U.S. Smokeless Tobacco Manufacturing Company LLC v. Ni Hao / Two Stooges LLC
Claim Number: FA1210001467723
Complainant is U.S. Smokeless Tobacco Manufacturing Company LLC (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA. Respondent is Ni Hao / Two Stooges LLC (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoalbros.com>, registered with MONIKER.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2012; the National Arbitration Forum received payment on October 17, 2012.
On October 18, 2012, MONIKER confirmed by e-mail to the National Arbitration Forum that the <skoalbros.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 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012 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@skoalbros.com. Also on October 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant asserts that it has been selling smokeless tobacco products since the 1800’s and that it introduced the SKOAL mark in 1934. Complainant notes that it owns numerous trademark registrations with the USPTO for the SKOAL mark (e.g., Reg. No. 504,609 registered Dec. 7, 1948). The Panel finds that Complainant’s trademark holdings with the USPTO are sufficient for Complainant to have rights in the SKOAL mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s purported location outside of the United States does not prevent a finding of rights in the mark under Policy ¶ 4(a)(i). 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).
Complainant also argues that Respondent’s <skoalbros.com> domain name is confusingly similar to the SKOAL mark. Complainant notes that Respondent has used the SKOAL mark entirely while adding the generic term “bros” and the gTLD “.com.” Complainant asserts that generic terms are not distinguishing features and gTLD’s are irrelevant under Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent’s <skoalbros.com> domain name is confusingly similar to the SKOAL mark under Policy ¶ 4(a)(i). 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 the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not authorized or licensed to use the SKOAL mark. Further, Complainant asserts that Respondent, “Ni Hao / Two Stooges LLC” per the WHOIS information, is not commonly known by the disputed domain name or the SKOAL marks. Absent any evidence to the contrary, the Panel agrees with Complainant and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also contends that Respondent is using the disputed domain name to display third-party links to various competing and non-competing websites for Respondent’s commercial gain. Complainant believes that Respondent is using the SKOAL mark in order to accomplish such a revenue-generating scheme, and that as such 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). The Panel notes that the links contained on the resolving website appear under headings such as, “Jake’s Mint Chew,” “Tobaccoless Chew,” “Rogers Bros Silver,” “Free Samples In Your Mail,” and others. 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant has proven this element.
Complainant claims that Respondent is a serial cybersquatter who has been the respondent in at least two other UDRP proceedings in which the respective domain names were transferred to the respective complainants. See AB Electorlux v. Ni Hao, Two Stooges LLC, D2011-1671 (WIPO Dec. 7, 2011); see also Intesa Sanpaola S.p.A. v. Ni Hao/Two Stooges LLC, D2011-1640 (WIPO Dec. 13, 2011). Complainant argues that Respondent’s pattern of registering infringing domain names in violation of UDRP Policy is evidence of Respondent’s bad faith registration and use of the disputed domain name in the instant proceeding. Prior panels have held that a respondent’s prior adverse UDRP proceedings can establish bad faith in the present proceeding under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Therefore, the Panel determines that Respondent has registered and is using the <skoalbros.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent has registered and is using the disputed domain name to redirect Internet users to Complainant’s competitors for commercial gain by intentionally attempting to attract Internet users to the resolving website by creating confusion with Complainant’s SKOAL mark. Complainant notes that Respondent is using the disputed domain name to send Internet users to Complainant’s competitors via such links in bad faith under Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent has also registered and is using the disputed domain name in bad faith 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).”).
Lastly, Complainant argues that Respondent registered the disputed domain name in bad faith because “there can be no question that Respondent is well aware of [Complainant’s] SKOAL marks. Respondent registered a domain name that incorporates the famous SKOAL mark in its entirety and has filled its website with revenue-generating links that relate to the tobacco industry.” Complainant also states that Respondent also had constructive knowledge of Complainant’s marks via the long standing federal trademark registrations that Complainant possesses. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoalbros.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 29, 2012
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