Decision for dispute CAC-UDRP-108794

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 submitted evidence, which the Panel accepts, showing that it is the registered owner of the trademarks bearing “GEEK BAR”, inter alia, the following:

International trademark “GEEK BAR” n°1676896, registered on June 8, 2022;

United States trademark “GEEK BAR” n°6275589, registered on February 23, 2021;

European Union trademark “GEEK BAR” n°018225081, registered on August 26, 2020;

United Kingdom trademark “GEEK BAR” n°UK00003480964, registered on April 13, 2020.

The Complainant, Guangdong Qisitech CO., LTD., was founded in China in 2016. The Complainant has long been engaged in the research and development, manufacture, and global distribution of GEEK BAR disposable e-cigarette products, and has achieved substantial market penetration in Russia, the United States, the Middle East, and Europe.

The Complainant holds many registrations for the trademark GEEK BAR in multiple jurisdictions around the world since 2020, including in the United States of America, European Union, China, Peru.

The disputed domain name <geekbarofficialsite.com> was registered on November 15, 2023, and it is currently inactive.

COMPLAINANT:

THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR

The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark “GEEK BAR”, as it is included entirely in the disputed domain name and the addition of other terms does not prevent a finding of confusing similarity.

The Complainant also states that the top level “.com” does not differentiate the disputed domain name from the Complainant’s trademark.

Consequently, the Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark.

NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant asserts that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with or authorized by the Complainant to use its GEEK BAR trademarks. The Respondent is also not commonly known by the disputed domain name.

The Complainant states that the disputed domain name does not merely reference the Complainant's trademark, but it constitutes an act of impersonation, as the term "officialsite" conveys a single, unambiguous message that the website is the Complainant's official online presence. It is claimed that it is a factual representation as to the source and authority of the website, and that representation is false.

The Complainant further attends that the website resolving at the disputed domain name extends and confirms this false representation in comprehensive detail and provided the screenshot of the website shown at the date of preparing the Complaint in the annex. In accordance, the Complainant alleges that the site displays the Complainant's GEEK BAR logo prominently in its navigation bar (as the "GS GEEK BAR" mark), together with a full site architecture mirroring that of a legitimate brand website, including "Home," "About Us," "Shop," "Blog," and "Contact Us" navigation, and the site catalogues substantially the Complainant's entire product range—including the Geek Bar Pulse 15000, Pulse X 25K, Meloso Bar 30K, Digi Lush Box 20000, and Sky View 25000, together with numerous flavor variants—each listed with official-style product packaging imagery, retail pricing, and fully functional "Add to cart" buttons. It is also stated that on the website there is no disclaimer that it has no relationship with the Complainant.

The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The evidence presented suggests that the burden of proof now shifts to the Respondent to demonstrate their legitimate interest, which they have failed to do. Consequently, the Complainant claims that due to the Respondent's lack of legitimate rights and interests, the conditions set out in paragraph 4(a)(ii) of the Policy have been met.

THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The Complainant argues that the disputed domain name was registered and is being used in bad faith because the Complainant’s trademarks are well-known across the globe, and their reputation is well-documented. It was claimed that the very selection of "official" demonstrates a deliberate intent to position the domain name, from the moment of registration, as the Complainant's authoritative online destination.

The Complainant states that the website at the disputed domain name is not an incidental or peripheral use of the Complainant's mark but it is a comprehensively constructed retail environment built around the Complainant's brand identity, as the Complainant's GEEK BAR logo anchors the site's navigation bar and the homepage carousel displays official-style product artwork bearing the disputed domain name superimposed directly onto it, reinforcing the false impression that the domain is an authorized promotional channel of the Complainant. It is also claimed that the website reproduces substantially the entirety of the Complainant's product range with official-style packaging imagery, retail-level pricing, and add-to-cart functionality.

The Complainant further contends that a consumer who arrives at this website via the disputed domain name has already been told, by the domain name itself, that they are accessing the Complainant's official website. Every element of the website they then encounter—from the replicated logo to the full product catalogue, pricing, promotions, and customer testimonials— is claimed to confirm and sustains that false expectation without interruption, disclaimer, or qualification. It is stated that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website and the products offered through it in accordance with the Policy.

The Complainant submits that taken together, the incorporation of the word "official" alongside the Complainant's trademark in the disputed domain name itself; the construction of a website replicating the Complainant's visual identity, product portfolio, pricing structure, and retail functionality in comprehensive detail; and the deployment of an extensive array of consumer trust signals—discount promotions, FAQs, customer testimonials, and blog content—designed to simulate a genuine, established official retail operation, all without a single disclaimer, qualification, or disclosure of the Respondent's true relationship with the Complainant, constitute bad faith registration and use in the fullest and most unambiguous sense of paragraph 4(a)(iii) of the Policy.

RESPONDENT:

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 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

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

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

- the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

1. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the registered “GEEK BAR” trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s “GEEK BAR” trademarks and the addition of the term “OFFICIAL SITE” is not sufficient to vanish the similarity, as the trademark is clearly recognizable in the disputed domain name.

Moreover, the addition of the gTLD “.COM” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are met.

2. NO 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 domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent of the dispute is making a legitimate non-commercial or fair use of the domain name, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the disputed domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant’s GEEK BAR trademarks are well-known in its sector and the Complainant has been using its trademark for over 15 years, while the Respondent registered the domain recently without authorization. In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademark in the disputed domain name. Although the disputed domain name does not redirect to any website at the decision date and is inactive, it is understood from the annexes that even at some point, it was resolving to a website that reproduced the Complainant’s trademarks without authorization and seems that it misrepresented itself as the official website of the Complainant without any right. It is also worth noting that using the term “OFFICIAL SITE” with the Complainant’s trademark in the disputed domain name, without any authorization, license or affiliation, cannot be considered as legitimate interest.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. BAD FAITH

The Panel concludes that the Complainant's “GEEK BAR” trademark is of distinctive character and is well-known in its sector. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in well-known “GEEK BAR” trademark, the Respondent, was aware of the Complainant and its trademark at the time of registration of the disputed domain name (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, although at the time of the decision it is inactive, as it can be seen from the screenshots provided in the annexes by the Complainant, the disputed domain name seems to have resolved to a web page before that shows the use of GEEK BAR trademark on vape products, which are of the Complainant. The content and structure of the website is similar in overall look of the Complainant's official website and the Panel considers that it seems to be the result of intentional copying, clearly designed to mislead Internet users into believing that the website is an official website of the Complainant, also considering that the trademark is used with the term “OFFICIAL SITE” in the disputed domain name. Without any affiliation, license or authorization, using the trademark alongside the term “OFFICIAL SITE” cannot be considered in good faith and it is clearly misleading. The Panel considers that this should be evaluated under (iv) of paragraph 4(b), which is as follows: by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.