Swisher International, Inc. v. Peter Malandrinos
Claim Number: FA2011001921143
Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is Peter Malandrinos (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2020; the Forum received payment on November 18, 2020.
On November 19, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swishersweet.info, postmaster@swishersweets.info, postmaster@swishersweet.net, postmaster@swishersweet.org, postmaster@swishersweets.org. Also on November 30, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is an international cigar company founded in the United States in 1861. Today, Swisher is a leader in the tobacco business, accounting for one third of the nation's cigar sales and standing as America's largest cigar exporter.
Complainant has rights in the SWISHER SWEETS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> are identical or confusingly similar to Complainant’s SWISHER SWEETS mark as they are virtually identical and certainly confusingly similar to Complainant’s SWISHER SWEETS mark.
Respondent lacks rights or legitimate interests in the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names. Respondent is not commonly known by any of the at-issue domain names nor has Respondent been authorized by Complainant to use the SWISHER SWEETS mark. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent uses the domain names to misleadingly divert consumers to links offering competitive products. Such use also tarnishes the SWISHER SWEETS mark.
Respondent registered and uses the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names in bad faith. Respondent uses the SWISHER SWEETS mark to display links to products that compete with Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights to the SWISHER SWEETS mark prior to registering the at-issue domain names based on Respondent’s use of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SWISHER SWEETS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its SWISHER SWEETS trademark.
Respondent registered and uses the at-issue domain names to divert internet users from Complainant’s official website to the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> website(s) where Respondent displays links to goods competing with products offered by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its SWISHER SWEETS mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names each consist of either Complainant’s entire SWISHER SWEETS trademark, or the mark with its trailing “s” removed. Each at-issue domain name is followed by a necessary top-level domain name. The differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish Complainant’s trademark from any of the domain name under Policy ¶ 4(a)(i).Therefore, the Panel finds that the at-issue domain names are each confusingly similar to Complainant’s SWISHER SWEETS mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent Policy ¶ 4(c) circumstances or other evidence supporting a finding of Respondent’s having rights or legitimate interests in an at-issue domain name Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at-issue domain name.
The WHOIS information for the at-issue domain names identifies the domain names’ registrants as “Peter Malandrinos” and there is no evidence in the record which suggests that the Respondent is known by one or more of at-issue domain names. Therefore, the Panel concludes that under Policy ¶ 4(c)(ii) Respondent is not commonly known either at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Furthermore, Respondent uses the confusingly similar or trademark identical <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names to divert internet users who falsely associate one of the confusingly similar domain names with Complainant to the domain name’s related website; a website controlled by Respondent offering links to products that compete with Complainant’s products. Respondent’s use of the confusingly similar at-issue domain names to address websites offering links to products that compete with Complainant’s trademark and/or may additionally tarnish Complainant’s trademark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also, Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of either at-issue domain name.
Respondent’s <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which support a finding that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to divert internet users to one of the at-issue domain name’s website where links to products that compete with those products offered by Complainant. Such use of the confusingly similar domain names demonstrates Respondent’s bad faith registration and use of the domain names pursuant to both Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the at-issue domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Additionally, Respondent had actual knowledge of Complainant’s rights in the SWISHER SWEETS mark when it registered <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent offering of goods and/or services competing with those offered by Complainant via the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> website(s) as discussed above. Respondent’s registration and use of its confusingly similar domain names with prior knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); See also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swishersweet.info>, <swishersweets.info>, <swishersweet.net>, <swishersweet.org>, and <swishersweets.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2020
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