WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puff Corporation d/b/a Puffco v. Wei Zhang

Case No. DCO2019-0036

1. The Parties

The Complainant is Puff Corporation d/b/a Puffco, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.

The Respondent is Wei Zhang, China.

2. The Domain Name and Registrar

The disputed domain name <puffco.co> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 24, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was established in 2013. It is a manufacturer of a variety of electronic vaporizer products, which it markets in the United States, Europe, Asia, Africa and Australia.

The Complainant is the owner of the following trademark registrations for the sign PUFFCO (the “PUFFCO trademark”):

- the trademark PUFFCO, registered in the United States with registration No. 4,856,420, registered on November 17, 2015 for goods in International Classes 30 and 34; and

- the trademark PUFFCO, registered in the United States with registration No. 4,945,314, registered on April 26, 2016 for goods and services in International Classes 34 and 35.

The Complainant’s official website is located at the domain name <puffco.com>.

The disputed domain name was registered on February 8, 2019. It resolves to a webpage containing various links to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name wholly incorporates and is identical to the Complainant’s PUFFCO trademark, and is confusingly similar to the Complainant’s principal domain name <puffco.com> through which it conducts its business.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. It submits that the Respondent is not authorized by the Complainant to use the disputed domain name, the Respondent is not known under it, and the disputed domain name, which wholly incorporates the Complainant’s PUFFCO trademark and is nearly identical to the Complainant’s primary domain name <puffco.com>, is being used to confuse and attract consumers to the Respondent’s click-through website for commercial gain. The Complainant adds that PUFFCO is an invented combination of the two English words “puff” and “company”, and as such, third parties would not legitimately choose this name unless seeking to create an impression of an association with the Complainant.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. It submits that the disputed domain name was chosen and registered to trade on the reputation and goodwill of the Complainant and its PUFFCO trademark, and is being used for financial gain to divert potential users away from the Complainant’s primary website at “www.puffco.com” and from its authentic PUFFCO brand goods and toward the Respondent’s website, which contains links to third-party commercial websites. The Complainant adds that the Respondent is a serial cyber squatter and has registered numerous domain names incorporating the trademarks or misspellings of trademarks of various companies.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response and has not made any comments on the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the PUFFCO trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.co” country code Top-Level Domain (“ccTLD”) section of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “puffco”. It is identical to the PUFFCO trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the PUFFCO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not authorized by the Complainant to use the disputed domain name, the Respondent is not known under it, and the disputed domain name, which wholly incorporates the Complainant’s PUFFCO trademark and is nearly identical to the Complainant’s primary domain name <puffco.com>, is being used to confuse and attract consumers to the Respondent’s click-through website for commercial gain. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is identical to the PUFFCO trademark, and the Panel notes the Complainant’s contention that it is an invented word. As summarized in Section 2.5.1 of the WIPO Overview 3.0, a domain name that is identical to a complainant’s trademark carries a high risk of implied affiliation. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In addition, the disputed domain name is identical to the name under which the Complainant does business and to the relevant part of the Complainant’s domain name <puffco.com>. The Respondent has not provided any explanation for its choice of a domain name and for its plans in connection with the use of the disputed domain name. In view of all the above, the Panel accepts as more likely than not that the registration by the Respondent of the disputed domain name was not a coincidence, but was made in view of the Complainant and its PUFFCO trademark, which was registered several years prior to the registration of the disputed domain name. The disputed domain name resolves to a website containing what appears to be pay-per-click links to various third party offers.

Taking the above into account, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its PUFFCO trademark, has registered the disputed domain name in an attempt to extract commercial gain by attracting Internet users and exposing them to various third party offers. In the Panel’s view, this conduct of the Respondent does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is identical to the PUFFCO trademark, to the name under which the Complainant does business and to its domain name <puffco.com>. This makes it likely that Internet users might be confused into believing that the disputed domain name and the associated website belong to or are affiliated to the Complainant. The disputed domain name resolves to a webpage that contains what appear to be pay-per-click links to various third party offers.

Taking the above into account and noting that the Respondent has not disputed it and has not provided any evidence to the contrary, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the PUFFCO trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online locations, by creating a likelihood of confusion with the Complainant’s PUFFCO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website of the products and services offered on the Respondent’s website, as per paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <puffco.co> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 6, 2019