John Middleton Co. v. Domain Administrator c/o Web Domain Names
Claim Number: FA1006001331886
Complainant is John
Middleton Co. (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blackmild.com>, registered with Moniker.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 25, 2010.
On June 30, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <blackmild.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker verified that Respondent is bound by the Moniker registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@blackmild.com by e-mail. Also on July 8, 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 August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "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. The domain name that Respondent registered, <blackmild.com>, is confusingly similar to Complainant’s BLACK & MILD mark.
2. Respondent has no rights to or legitimate interests in the <blackmild.com> domain name.
3. Respondent registered and used the <blackmild.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Middleton Co., began offering its BLACK & MILD brand of cigars and pipe tobacco in 1980 and 1977 respectively. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its BLACK & MILD mark, including:
Reg. No. 1,103,566 issued October 3, 1978
Reg. No. 1,177,552 issued November 10, 1981
Reg. No. 2,712,704 issued May 6, 2003
Reg. No. 2,813,121 issued February 10, 2004
Reg. No. 2,823,384 issued March 16, 2004
Reg. No. 3,180,616 issued December 5, 2006
Reg. No. 3,480,056 issued August 5, 2008
Respondent, Domain Administrator c/o Web Domain Names, registered the <blackmild.com> domain name November 16, 2002. The disputed domain name resolves to a website containing third-party pay-per-click hyperlinks, some of which resolve to Complainant’s competitors in the cigar and tobacco products 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in its BLACK & MILD mark
through its multiple trademark
registrations with the USPTO under a Policy ¶ 4(a)(i)
analysis. See Thermo
Electron Corp. v. Xu, FA
713851 (Nat. Arb. Forum July 12, 2006), and Metropolitan
Life Insurance Co. v. Bonds, FA
873143 (Nat. Arb. Forum
Feb. 16, 2007. Complainant holds numerous trademark registrations for the mark,
including:
Reg. No. 1,103,566 issued October 3, 1978
Reg. No. 1,177,552 issued November 10, 1981
Reg. No. 2,712,704 issued May 6, 2003
Reg. No. 2,813,121 issued February 10, 2004
Reg. No. 2,823,384 issued March 16, 2004
Reg. No. 3,180,616 issued December 5, 2006
Reg. No. 3,480,056 issued August 5, 2008
Moreover, in Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001), the panel held that the
UDRP Policy does not require that a complainant’s mark be registered in the
country in which the respondent operates.
Therefore, while Respondent operates in
Complainant further contends that Respondent’s <blackmild.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark. Respondent’s <blackmild.com> domain name removes the spaces separating the terms of the mark and also removes the ampersand from Complainant’s mark. In American International Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000), the panels found that spaces and ampersands were impermissible in a domain name and, as such, that a disputed domain name that removed the spaces or ampersand in the mark remained confusingly similar to the complainant’s mark. In this case, Respondent further appends the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. In Gardline Surveys Ltd. v. Domain Financial Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel determined that the addition of a gTLD is irrelevant because a top-level domain is a required element of any domain name. Based on the decisions of prior panels and the evidence in the record, the Panel finds that Respondent’s <blackmild.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark under a Policy ¶ 4(a)(i) analysis.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant also alleges that Respondent lacks rights and legitimate interests in the <blackmild.com> domain name. When Complainant makes a prima facie case to support its allegations, the burden of proof shifts to the Respondent to show that it does have such rights to or legitimate interests in the disputed domain name, pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights to or legitimate interests in the <blackmild.com> domain name. However, this Panel still examines the record to determine whether the evidence suggests that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not commonly known by
the <blackmild.com> domain
name. The WHOIS information identifies
the domain name registrant as “Domain Administrator c/o Web Domain
Names,” which Complainant contends is not similar to the <blackmild.com>
domain name. Respondent failed to
introduce any evidence to contradict Complainant’s contentions or to counter the
evidence in the record that demonstrates that Respondent is not commonly known
by the disputed domain name. In Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003), and Education
Broadcast Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007), the panels concluded that the respondents were not commonly known by
the respective disputed domain names based on the lack of similarity between
the WHOIS information and the disputed domain names and based on the
respondents’ failure to respond to the complainants’ allegations. The Panel agrees; Respondent is not commonly
known by the <blackmild.com> domain name under a Policy ¶ 4(c)(ii) analysis.
Complainant urges as well that Respondent uses the <blackmild.com> domain name to resolve to a website that contains third-party pay-per-click hyperlinks and that Respondent receives a click-through fee each time an Internet user clicks on one of the hyperlinks. The majority of these hyperlinks resolve to Complainant’s competitors in the cigar and tobacco product industry. Many panels have found that such conduct is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Skyhawke Technologies, LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (holding that respondent’s use of the confusingly similar disputed domain name to host a website that contained hyperlinks to competitors of the complainant was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii); Disney Enterprises, Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (use of a confusingly similar disputed domain name to provide pay-per-click hyperlinks was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Respondent has no rights to or
legitimate interests in the disputed <blackmild.com> domain name; Complainant satisfied the
elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly alleges that Respondent registered and used the disputed domain name in bad faith. Respondent uses the <blackmild.com> domain name to resolve to a website containing hyperlinks to Complainant’s third-party competitors and this disrupts Complainant’s business. Such conduct supports findings of bad faith registration and use. See St. Lawrence University v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that a respondent’s redirection of Internet users seeking information on a complainant to websites that compete with the complainant disrupts the complainant’s business and is proof of bad faith registration and use); Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (respondent’s use of a disputed domain name to provide links to a complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith under a Policy ¶ 4(b)(iii) analysis.
Complainant also contends that Respondent receives
click-through fees from the aforementioned pay-per-click hyperlinks. Previous panels have found that a
respondent’s use of a confusingly similar disputed domain name to resolve to a
website with pay-per-click links is an attempt to profit from Internet users’
confusion as to a complainant’s affiliation with the disputed domain name. 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”). Consequently, the Panel finds that Respondent’s
use of the <blackmild.com> domain
name supports findings of bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds that
Respondent registered and used the disputed domain name in bad faith;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackmild.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 12, 2010.
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