Anything Worldwide AB v Emir Joldic

WIPO Case No. DAU2022-0042

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Anything Worldwide AB v. Emir Joldic

Case No. DAU2022-0042

1. The Parties

The Complainant is Anything Worldwide AB, Sweden, represented by Cooper Mills Lawyers, Australia.

The Respondent is Emir Joldic, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <magicvaporizers.com.au> is registered with Web Address Registration Pty Ltd

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19,

2022. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On December 22, 2022, 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 .au Dispute Resolution Policy

(the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO

Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the paragraph 5(a), the due date for Response was January 17, 2023. The Center received an email communication from the Respondent on December 30, 2022. The Center notified the commencement of Panel appointment process on January 18, 2023.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 23, 2023. 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.

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4. Factual Background

The Complainant is an online supplier of dry herb vaporizers and related products. The Complainant was established in Sweden in 2013 and currently supplies products to 22 countries in Europe. The Complainant uses the domain names <magicvaporizers.com> and <magicvaporizers.co.uk> in connection with online

stores that prominently display the MAGICVAPORIZERS mark with a logo and offer the Complainant’s

vaporizers and related products for sale. According to website traffic data presented by the Complainant, during the three-year period prior to the registration of the disputed domain name the websites associated with these domain names received a combined total of over 272,000 visits, of which 1,878 visits were from Internet users based in Australia; and during the one-year period prior to the filing of the Complaint they

received a combined total of 416,000 visits, of which 2,964 visits were from Internet users based in Australia. and solutions for oral vaporizers for smokers, personal vaporizers, and electronic cigarettes in class 34. That trademark registration is currently in effect. The Complainant filed Australian trademark application number 2304347 for MAGICVAPORIZERS on September 29, 2022, specifying online retail services and other services in class 35. That trademark application is currently pending.

The Complainant holds European Union trade mark registration number 18588693 for

The Respondent is an individual resident in Brisbane, Australia. According to his website, he has over 10

years’ experience selling high-quality vaporizers. He registered the Australian business name “Magic

Vaporizers Australia” on September 3, 2021.

The disputed domain name was created on July 15, 2021. According to an archived screenshot presented by the Complainant, the disputed domain name has resolved to an online store selling dry herb vaporizers

and related products since at least December 15, 2021. At that time, the website was titled “Magic

Vaporizers Australia” while the About Us tab was titled “Magic Vaporizers”, to which it referred as the “Magic

Vapo Shop”, an online store based in the suburb of Brisbane where the Respondent resides. Lengthy

portions of text were reproduced from the Complainant’s website, including embedded hyperlinks to pages

on the Complainant’s website, with some changes (e.g. “Europe’s Best Vape Shop – MagicVaporizers” was

changed to “Australia’s Best Vape Shop – MagicVaporizers”; and the list of favorite products was partly

changed). At the present time, the website is titled “Magic Vaporizers” and prominently displays a “Magic

Vaporizers” logo different from the Complainant’s logo. The site is held out as an authorized seller of six

brands, most of which are sold by the Complainant. According to evidence presented by the Complainant,

the current contact email address on the website does not exist. There is no contact telephone number.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s registered European Union trade mark

MAGICVAPORIZERS. In light of the Complainant’s long-standing use of its MAGICVAPORIZERS mark, the

large volume of order received and fulfilled by the Complainant, and the substantial amount of traffic to the

Complainant’s website, it is clear that at the registration date of the disputed domain name and continuing to

the date of filing of the Complaint, the Complainant and its mark were well-known and enjoyed a substantial

reputation globally, including in Australia.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The

Complainant has no association, affiliation or other relationship with the Respondent. The Complainant has

not consented or granted any license to the Respondent to use the Complainant’s trademark or register the

disputed domain name. The Respondent is not commonly known by the disputed domain name. The

Respondent’s Australian business name in and of itself does not establish any rights or legitimate interests in

respect of the disputed domain name. The evidence that the contact email address shown on the

Respondent’s website does not exist calls into question the legitimacy of the online store and suggests that it

may be a sham. The Respondent has registered the disputed domain name with full knowledge of the

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Complainant and its trademark for the express purposes of, among other things, confusing and misleading

consumers, appropriating the Complainant’s reputation and preventing the Complainant from registering the disputed domain name in connection with its legitimate business. Accordingly, the Respondent’s use of the

disputed domain name in connection with his website cannot be considered bona fide.

The disputed domain name has been registered and is being used in bad faith. It is undeniable that the Respondent was aware of the Complainant, its business and trademark when it registered the disputed

domain name. The copying of the Complainant’s website content by the Respondent is incontrovertible

proof of this. The fact that the Respondent has used the disputed domain name in connection with an online
store offering the same type of products as those offered by the Complainant via its online stores, plainly

demonstrates that the Respondent has targeted the Complainant. Even if it is determined that the

Complainant’s reputation did not extend to Australia (which is not admitted), this does not preclude a finding

of bad faith on the part of the Respondent.

Further, the Respondent’s registration and use of the disputed domain name in circumstances where he had

knowledge of the Complainant and its trademark, and his use of the disputed domain name to publish

copyright-infringing material copied from the Complainant’s website, plainly breaches the warranty given by

the Respondent in paragraph 2 of the Policy.

B. Respondent

The Respondent informed the Center that he would not be available for any correspondence until he
returned from his Australian tour. His return to Brisbane is scheduled for the middle of August 2023. When

he returns home, he will properly respond regarding this incorrect accusation. Despite being off the road and

in the outback without Internet access, he is not ignoring the matter. He is on a long‐planned trip and cannot

make any changes.

6. Discussion and Findings

6.1 Preliminary Issues

A. Due Date for Response

The Respondent informed the Center that he was unavailable for any correspondence as he is on a tour,
which he expected to last at least six months. He did not request an extension of the due date to submit a
Response and did not submit any formal Response.

The Panel recalls that paragraph 10(c) of the Rules obliges the Panel to ensure that the administrative proceeding takes place with due expedition. Although that same paragraph of the Rules permits the Panel to extend, in exceptional cases, a period of time fixed by the Rules or by the Panel, the Panel sees no exceptional circumstances in this case, and no justification under the auDRP or the Rules for a delay as lengthy or open-ended as the Respondent envisages. However, the Panel will take into account the Respondent’s informal communication de bene esse pursuant to paragraph 10(a) of the Rules.

B. Language of the Proceeding

The Complaint was filed in English. The Respondent submits that he is a person from a non-English speaking background and that he will require assistance with translation and to seek legal advice if necessary. The Registrar confirmed that the Registration Agreement is in English.

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise

in the Registrant Agreement, the language of the administrative proceeding shall be the language of the Registrant Agreement, subject to the authority of the Panel to determine otherwise, having regard to the

circumstances of the administrative proceeding”. Paragraph 11(b) of the Rules provides that “[t]he Panel

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may order that any documents submitted in languages other than the language of the administrative

proceeding be accompanied by a translation in whole or in part into the language of the administrative

proceeding”.

The Panel notes that the Respondent entered into the Registration Agreement in English, that his website is in English, and that his informal communication was in English, all of which gives rise to the reasonable inference that he is able to communicate in that language. Translation of the Complaint would create unnecessary expense and delay the proceeding. Therefore, the Panel determines that the language of this proceeding is English and does not order that any document be accompanied by a translation.

C. Other Legal Proceedings

The Respondent requests the full name and contact details of the Complainant to take legal action against it.

The Panel recalls that, according to paragraph 4(k) of the auDRP, this mandatory administrative proceeding shall not prevent either Party from submitting the dispute to a court of competent jurisdiction for independent

resolution before this proceeding is commenced or after it is concluded. The Complainant’s name and

contact details are set out in paragraph 3 of the Complaint. The Panel has received no notice of the

commencement of other legal proceedings in connection with or relating to the disputed domain name.

6.2 Substantive Issues

Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.

The burden of proof of each element is borne by the Complainant.

A. Identical or Confusingly Similar

The Complainant provides evidence of its European Union trade mark registration for MAGICVAPORIZERS. demonstrate rights in a trademark for the purposes of the first element of paragraph 4(a) of the auDRP. See

Mass Nutrition, Inc. and Todd Rosenfeld v. Mass Nutrition Pty. Ltd. now known as Tweed Holdings Pty Ltd,

Luke McNally, WIPO Case No. DAU2010-0002. The Panel notes that the first element of paragraph 4(a) of the auDRP is phrased in the present tense and considers it sufficient for the purpose of this element that a

complainant’s trademark registration was in effect as of the date of filing the Complaint, as it was in the

Corporate Mobile Recycling Limited v. Mazuma Mobile Pty Ltd,

present case. See further WIPO Case No. mark.

The disputed domain name wholly incorporates the Complainant’s MAGICVAPORIZERS mark. Its only

additional element is a Second-Level Domain (“2LD”) extension. This element may be disregarded in an

assessment of confusing similarity between the disputed domain name and the trademark for the purposes
of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No.

DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the
Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide

use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the
[disputed] domain name in connection with an offering of goods or services (not being the offering of domain
names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or

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

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.

As regards the third circumstance set out above, the disputed domain name resolves to an online store.

That is a commercial use, not a legitimate noncommercial or fair use.

As regards the second circumstance set out above, the Respondent is named “Emir Joldic”. The

Respondent has registered the Australian business name “Magic Vaporizers Australia”, which is not an exact

match with the disputed domain name. In any case, the administrative act of registering a business name does not create in itself rights or legitimate interests in a domain name for the purposes of the Policy and there are few instances on the record where the Respondent has used his business name as registered. One instance was in the former title of his website but the website, at the same time, identified his business

as the “Magic Vapo Shop”. Another instance is at the bottom of his website’s current homepage but that

appears under the “Magic Vaporizers” logo. Although the Respondent uses “Magic Vaporizers” as a

business name on his website, there is no evidence on the record that he has been known by that name
anywhere else. Accordingly, the Panel is unable to find that the Respondent has been commonly known by

the disputed domain name.

As regards the first circumstance set out above, the disputed domain name, which is identical to the

Complainant’s MAGICVAPORIZERS mark, resolves to an online store prominently displaying “Magic

Vaporizers” as a business name. There is no other evidence that that name actually is the Respondent’s

business name. However, that name is aurally identical and visually almost identical to the Complainant’s

MAGICVAPORIZERS mark (to which it adds only a space), even though the Parties’ respective logos

contain different figurative elements. The Respondent’s website has also claimed that “MagicVaporizers” (as

one word, identical to the Complainant’s mark) is his online shop based in Brisbane. The Parties sell goods

of an identical type, including identical brands. The evidence presented shows that the Complainant’s

websites have generated considerable traffic, including visits from Internet users based in Australia, for years

before the Respondent registered the disputed domain name. In these circumstances, the Panel considers

that the Respondent’s use of the disputed domain name is likely to lead to confusion as to whether an

affiliation exists between the Respondent’s website and the Complainant. The Complainant submits that it

has no association, affiliation or other relationship with the Respondent and that it has not consented or granted any license to the Respondent to use its trademark or register the disputed domain name. The Panel takes note that the Respondent registered the disputed domain name in July 2021, three months before the Complainant filed its first trademark application in October 2021, and eight months before that

trademark was registered in March 2022. Nonetheless, the Panel infers that the Respondent has been well

aware of the Complainant all along because the archived screenshot in evidence shows that in December

2021 the Respondent’s website reproduced lengthy portions of text from the Complainant’s website,

including embedded hyperlinks to pages on the Complainant’s website. In all these circumstances, the

Panel infers that the Respondent has used the disputed domain name with the intention of exploiting the

value of the Complainant’s reputation and its mark. In view of these circumstances, the Panel considers that

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the Complainant has demonstrated that the Respondent’s use of the disputed domain name in connection

with an offering of goods is not bona fide.

The Panel notes that the disputed domain name contains two dictionary words, i.e., “magic” and

“vaporizers”. However, the Respondent’s website only uses “vaporizers” in a descriptive sense when it is not

qualified by “magic”. The combination “magic vaporizers” is not a common or dictionary phrase.

Even if the Respondent’s online store is a sham, which the Complainant merely suggests, that would not

generate rights or legitimate interests in respect of the disputed domain name.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the

Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent claims that the Complaint contains an incorrect accusation but he does not allege any

specific rights or legitimate interests that he has in respect of the disputed domain name. The Respondent’s

website claims that Magic Vaporizers Australia has been selling herb vaporizers for 10 years but there is no
evidence that he has used that or any similar name prior to 2021, and no evidence besides the website

associated with the disputed domain name since that time. Accordingly, the Panel finds that the Respondent

has not rebutted the Complainant’s prima facie case.

Therefore, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the auDRP uses the conjunction “or”, which indicates that the Complainant may satisfy

this element by showing either that the disputed domain name has been registered in bad faith, or that it has

been subsequently used in bad faith, without necessarily demonstrating both.

Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the

complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or

location or of a product or service on that website or location.

As regards use, the disputed domain name is identical to the Complainant’s MAGICVAPORIZERS mark,

which is registered. The disputed domain name resolves to an online store that prominently and repeatedly

displays a business name that is aurally identical and visually almost identical to the Complainant’s mark and

that is not the Respondent’s business name. The online store offers for sale goods of a type identical to

those sold by the Complainant, including identical brands. Even though the Complainant’s mark is not

registered in Australia, the Respondent is clearly aware of the Complainant because his website displays

lengthy portions of text cut and pasted from the Complainant’s website, including embedded hyperlinks to

pages on the Complainant’s website. Given these circumstances and the Panel’s findings in section 6.2B

above, the Panel finds that the Respondent, by using the disputed domain name, has intentionally attempted

to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the

Complainant’s mark as to the affiliation of that website and the products on that website within the terms of

paragraph 4(b)(iv) of the auDRP.

Therefore, the Panel finds that the disputed domain name has been used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.

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7. Decision

For all 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 <magicvaporizers.com.au> be transferred to the Complainant.

/Matthew Kennedy/

Matthew Kennedy

Sole Panelist
Date: February 6, 2023