U.S. Smokeless Tobacco Manufacturing Company LLC v. Roiquest.com sprl
Claim Number: FA1001001303857
Complainant is U.S. Smokeless Tobacco Manufacturing Company LLC (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freshcop.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 20, 2010.
On January 20, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <freshcop.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 21, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 2010 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 postmaster@freshcop.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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:
1. Respondent’s <freshcop.com> domain name is confusingly similar to Complainant’s COPE mark.
2. Respondent does not have any rights or legitimate interests in the <freshcop.com> domain name.
3. Respondent registered and used the <freshcop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, is
an international manufacturer of smokeless tobacco products which has been in
existence since the 1800’s. Complainant
own numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the COPE mark (e.g., Reg. No. 1,294,826 issued September 11, 1984).
Respondent registered the <freshcop.com>
domain name
on May 5, 2004. Respondent’s disputed
domain name resolves to a website that displays third party links to commercial
websites offering products and services not related to Complainant’s business.
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 the 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:
(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.
Complainant has obtained multiple trademark registrations for the COPE mark with the USPTO (e.g., Reg. No. 1,294,826 issued September 11, 1984). The Panel finds that Complainant has established rights in the COPE mark for the purpose of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel further finds that the trademark registration need not be in the same country as Respondent for the purposes of Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the
disputed domain name <freshcop.com> is confusingly similar to
its COPE mark. Complainant contends that
the by adding the word “fresh” to the mark Respondent has not distinguished the
disputed domain name from the COPE
mark. The Panel finds that adding
generic words to a trademark does not make the disputed domain name distinctive
from the mark. See Warner Bros.
Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding
the addition of generic terms to Complainant’s HARRY POTTER mark in the
respondent’s <shop4harrypotter.com> and <shopforharrypotter.com>
domain names failed to alleviate the confusing similarity between the mark and
the domain names); see also Chanel, Inc.
v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient
feature of the Domain Names, is identical to a mark in which Complainant has
shown prior rights. The addition of the
generic term, “perfumes” is not a distinguishing feature, and in this case
seems to increase the likelihood of confusion because it is an apt term for
Complainant’s business.”). Complainant
further contends the disputed domain name is a common misspelling of the COPE
mark by removing the ‘e’ from the mark.
The Panel finds that misspelling the trademark does not distinguish the
disputed domain name from the mark. See Hallelujah
Acres, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these
allegations. Once the Complainant has
produced a prima facie case the
burden shifts to Respondent to show they do have a right or legitimate interest
in the disputed domain name. See Domtar,
Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It
is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb.
Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant, the burden then shifts
to the respondent to demonstrate its rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has established
a prima facie case. Due to the Respondent’s failure to respond to
these proceedings the Panel may assume Respondent does not have any right or
legitimate interest in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant further contends that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name identifies Respondent as “Roiquest.com sprl,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website that
displays click through links to websites offering goods or services that are
not related to Complainant’s business.
The Panel finds that Respondent’s use of the disputed domain name to
divert Internet users to third party websites not related to Complainant’s
business, presumably for financial gain, does not constitute 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). Constellation Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed
domain name to attract internet users to its website for commercial gain
disrupts Complainant’s business and is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). The
Panel finds that Respondent’s registration and use of the disputed domain name
constitutes bad faith because Respondent’s disputed domain name disrupts Complainant’s
business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent is using the disputed domain name to intentionally divert internet users to Respondent’s website which displays links to third party websites not related to Complainant’s business. In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s COPE mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshcop.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 5, 2010
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