national arbitration forum

 

DECISION

 

U.S. Smokeless Tobacco Manufacturing Company LLC v. Ademar Aguiar

Claim Number: FA1106001395555

 

PARTIES

Complainant is U.S. Smokeless Tobacco Manufacturing Company LLC (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA.  Respondent is Ademar Aguiar (“Respondent”), Portugal.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skoala.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically June 24, 2011; the National Arbitration Forum received payment June 24, 2011.

 

On June 29, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skoala.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2011, 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@skoala.com.  Also on June 30, 2011, 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 July 26, 2011, 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 (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name that Respondent registered, <skoala.com>, is confusingly similar to Complainant’s SKOAL mark.

 

2.    Respondent has no rights to or legitimate interests in the <skoala.com> domain name.

 

3.    Respondent registered and used the <skoala.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, is a producer and distributor of smokeless tobacco products.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its SKOAL mark (e.g., Reg. No. 504,609 registered December 7, 1948).

 

Respondent, Ademar Aguiar, registered the <skoala.com> domain name August 10, 2006, at least some 58 years after Complainant established legal rights in the SKOAL mark.  Respondent’s disputed domain name resolves to a website that is parked with the registrar, which contains third-party links to websites in competition with Complainant. 

 

DISCUSSION

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 to 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.

 

Identical to and/or Confusingly Similar

 

The Panel notes that Complainant presented several trademark registrations with the USPTO for the SKOAL mark (e.g., Reg. No. 504,609 registered December 7, 1948).  Complainant has not presented evidence of any internationally held trademark registrations, but the Panel finds that so long as Complainant has rights in any jurisdiction, Complainant has satisfied Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); 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 urges that Respondent’s <skoala.com> domain name is confusingly similar to Complainant’s SKOAL mark. Adding the letter “a” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark.  The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity … pursuant to Policy ¶ 4(a)(i).”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant established its rights in the SKOAL mark and alleges that Respondent has no such rights or legitimate interests in the <skoala.com> domain name containing in its entirety the Complainant’s protected mark.  Complainant must make a prima facie case to support its allegations and then the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant established a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have rights or legitimate interests in the <skoala.com> domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). 

 

This Panel, however, still examines the record to determine whether evidence there suggests that Respondent does have rights or legitimate interests in the <skoala.com> domain name pursuant to Policy ¶ 4(c).

 

Complainant asserts that Respondent cannot show rights base on being commonly known by the disputed domain name.  Complainant submits the WHOIS information into the record, which identifies “Ademar Aguiar” as the registrant of the domain name.  Complainant argues that no evidence exists to show that Respondent is commonly known by the domain name, and Complainant maintains that it has not authorized Respondent to use its mark in any way.  The Panel finds that Respondent is not commonly known by the domain name under a Policy ¶ 4(c)(ii) analysis.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Complainant next urges that Respondent cannot show rights by the use of the domain name, contending that Respondent is using the disputed domain name to offer Internet users pay-per-click links to companies that sell smokeless tobacco and related goods in competition with Complainant.  Complainant’s screen shot evidence shows that the disputed domain name resolves to a website that is parked with the registrar, in this instance GoDaddy.com, Inc., which displays various third-party links under headings such as, “Thompson Tobacco,” “Online Smoke & Gift Shop,” and “Copenhagen.”  Therefore, the Panel finds that Respondent is not using the disputed domain name for 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also 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)).

 

The Panel finds that Respondent has not rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Lastly, Complainant urges that Respondent registered and is using the disputed domain name in bad faith. The Panel has already determined that Respondent is using the disputed domain name to resolve to a website that features third-party links to websites and businesses that sell goods in competition with Complainant.  The Panel further finds that such use of the confusingly similar domain name is also evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii), because such use will inevitably disrupt some of Complainant’s business.  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 EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Further, Complainant urges that Respondent is using the disputed domain name to intentionally create confusion on the part of Internet users in order to commercially profit.  Complainant contends that Respondent receives some form of compensation for hosting hyperlinks to Complainant’s competitors on its website.  The Panel finds that without evidence from Respondent refuting such a claim, Complainant’s evidence is sufficient to support findings that Respondent registered and is using the disputed domain name in bad faith 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Respondent registered and is using the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <skoala.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon Carolyn Marks Johnson, Panelist

Dated:  August 3, 2011.

 

 

 

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