U.S. Smokeless Tobacco Manufacturing Company LLC v. Jose Rodriguez
Claim Number: FA1007001334846
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
NAMES
The domain names at issue are <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.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 July 13, 2010.
On July 14, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 July 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@copenhagen-chew.com, postmaster@copenhagen-chewing-tobacco.com, postmaster@copenhagen-smokeless-tobacco.com, postmaster@copenhagen-snuff.com, postmaster@copenhagen-tobacco.net, postmaster@skoal-chew.com, postmaster@skoal-chewing-tobacco.com, postmaster@skoal-dip.com, postmaster@skoal-pouches.com, postmaster@skoal-smokeless-tobacco.com, postmaster@skoal-snus.net, and postmaster@skoal-tobacco.com by e-mail. Also on July 14, 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 11, 2010, 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 "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has sold smokeless tobacco products since the
1800s, having begun using its
Complainant began marketing smokeless tobacco under its SKOAL mark in the 1930s.
Complainant holds trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for its
Respondent registered the <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names on February 28, 2010.
All of the disputed domain names resolve to the website of an online smokeless tobacco retailer that sells products which compete with the business of Complainant.
Respondent’s <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>,
<copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>,
<copenhagen-tobacco.net> domain names are confusingly
similar to Complainant’s
Respondent’s <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names are confusingly similar to Complainant’s SKOAL trademark.
Respondent does not have any rights to or legitimate interests in any of the <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names.
Respondent registered and uses the <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are 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 has established rights in its
As
the [complainant’s] mark is registered with the USPTO, 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.” further see Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>,
<copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>,
<copenhagen-tobacco.net> domain names are confusingly
similar to Complainant’s
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Thus, the Panel concludes that Respondent’s disputed domain
names are confusingly similar to Complainant’s
Respondent’s <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names are likewise confusingly similar to Complainant’s SKOAL trademark. The disputed domain names add a hyphen to Complainant’s SKOAL mark, and include the generic terms “chew,” “chewing,” “tobacco,” “dip,” “pouches,” “smokeless,” or “snus,” which describe Complainant’s smokeless tobacco products. The disputed domain names further add the generic top-level domain (“gTLD”) “.com” or “.net.” As has already been noted with regard to the COPENHAGEN-related domain names discussed above, the additions of a hyphen, descriptive term, and a gTLD fail adequately to distinguish the disputed domain names from Complainant’s mark. See, for example, Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark); further see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Consequently, the Panel determines that Respondent’s disputed domain names are confusingly similar to Complainant’s SKOAL mark under Policy ¶ 4(a)(i).
Complainant has established prima facie that Respondent does not have any rights to or legitimate interests in any of the <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names. The burden thus shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
Respondent’s failure to respond to the Complaint allows us to conclude that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). However, we will examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name, nor is there any evidence that Complainant has authorized Respondent to use any of its trademarks in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of each of the contested domain names only as “Jose Rodriguez,” which does not resemble the disputed domain names. On this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of the contested domains pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence of that it was commonly known by the disputed domain name).
We also observe that there is no dispute as to complainant’s
allegation that Respondent uses the disputed domain names to resolve to
websites that contain a hyperlink to the website of a competitor of Complainant
in the marketing of smokeless tobacco products.
Respondent’s use of contested domain names for this purpose is not a bona fide offering good or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain names under Policy ¶
4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002):
Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to [a website]… where
services that compete with Complainant are advertised.
See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Each of Respondent’s <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>,
<copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>,
<copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>,
<skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>,
<skoal-snus.net>, and <skoal-tobacco.com>
domain names resolve to a website that contains a hyperlink to the website of
one of Complainant’s commercial competitors.
Internet users interested in Complainant’s products may thus purchase
products from Complainant’s competitor by virtue of Respondent’s use of the contested
domain names, each of which is confusingly similar to one of Complainant’s
trademarks. This use of the disputed
domain names disrupts Complainant’s business, which evidences bad faith
registration and use of the domains pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA
328159 (Nat. Arb. Forum Dec. 1, 2004): “Respondent
is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating
Complainant’s mark to refer customers seeking Complainant to Complainant’s
competitors is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
In the circumstances here presented, we are comfortable in presuming that Respondent benefits commercially by receiving click-through fees or similar income tracing to the visits of Internet users to the website resolving from any of the contested domain names. Because of Respondent’s use of disputed domain names confusingly similar to Complainant’s marks, Internet users may become confused as to the possibility of Complainant’s sponsorship of the disputed domain names and resolving websites. Respondent is thus attempting to profit from this confusion, which demonstrates bad faith registration and use of the domains pursuant to Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The
Panel infers that Respondent receives click-through fees for diverting Internet
users to a competing website. Because
Respondent’s domain name is identical to Complainant’s … mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s use of the [contested] … domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for Respondent’s commercial gain).
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 <copenhagen-chew.com>, <copenhagen-chewing-tobacco.com>, <copenhagen-smokeless-tobacco.com>, <copenhagen-snuff.com>, <copenhagen-tobacco.net>, <skoal-chew.com>, <skoal-chewing-tobacco.com>, <skoal-dip.com>, <skoal-pouches.com>, <skoal-smokeless-tobacco.com>, <skoal-snus.net>, and <skoal-tobacco.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 18, 2010
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