U.S. Smokeless Tobacco Manufacturing Company LLC v. Purple Bucquet
Claim Number: FA1009001347423
Complainant is U.S. Smokeless Tobacco Manufacturing Company LLC ("Complainant"), represented by Leonard Searcy of Shook, Hardy & Bacon L.L.P., Missouri, USA. Respondent is Purple Bucquet ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoalchew.com>, registered with POWER BRAND CENTER CORP.
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 September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 28, 2010, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <skoalchew.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@skoalchew.com. Also on September 30, 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 November 2, 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant has been in business since the 1880’s and has used its SKOAL mark since 1934 for the marketing of its goods and services in the smokeless tobacco industry.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL trademark (including Reg. No. 504,609, issued December 7, 1948).
Respondent registered the <skoalchew.com> domain name on January 17, 2006.
The disputed domain names resolves to a website featuring links to third-party websites, some of which offer products in competition with Complainant’s tobacco business.
Respondent’s <skoalchew.com> domain name is confusingly similar to Complainant’s SKOAL mark.
Respondent is not commonly known by the <skoalchew.com> domain name, and Complainant has not authorized or licensed Respondent to use its mark or register the <skoalchew.com> domain name.
Respondent does not have any rights to or legitimate interests in the <skoalchew.com> domain name.
Respondent registered and uses the <skoalchew.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 the SKOAL trademark via its registration of the mark with a national trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); 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.
Moreover, Complainant is not required to register a mark within the country where Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <skoalchew.com> domain name is confusingly similar to Complainant’s SKOAL mark. The disputed domain name differs from Complainant’s SKOAL mark only by the addition of the descriptive term “chew” and the addition of the generic top-level domain (“gTLD”) “.com.” The addition to the domain name of a generic term, particularly one which is descriptive of Complainant’s business, fails to distinguish the disputed domain name from Complainant’s mark for purposes of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of a complainant combined with a generic word or term).
Similarly, the addition of a gTLD to Complainant’s mark in forming the contested domain name fails to distinguish the domain name from the mark. See 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.
Thus, the Panel concludes that Respondent’s <skoalchew.com> domain name is confusingly similar to Complainant’s SKOAL mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to or legitimate interests in the <skoalchew.com> domain name. Once a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain sufficient to satisfy Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we are to presume that Respondent does not have rights to or legitimate interests in the <skoalchew.com> domain name. 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.
We will nonetheless examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <skoalchew.com> domain name, and that Respondent is not authorized or licensed to use Complainant’s mark or to register the <skoalchew.com> domain name. Moreover, the pertinent WHOIS information identifies Respondent only as “Purple Bucquet,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also 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” was a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We also observe that there is no dispute as to Complainant’s allegation that Respondent uses the <skoalchew.com> domain name to redirect Internet users to a website containing links to third-party websites, some of which are competitors of Complainant in the smokeless tobacco industry. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to these links. Respondent’s use of the contested disputed domain name to operate a website featuring links to the websites of Complainant’s business competitors is not a bona fide offering of good or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with the business of that complainant did 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with the business of a complainant, 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)).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <skoalchew.com> domain name resolves to a website featuring links to third-party websites, some of which are in competition with Complainant’s tobacco business. Respondent’s use of the disputed domain name in this manner disrupts Complainant’s business because Internet users searching for Complainant’s products may be redirected to the websites of its commercial competitors as a result of Respondent’s use of the disputed domain name. This constitutes evidence that Respondent’s registration and use of the <skoalchew.com> domain name is in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain names to operate a commercial search engine with links to the products of a complainant and that complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent presumably receives click-through fees from the visits of Internet users to the hyperlinks described above. Internet users searching for Complainant may find themselves directed to Respondent’s website instead of Complainant’s because of Respondent’s use of disputed domain name. Internet users may then become confused as to the possibility of Complainant’s sponsorship of or affiliation with the disputed domain name, resolving website, and featured links. Respondent’s use of the disputed domain name thus constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by a complainant).
For each of these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <skoalchew.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page