John Middleton Co. v. Above.com Domain Privacy
Claim Number: FA1007001337989
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 <blacknmildpits.com>, registered with ABOVE.COM PTY LTD.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2010.
On August 1, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <blacknmildpits.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@blacknmildpits.com by e-mail. Also on August 2, 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 September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <blacknmildpits.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark.
2. Respondent does not have any rights or legitimate interests in the <blacknmildpits.com> domain name.
3. Respondent registered and used the <blacknmildpits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Middleton Co., began offering pipe tobacco under the BLACK & MILD mark in 1977 and then cigars under the mark in 1980. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLACK & MILD mark (e.g., Reg. No. 1,103,566 issued on October 3, 1978).
Respondent registered the <blacknmildpits.com> domain name on September 19, 2009. The disputed domain name resolves to a directory website that displays links to third-party websites, some of which advertise or offer tobacco products in competition with 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."
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 asserts rights in the BLACK & MILD mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,103,566 issued on October 3, 1978). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the BLACK & MILD mark pursuant to Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). Furthermore, the Panel finds Complainant need not hold a mark with the trademark authority in the country in which Respondent operates. See 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 also asserts that Respondent’s <blacknmildpits.com> domain name is confusingly similar to its BLACK & MILD mark. In the disputed domain name, Respondent removes the spaces separating the terms in Complainant’s mark. Respondent also replaces the ampersand in Complainant’s mark with the letter “n” in the disputed domain name. Finally, Respondent adds the generic term “pits” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these slight alterations do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <blacknmildpits.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case demonstrating that Respondent lacks rights and legitimate interests in the <blacknmildpits.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. 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.”). Prior panels have interpreted a respondent’s failure to submit a response as evidence that the respondent lacked rights and legitimate interests. See 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.”). Despite Respondent’s failure to submit a Response, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information lists “Above.com Domain Privacy” as the registrant of the disputed domain name, which is not similar to <blacknmildpits.com>. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant avers Respondent lacks rights and legitimate interests because the <blacknmildpits.com> domain name resolves to a directory website that displays links to third-party websites, some of which advertise or offer tobacco products in competition with Complainant’s products. In Royal Bank of Scotland Group plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel held that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites. In addition, the panel in Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), found that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process. In this case, screen shots of Respondent’s resolving website show hyperlinks with titles such as “Black and Mild” and “Blacks and Mild.” Additionally, the hyperlinks contain descriptions that read “Shop for Cigars. Compare Prices, Buy & Save Online” and “Find Stores That Sell Black & Mild Here.” Moreover, Complainant contends Respondent profits from its use of the disputed domain name through the receipt of click-through fees. Based on the evidence in the record, the Panel finds Respondent uses the disputed domain name to operate a directory website that provides links to Complainant’s competitors in order to receive click-through revenue. Therefore, the Panel finds Respondent does not use the disputed domain name to make 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent uses the <blacknmildpits.com> domain name to resolve to a directory website that provides links to third-party competing websites. Consequently, the Panel finds Respondent’s disputed domain name disrupts Complainant’s business. Therefore, the Panel finds this behavior qualifies as registration and use in bad faith under 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 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).
Complainant contends Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s BLACK & MILD mark. Respondent also prominently displays Complainant’s mark on its resolving website. Finally, the Panel infers Respondent most likely uses its disputed domain name in order to profit from click-through fees. Therefore, the Panel agrees with Complainant’s argument. Accordingly, the Panel finds Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Complainant has satisfied 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 <blacknmildpits.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 7, 2010
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