Swisher International, Inc. v. TBS Cigar & Tobacco Sales
Claim Number: FA0802001143470
Complainant is Swisher International, Inc. (“Complainant”), represented by Sean
F. Kane, of Lucas & Mercanti LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swishersweetscigar.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2008.
On Feb 08, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <swishersweetscigar.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an
international cigar company founded in the
Complainant has become a
leading tobacco business, accounting for one-third of cigar sales in the
Complainant first began selling cigars under the SWISHER SWEETS mark in 1959 and has been using this mark in commerce continuously since its first use.
Complainant owns a trademark registration for the SWISHER SWEETS mark, issued by the United States Patent and Trademark Office (“USPTO”) (Reg. No. 735,560, issued Aug. 7, 1962).
Respondent registered the <swishersweetscigar.com> domain name on May 24, 2007.
Respondent’s domain name resolves to a website that, without authorization to do so, markets Complainant’s products in competition with the business of Complainant.
Respondent is not commonly known by the <swishersweetscigar.com> domain name or licensed to register domain names featuring Complainant’s mark.
Respondent’s <swishersweetscigar.com> domain name is confusingly similar to Complainant’s SWISHER SWEETS mark.
Respondent does not have any rights or legitimate interests in the domain name <swishersweetscigar.com>.
Respondent has registered and uses the contested <swishersweetscigar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the SWISHER SWEETS mark through its registration with the USPTO. Complainant has thus established rights in the
mark pursuant to Policy ¶ 4(a)(i). See Metro.
Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007)
(finding rights in the METLIFE mark as a result of its registration with the
Complainant contends that Respondent’s <swishersweetscigar.com> domain name is confusingly similar to Complainant’s SWISHER SWEETS mark. Respondent’s domain name contains Complainant’s mark in its entirety, and merely adds the term “cigar,” a term with a direct relationship to Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD and a generic term with a relationship to Complainant’s business is not a sufficient means of distinguishing Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
See also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding the domain name <bramblesequipment.com> confusingly similar to a competing mark because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with a complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that domain names that added the descriptive words "fashion" or "cosmetics" after a trademark were confusingly similar to that trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights to or legitimate interests in the <swishersweetscigar.com> domain name. Complainant’s assertion, taken together with the accompanying evidence, is sufficient to establish a prima facie case under Policy ¶ 4(a)(i). As a result, the burden shifts to Respondent to set forth evidence of rights or legitimate interests under the UDRP. See, for example, Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or interest exists); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent, for its part, has failed to respond to the Complaint. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the disputed domain name. See, for example, Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has any such rights or interests sufficient to satisfy the Policy.
We first observe in this connection that Complainant contends, and Respondent does not deny, that Respondent is using the <swishersweetscigar.com> domain name to operate a website that sells Complainant’s tobacco products without authorization to do so. Respondent’s use of the <swishersweetscigar.com> domain name as alleged is not one that establishes either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority is not bona fide use); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003): “Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”
Moreover, Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <swishersweetscigar.com> domain name or licensed to register domain names featuring Complainant’s mark. In light of this record and in the absence of evidence to the contrary, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests in a contested domain name where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <swishersweetscigar.com> domain name as alleged will likely cause confusion as to the possibility of Complainant’s sponsorship or affiliation with the resulting website. Moreover, Respondent is presumably profiting from this confusion by selling Complainant’s products. This is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that a respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that a complainant’s customers were likely to confuse with the source of that complainant’s products, especially because of the prominent use of that complainant’s logo on the site); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission and misled Internet users by implying that a respondent was affiliated with that complainant).
In addition, on the record before us, it is evident that Respondent had knowledge of Complainant’s rights in the SWISHER SWEETS mark at the time it registered the contested domain name. Registration of a domain name that is confusingly similar to a known trademark is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant’s mark and the content advertised on a respondent’s website was obvious, that respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002): “[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <swishersweetscigar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 18, 2008
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