U.S. Smokeless Tobacco Company LLC v. ZhuangLiangji / ZhuangLiangji
Claim Number: FA1602001660135
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is ZhuangLiangji / ZhuangLiangji (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoal.club>, registered with EJEE Group Holdings Limited.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2016; the Forum received payment on February 11, 2016.
After Commencement, on February 17, 2016, EJEE Group Holdings Limited confirmed by e-mail to the Forum that the <skoal.club> domain name is registered with EJEE Group Holdings Limited and that Respondent is the current registrant of the name. EJEE Group Holdings Limited has verified that Respondent is bound by the EJEE Group Holdings Limited 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 February 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2016 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@skoal.club. Also on February 17, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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:
1. Complainant is U.S. Smokeless Tobacco Company LLC, which has been selling smokeless tobacco products since the 1800s. Complainant is a leading manufacturer of smokeless tobacco products sold at retail, owning the SKOAL mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,052,574, registered Nov. 9, 1976). See Compl., at Attached Ex. 3. The <skoal.club> domain name is confusingly similar / identical to the SKOAL mark. The domain name contains Complainant’s mark in full and attaches the top-level domain (“TLD”) “.club” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <skoal.club> domain name. Further, Complainant has never authorized or licensed by Complainant to use the SKOAL trademark in any form. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a parked page with links to third parties, some of which directly compete with Complainant. See Compl. at Attached Ex. 7.
3. Respondent registered the disputed domain name in bad faith. Respondent is using the similarity between the <skoal.club> domain and the SKOAL mark to attract and profit from Internet users who believe the domain to be affiliated with Complainant. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
B. Respondent:
1. Respondent has failed to submit a formal Response.
1. Respondent’s <skoal.club> domain name is confusingly similar to Complainant’s SKOAL mark.
2. Respondent does not have any rights or legitimate interests in the <skoal.club> domain name.
3. Respondent registered or used the <skoal.club> domain name 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."
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(f), 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 is U.S. Smokeless Tobacco Company LLC, which claims it has been selling smokeless tobacco products since the 1800s. Complainant states that it is a leading manufacturer of smokeless tobacco products sold at retail, owning the SKOAL mark through the USPTO (e.g., Reg. No. 1,052,574, registered Nov. 9, 1976). See Compl., at Attached Ex. 3. Previous panels have found that registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark even if the mark is not registered in the country in which Respondent operates. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also 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). Therefore, the Panel concludes that Complainant’s valid registration of the SKOAL mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant alleges that the <skoal.club> domain name is confusingly similar to the SKOAL mark. The domain name contains Complainant’s mark in full and attaches the TLD “.club” to the domain name. The addition of a TLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenmas clouds Network Technology Co., Ltd., FA 1591256 (Forum Dec. 29, 2014) (finding that the gTLD “.club” is one of the new gTLDs and should be disregarded when determining if a disputed domain name is confusingly similar to a complainant’s mark). This Panel determines that the disputed domain name is confusingly similar / identical under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant insists that Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <skoal.club> domain name. The Panel sees that the WHOIS information for the disputed domain name refers to “ZhuangLiangji/ ZhuangLiangji” as the registrant of record. Further, Complainant claims that it has never authorized or licensed by Complainant to use the SKOAL trademark in any form. In view of Respondent's failure to submit a response, the Panel concludes that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. 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).
Complainant next contends that Respondent’s use of the domain, to resolve to a website displaying links to Complainant’s competitors’ products indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed <skoal.club> domain resolves to a webpage that displays various click-through advertisements with titles such as, “Herbal Chew,” “Grizzly Tobacco,” and “Copenhagen Snuff.” See Compl., at Attached Ex. 7. Panels have held that using a disputed domain to sell a complainant’s or a complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”). This Panel thus concludes that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent uses the disputed domain name to redirect Internet users to its own website, through which Respondent purportedly hosts hyperlinks to businesses that compete with Complainant. See Compl., at Attached Ex. 8 (links include, “Herbal Chew,” “Grizzly Tobacco,” and “Copenhagen Snuff”). Typically, panels have treated such behavior as an indication of a respondent’s bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent has engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Additionally, Complainant alleges that Respondent’s use of the confusingly similar disputed domain name to attract confused Internet users to its own website at which Respondent offers competitive hyperlinks, demonstrates Respondent’s bad faith according to Policy ¶ 4(b)(iv). Prior panels have agreed with similar arguments. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel agrees with Complainant’s argument here, and the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the SKOAL mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO and other Trademark organizations internationally. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoal.club> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 23, 2016
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