John Middleton Co. v. Eric Johnson c/o blacknmild.net
Claim Number: FA1006001331178
Complainant is John
Middleton Co. (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blacknmild.net>, registered with Tucows, Inc.
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 June 22, 2010.
On June 22, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <blacknmild.net> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2010 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@blacknmild.net. Also on June 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 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" through submission of a Written Notice, as defined in Rule 1. 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 <blacknmild.net> domain name is confusingly similar to Complainant’s BLACK & MILD mark.
2. Respondent does not have any rights or legitimate interests in the <blacknmild.net> domain name.
3. Respondent registered and used the <blacknmild.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Middleton Co., manufactures and sells cigars and pipe tobacco. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”):
BLACK & MILD Reg. No. 1,103,566 issued Oct. 3, 1978;
BLACK & MILD Reg. No. 1,177,552 issued Nov. 10, 1981;
BLACK & MILD MILD Reg. No. 2,694,216 issued Mar. 4, 2003;
BLACK & MILD Reg. No. 2,712,704 issued May 6, 2003;
BLACK & MILD APPLE Reg. No. 2,810,707 issued Feb. 3, 2004;
BLACK & MILD APPLE Reg. No. 2,813,121 issued Feb. 10, 2004;
BLACK & MILD FAST BREAK Reg. No. 2,823,384 issued Mar. 16, 2004;
BLACK & MILD FAST BREAK Reg. No. 2,964,913 issued July 5, 2005;
BLACK & MILD MILD Reg. No. 2,969,631 issued July 19, 2005;
BLACK & MILD FT Reg. No. 3,180,616 issued Dec. 5, 2006;
BLACK & MILD FT Reg. No. 3,181,021 issued Dec. 5, 2006;
BLACK & MILD WINE Reg. No. 3,480,056 issued Aug. 5, 2008;
BLACK & MILD WINE Reg. No. 3,480,165 issued Aug. 5, 2008;
BLACK & MILD CREAM Reg. No. 3,480,310 issued Aug. 5, 2008;
BLACK & MILD CREAM Reg. No. 3,480,351 issued Aug. 5, 2008;
BLACK & MILD Reg. No. 3,401,306 issued Mar. 25, 2008; and
BLACK & MILD MILD Reg. No. 3,512,127 issued Oct. 7, 2008.
Respondent, Eric Johnson c/o blacknmild.net, registered the <blacknmild.net> domain name on February 10, 2010. The disputed domain name resolves to a portal website that features links to third-party websites offering tobacco, cigars, and cigar-related products in competition with 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."
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 owns numerous trademark registrations with the USPTO:
BLACK & MILD Reg. No. 1,103,566 issued Oct. 3, 1978;
BLACK & MILD Reg. No. 1,177,552 issued Nov. 10, 1981;
BLACK & MILD MILD Reg. No. 2,694,216 issued Mar. 4, 2003;
BLACK & MILD Reg. No. 2,712,704 issued May 6, 2003;
BLACK & MILD APPLE Reg. No. 2,810,707 issued Feb. 3, 2004;
BLACK & MILD APPLE Reg. No. 2,813,121 issued Feb. 10, 2004;
BLACK & MILD FAST BREAK Reg. No. 2,823,384 issued Mar. 16, 2004;
BLACK & MILD FAST BREAK Reg. No. 2,964,913 issued July 5, 2005;
BLACK & MILD MILD Reg. No. 2,969,631 issued July 19, 2005;
BLACK & MILD FT Reg. No. 3,180,616 issued Dec. 5, 2006;
BLACK & MILD FT Reg. No. 3,181,021 issued Dec. 5, 2006;
BLACK & MILD WINE Reg. No. 3,480,056 issued Aug. 5, 2008;
BLACK & MILD WINE Reg. No. 3,480,165 issued Aug. 5, 2008;
BLACK & MILD CREAM Reg. No. 3,480,310 issued Aug. 5, 2008;
BLACK & MILD CREAM Reg. No. 3,480,351 issued Aug. 5, 2008;
BLACK & MILD Reg. No. 3,401,306 issued Mar. 25, 2008; and
BLACK & MILD MILD Reg. No. 3,512,127 issued Oct. 7, 2008.
The Panel finds that these federal trademark registrations with the USPTO are conclusive evidence of Complainant’s rights in the BLACK & MILD mark for the purposes of Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <blacknmild.net> domain name is
confusingly similar to Complainant’s BLACK & MILD mark. In addition to appending the generic
top-level domain (“gTLD”) “.net,” the disputed domain name also eliminates the
spaces between the terms of Complainant’s mark and exchanges Complainant’s
ampersand for the phonetically similar letter “n.” The Panel finds that minor changes in the
spelling of Complainant’s mark, such as the removal of the ampersand and the
replacement with the letter “n,” do not affect the confusingly similar nature
of the disputed domain name under Policy ¶ 4(a)(i), especially when the
disputed domain name remains phonetically and visually similar. See
McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001)
(finding that the removal of the ampersand from “McKinsey & Company” does
not affect the user’s understanding of the domain name, and therefore the
domain name <mckinseycompany.com> is identical and/or confusingly similar
to the mark “McKinsey & Company”); see
also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum
July 15, 2004) (“Words that are spelled differently but are phonetically
similar do not negate the confusing similarity of Respondent’s domain name
pursuant to Policy ¶
4(a)(i).”) The Panel also finds that the
constraints of domain name formation cause the elimination of spaces and the
addition of the gTLD “.net” to be irrelevant to the Policy ¶ 4(a)(i) analysis. See Am.
Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In keeping with the requirements of Policy ¶ 4(a)(ii), Complainant has presented a prima facie case against Respondent’s rights and legitimate interests in the disputed domain name. The Panel deems this prima facie case to be sufficient to shift the burden to demonstrate rights and legitimate interests to Respondent. Respondent, however, has failed to carry this burden due to its failure to respond. The Panel accordingly infers that Complainant’s allegations are true and that Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). The Panel decides to consider the consider the full record, however, in light of the Policy ¶ 4(c) in order to determine whether there is a basis for finding rights and legitimate interests on the part of Respondent.
Complainant argues that Respondent is not commonly known by the <blacknmild.net> domain name because the WHOIS information does not indicate any nominal association between Respondent and the disputed domain name. The Panel finds this lack of evidence in the WHOIS information and the rest of the record supports a finding that Respondent is therefore not known by the disputed domain name and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant contends that Respondent redirects Internet users through its <blacknmild.net> domain name to a portal site that only displays links further directing Internet users to third-party sites. Complainant argues that these links are pay-per-click and that they carry Complainant’s intending customers to third-party websites that compete with Complainant by selling similar cigar- and tobacco-related products. The Panel finds that using the disputed domain name to facilitate competition with Complainant by way of pay-per-click links is not consistent with the bona fide offering of goods or services described by Policy ¶ 4(c)(i) or the legitimate noncommercial or fair use permitted by Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <blacknmild.net> domain name uses Complainant’s mark to advertise a variety of pay-per-click links to Complainant’s competitors in the cigar and tobacco industry. Complainant argues that this action is very disruptive to its business as the Internet users seeking a certain product from Complainant are confronted with a wealth of competing choices at Respondent’s disputed domain name. The Panel finds Respondent’s registration and use of the disputed domain name therefore indicates bad faith according to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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 argues that a key feature of the links advertised on Respondent’s <blacknmild.net> domain name is that they generate revenue for Respondent through click-through fees. Complainant alleges that Respondent employs Complainant’s mark in the disputed domain name in order to attract a certain subset of Internet users interested in cigar- and tobacco-related products and subsequently confuse or mislead them about the affiliation of Respondent’s website with Complainant. When these misled Internet users click on any of the displayed links, Respondent receives commercial gain from his diversionary scheme, at Complainant’s expense. The Panel finds Respondent’s activities in connection with the disputed domain name thus demonstrate bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds 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 <blacknmild.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 1, 2010
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