U.S. Smokeless Tobacco Manufacturing Company LLC v. Above.com Domain Privacy
Claim Number: FA1007001336145
Complainant is U.S.
Smokeless Tobacco Manufacturing Company LLC (“Complainant”), represented by
Joel D. Leviton of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com>, registered with Above.Com Pty Ltd.
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 July 19, 2010.
On July 21, 2010, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. verified that Respondent is bound by the Above.Com Pty Ltd. 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@skoalbotherhood.com, postmaster@skoalbrothehood.com, postmaster@skoalbrotherhod.com, postmaster@skoalbrotherhoo.com, postmaster@skoalbrothrhood.com, postmaster@skoalbroherhood.com, postmaster@skoalbrootherhood.com, and postmaster@skoalcoupons.com by e-mail. Also on July 23, 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 20, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names are confusingly similar to Complainant’s SKOAL mark.
2. Respondent has no rights to or legitimate interests in the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names.
3. Respondent registered and used the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, has sold smokeless tobacco products since the 1800s. Complainant began using its SKOAL mark in 1934 in relation to some of its smokeless tobacco products. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL mark (e.g., Reg. No. 504,609 issued December 7, 1948).
Respondent registered the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names no earlier than February 16, 2008. The disputed domain names resolve to websites that contain hyperlinks to Complainant’s competitors in the smokeless tobacco industry or contain hyperlinks to third-party websites that offer unauthorized coupons for Complainant’s products.
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.
The Panel finds that Complainant established rights in its
SKOAL mark under Policy ¶ 4(a)(i), through Complainant’s
trademark registrations with the USPTO (e.g.,
Reg. No. 504,609 issued December 7, 1948).
The Panel further finds that Complainant is not required to register its
mark within the country that Respondent resides in,
Respondent’s <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names incorporate Complainant’s entire SKOAL mark. The disputed domain names add misspelled versions of the descriptive term “brotherhood,” which describes one of Complainant’s smokeless tobacco products, or the generic term “coupons.” The disputed domain names append the generic top-level domain (“gTLD”) “.com.” The Panel finds that additions of a generic term and a gTLD do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SKOAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names. Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Because Respondent failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under a Policy ¶ 4(c) analysis. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent failed to provide evidence and the Panel found no evidence in the record to suggest that Respondent is commonly known by the disputed domain names. To the contrary, Complainant provides evidence that Respondent is not commonly known by the disputed domain names. Complainant provides the WHOIS information which identifies the registrant of the domain names as “Above.com Domain Privacy,” which Complainant argues is not similar to the disputed domain names and does not indicate that Respondent is commonly known by the disputed domain names. Complainant further contends that Respondent is not authorized or licensed to use Complainant’s SKOAL mark. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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 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).
Respondent’s <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, and <skoalbrootherhood.com> domain names resolve to websites that contain lists of third-party hyperlinks to products and services that directly compete with Complainant’s smokeless tobacco products. The <skoalcoupons.com> domain name resolves to a website that features hyperlinks to third-party websites that offer unauthorized coupons for Complainant’s products. Respondent likely receives click-through fees from the aforementioned hyperlinks. The Panel finds that Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, and <skoalbrootherhood.com> domain names to resolve to websites that contain hyperlinks to smokeless tobacco products that compete with Complainant’s products. Respondent’s <skoalcoupons.com> domain name resolves to a website that features hyperlinks to third-party websites offering unauthorized coupons for Complainant’s products. Respondent’s use of all of the disputed domain names disrupts Complainant’s smokeless tobacco business by either redirecting Internet users to Complainant’s competitors or providing unauthorized coupons to Complainant’s products. The Panel holds that Respondent’s use of the disputed domain names disrupts Complainant’s business, which supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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 claims, and the Panel agrees, that Respondent receives click-through fees from the aforementioned hyperlinks. Based on Respondent’s use of the confusingly similar disputed domain names, Internet users may become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain names and resolving websites. Consequently, the Panel concludes that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); 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 [that] 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).”).
The Panel finds that Respondent registered and used the disputed domain names 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 <skoalbotherhood.com>, <skoalbrothehood.com>, <skoalbrotherhod.com>, <skoalbrotherhoo.com>, <skoalbrothrhood.com>, <skoalbroherhood.com>, <skoalbrootherhood.com>, and <skoalcoupons.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 30, 2010.
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