70 countries and regions.  

The Complainant informs that it has also maintained a consistent presence at major international trade exhibitions. At the World Vape Show held in Dubai in June 2022, an event attended by more than 1,000 exhibiting businesses and over 80,000 attendees, the Complainant showcased its full product range.

Furthermore, according to the Complainant, the GEEKVAPE's market position in the United Kingdom is corroborated by independent third-party survey data. Actually, a consumer survey conducted by YouGov and published in a report by Action on Smoking and Health (ASH) in August 2023 identified GEEKVAPE as one of the most preferred open-system vaping brands among UK consumers.

In addition, the Complainant's standing within the global vaping industry was recognized at the Vapouround Global Award, held in Birmingham, United Kingdom in May 2023 and widely regarded within the trade as "the Oscars of the global vape industry." Among approximately 650 participating vape companies, the Complainant was honored with the "Industry Leader" award, together with four additional awards for Best Tank MTL, Best Mod, Best Beverage, and Best Shisha Flavour.

In order to highlight the GEEKVAPE trademark’s global reputation, the Complainant also cites the partnership between the Complainant and Paris Saint-Germain Football Club, one of the world's most prominent professional football clubs. The Complainant first became an official partner of Paris Saint-Germain in 2021, and the partnership was renewed in January 2023, as confirmed on Paris Saint-Germain's official website and widely reported by international media.

The Complainant trademark registrations predate the registration of the disputed domain name <geekvapeshop.com> which was registered on December 6, 2023.

The Complainant submits that the disputed domain name <geekvapeshop.com> is confusingly similar to the Complainant's GEEKVAPE trademark. Actually, the Complainant outlines that the disputed domain name reproduces the Complainant's GEEKVAPE trademark in its entirety, followed by the term "shop." In the Complainant's view, the addition of this generic term does nothing to distinguish the domain name from the Complainant's mark.

The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Actually, according to the evidence submitted by the Complainant, the Respondent does not have trademark rights in names such as GEEKVAPE or GEEK VAPE SHOP. In addition, the Complainant informs that the Respondent is not connected to, nor affiliated with, Shenzhen Geekvape Technology Co., Ltd and that the same Respondent has never received license or consent to use the GEEKVAPE trademark. In addition, the Complainant argues that the Respondent has not used the disputed domain name for a bona fide offering of goods or services. In particular, the Complainant has demonstrated that the website formerly resolving at the disputed domain name, was structured, branded, and marketed as a dedicated online retailer of the Complainant's products. In particular, the site's homepage invited visitors to "BUY GEEKVAPES ONLINE" and "SHOP NOW," and featured extensive use of the Complainant's GEEKVAPE mark and product-line names throughout, including AEGIS, ZEUS, WENAX, OBELISK, L200, and T200, series names that correspond precisely to the Complainant's own official product lines. Furthermore, the website contains the following fraudulent statement: "Always ensure to purchase from authorized sellers like us to guarantee the authenticity of your GeekVape Aegis device".

The Complainant also submits that the Respondent registered the disputed domain name in bad faith. Actually, considering that the GEEKVAPE trademark is highly distinctive and was fairly well known at the time the disputed domain name was registered, the Complainant finds it very unlikely that the Respondent was unaware of the Complainant’s activities or of its GEEKVAPE mark on December 2023 when it decided to register the disputed domain name which merely combines the GEEKVAPE mark with the generic term "shop".

Further, according to the Complainant, the disputed domain name is being used in bad faith. In particular, the Complainant notes that, although the disputed domain name is currently inactive, it previously resolved to a website designed and built to lead internet users to believe that the respondent was an authorized seller of the Complainant's products. Said website provided no indication or disclaimer in a prominent manner clarifying that its operator was unaffiliated with the Complainant. In the Complainant’s view, such use of the disputed domain name was liable to mislead consumers into believing that the website was operated by, endorsed by, or otherwise connected with the Complainant, which was not the case. The Complainant also insists that currently the disputed domain name is inactive but that this circumstance does not prevent a finding of bad faith use under the doctrine of passive holding.

Finally, the Complainant notes that the WHOIS record for the disputed domain name was privacy-protected at the time of filing. According to the Complainant, while the use of a privacy service is not in itself indicative of bad faith, it is a further circumstance to be properly considered in the totality of the evidence set out above.

The Complainant´s contentions are summarized above.

No administratively compliant Response has been filed.

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.

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name; the Complainant must prove that each of the following elements is present:

(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.

1) The Complainant has demonstrated rights, through both registration and use, on the GEEKVAPE trademark. The Panel finds that the disputed domain name <geekvapeshop.com> is confusingly similar to the GEEKVAPE trademark of the Complainant. Actually, the disputed domain name incorporates the said trademark of the Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). The word “shop” which is added in the disputed domain name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term, merely denoting the operation of the website as an online shop (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135). The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122). Therefore, the Panel finds that the disputed domain name <geekvapeshop.com> is confusingly similar to the GEEKVAPE trademark of the Complainant. The Complainant, therefore, succeeds on the first element of the Policy.

2) Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name.  Once such a prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Panel finds that the Complainant’s submitted evidence and allegations are sufficient to establish a prima facie case of the Respondent’s lack of rights and legitimate interests in the disputed domain name, also considering the fact that the Respondent had the chance to justify the registration and use of the disputed domain name, but failed to do so. According to the information provided by the Complainant and not contested, the Respondent is not commonly known by the disputed domain name nor authorized to use the Complainant’s trademark GEEKVAPE. For these reasons, the Panel takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name for the purpose of the second element of the Policy.

3) The disputed domain name was registered by the Respondent on December 6, 2023, and therefore, a few years after the Complainant obtained its first trademark registrations for GEEKVAPE and following the rapid success of the GEEKVAPE brand, as demonstrated by the evidence submitted by the Complainant. Shenzhen Geekvape Technology Co., Ltd has used the GEEKVAPE trademark worldwide and so intensively that it is impossible to believe that Respondent had no knowledge of the Complainant's trademark rights at the time of registration of the disputed domain name. Therefore, in the Panel's view, the disputed domain name <geekvapeshop.com> has been registered in bad faith. 

The Respondent used the disputed domain name to confuse internet users, by falsely associating the website at the disputed domain name with the Complainant. In particular, the Complainant has demonstrated that the domain name <geekvapeshop.com> resolved to a website which illustrated the Complainant’s product-lines, referred to by the names actually used by the Complainant; the Complainant’s logo was also displayed, and, most important, the following fraudulent text was readable: "Always ensure to purchase from authorized sellers like us to guarantee the authenticity of your GeekVape Aegis device". The Panel agrees with the Complainant that the creation of a website such as the one described above is specifically intended to mislead consumers and lead them to believe that the website is associated with the Complainant. In particular, the Panel observes that the pattern of behavior demonstrated by the Respondent, involving the use of the disputed domain name to create misleading impressions of legitimacy and association with the Complainant, underscores a clear intent to exploit the Complainant's trademark for fraudulent purposes. Therefore, in the Panel's view, there is no evidence that Respondent registered the disputed domain name to provide a bona fide offering of its goods and services and the conduct described above constitutes a very clear case of bad faith use.

The disputed domain name is now inactive. This circumstance does not prevent a finding of bad faith use. Previous panels have held that the passive holding of a domain name can be considered as use in bad faith (see WIPO Case No. D2000-0003 <telstra.org> and WIPO Case No. D2011-0421<browns.com>).

Finally, the Panel also considers the Respondent’s registration through a privacy shield. In this perspective, the Panel's view, according to previous panels, is that the use of a privacy shield, once connected with additional elements, clearly points towards a registration and use in bad faith (see Groupe Auchan vs. Parapharmacie Marche, Xavier Marche, WIPO Case No. D2014-0925 and Trednet, Direct Distribution International Ltd (“DDI”) vs. WhoisGuard namecheap / BODYPOWER, WIPO Case No. D2012-2001). In the light of the above, the Panel considers that also the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.