U.S. Smokeless Tobacco Manufacturing Company LLC v. Charlie Kalopungi
Claim Number: FA1010001350232
Complainant is U.S. Smokeless Tobacco Manufacturing Company LLC ("Complainant"), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA. Respondent is Charlie Kalopungi ("Respondent"), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copenhagensmokeless.com>, registered with MONIKER.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2010; the National Arbitration Forum received payment on October 4, 2010.
On October 5, 2010, MONIKER confirmed by e-mail to the National Arbitration Forum that the <copenhagensmokeless.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@copenhagensmokeless.com. Also on October 6, 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 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 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:
1. Respondent’s <copenhagensmokeless.com> domain name is confusingly similar to Complainant’s COPENHAGEN mark.
2. Respondent does not have any rights or legitimate interests in the <copenhagensmokeless.com> domain name.
3. Respondent registered and used the <copenhagensmokeless.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, has been in business since the 1800s and has used its COPENHAGEN mark since 1822 for its goods and services in the smokeless tobacco industry. Complainant holds multiple trademark registrations for its COPENHAGEN mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 520,387 issued January 31, 1950).
Respondent, Charlie Kalopungi, registered the <copenhagensmokeless.com> domain name on July 5, 2010. The disputed domain name resolves to a website featuring a directory of links to third-party websites, some of which directly compete with Complainant’s smokeless tobacco 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."
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 contends that it has established rights in the COPENHAGEN mark. Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal 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.”). Previous panels have also found that a complainant is not required to register its mark within the country of the respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds a trademark registration of the COPENHAGEN mark with the USPTO (e.g. Reg. No. 520,387 issued January 31, 1950). Therefore, the Panel finds that Complainant has established rights to its COPENHAGEN mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO.
Complainant contends that Respondent’s <copenhagensmokeless.com> domain name is confusingly similar to Complainant’s COPENHAGEN mark. The disputed domain name differs from Complainant’s mark only by the addition of the descriptive word “smokeless” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive word fails to properly distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s 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 <copenhagensmokeless.com> domain name is confusingly similar to Complainant’s COPENHAGEN mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <copenhagensmokeless.com> domain name. Previous panels have found that where complainant is able to make a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to 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.”). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests in the <copenhagensmokeless.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant alleges that Respondent has not presented any evidence that would support a finding that Respondent is commonly known by the disputed domain name. The Panel finds no evidence in the record that would provide a basis for finding the Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized or licensed Respondent to use or register the <copenhagensmokeless.com> domain name. The WHOIS information identifies Respondent as “Charlie Kalopungi,” which is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <copenhagensmokeless.com> 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 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); see also 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).
Respondent uses the <copenhagensmokeless.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. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website featuring links to Complainant’s 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 the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the 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 confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with 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 finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <copenhagensmokeless.com> domain name resolves to a website featuring links to third-party websites, some of which are in competition with Complainant’s tobacco business. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users searching for Complainant’s products may be redirected to the websites of competitors as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <copenhagensmokeless.com> domain name disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
The Panel infers that Respondent receives click-through fees from the previously mentioned hyperlinks. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and featured links. Respondent attempts to profit from this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain name constitutes 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 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).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copenhagensmokeless.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 10, 2010
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