U.S. Smokeless Tobacco Company LLC v. Protection of Private Person / Privacy Protection
Claim Number: FA1610001697069
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Protection of Private Person / Privacy Protection (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoalcoupons.xyz>, registered with Registrar of Domain Names REG.RU LLC.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 12, 2016. The Complaint was received in both Russian and English.
On October 7, 2016, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <skoalcoupons.xyz> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 17, 2016, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of November 7, 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@skoalcoupons.xyz. Also on October 17, 2016, the Russian language 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
On November 09, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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
Policy ¶ 4(a)(i)
Complainant has rights in the SKOAL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,086,020, registered on August 5, 1997). Respondent’s <skoalcoupons.xyz> domain name is confusingly similar to the SKOAL mark because it contains the mark along with the generic term “coupons” and the generic top-level domain (“gTLD”) “.xyz.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <skoalcoupons.xyz> domain name as the available WHOIS information lists “Protection of Private Person / Privacy Protection” as Registrant and because Respondent is not authorized to use the SKOAL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is an adult oriented pornographic website.
Policy ¶ 4(a)(iii)
Respondent uses the <skoalcoupons.xyz> domain name in bad faith because the resolving website is an adult oriented pornographic website. Respondent registered the <skoalcoupons.xyz> domain name in bad faith because it did so while undoubtedly aware of Complainant’s rights in the SKOAL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <skoalcoupons.xyz> domain name was created on June 2, 2016.
Complainant, by and through its predecessors in interest and affiliated companies, is a company that manufactures and sells smokeless tobacco products sold at retail to adult consumers for many years.
Complainant has rights in the SKOAL mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 504,609 registered on December 7, 1948, Reg. No. 1,052,574 registered on November 9, 1976, Reg. No. 1,344,928 registered on June 25, 1985, Reg. No. 2,086,020 registered on August 5, 1997, Reg. No. 2,523,910 registered on January 1, 2002). Complainant acquired both commmon law and registered rights in its SKOAL tademark.
Respondent has registered the <skoalcoupons.xyz> domain name on June 2, 2016.
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 (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 has numerous registered trademarks comprising or containing its SKOAL mark for use with smokeless tobacco products, including several U.S. registrations that pre-date Respondent’s registration of the disputed domain name, many of which have become incontestable. In addition, Complainant has established strong common law rights in its SKOAL trademark by virtue of the undisputed long and continuous use of the mark in commerce since the 1930s. See Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum March 18, 2004) (citing Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 196 (1985) which reads as follows: “With respect to incontestable marks [15 U.S.C. § 1115(b)] provides that registration is conclusive evidence of the registrant's exclusive right to use the mark.”).
The disputed domain name incorporates Complainant’s SKOAL trademark in its entirety. The addition of the generic term “coupons” and the generic top-level domain does not add any distinguishing element. Indeed, it arguably adds to the confusing similarity. See, e.g., Revlon Consumer Products Corporation v. Domains by Proxy, Inc./ Brian Dean, WIPO Case No. 2010‑1742, Microsoft Corporation v. Thong Tran Thanh, FA 1653187, Forum Jan. 21, 2016 (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
It is now well established that 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 contends that Respondent has not been commonly known by the disputed domain name. WHOIS information indicates that Respondent is using a privacy service to shield its identity. Panel has held that a Respondent is not commonly known by a disputed domain name based on WHOIS information regarding use of a privacy service and a lack of evidence to the contrary. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). As Respondent has not disputed Complainant’s contention, and there is no evidence to indicate that it is commonly known by the disputed domain, the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii). Moreover Respondent is not a licensee of Complainant and Complainant has never authorized Respondent to register or use the disputed domain name or its mark SKOAL in any form.
The Panel also takes into account that Respondent’s registration and use of the disputed domain name for adult/pornographic content does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Furthermore, although given the opportunity, Respondent has not submitted any evidence in this case to demonstrate that Respondent made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. It is well established by previous authorities that the use of a trademark in a domain name resolving to a website consisting of adult or pornographic content fails to demonstrate any legitimate interest of Respondent in the disputed domain name. An example of this is Bayerische Motoren Werke AG v. Ivan Razin, WIPO Case No. D2005-0341, in which the Panel found that there was no legitimate interest in the respondent’s use of the domain name disputed in that case for pornographic website content. See also Dipaolo v. Genero, Claim No. FA203168 (Nat. Arb. Forum Dec. 6, 2003) ("Diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(i) and (iii).").
In the Panel’s view the above is more than sufficient to enable Complainant to succeed under this element. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submitted evidence, which shows that Respondent registered the disputed domain name long after Complainant registered its trademarks SKOAL. Therefore, it is suggestive of Respondent’s bad faith in these particular circumstances where the trademark, owned by Complainant, was registered long before the registration of the disputed domain name (See Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). See also Collegetown Relocation, L.L.C. v. John Mamminga, FA 95003 (Nat. Arb. Forum July 20, 2000) (“When registering domain names, Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name is confusingly similar to Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Complainant provided evidence showing that at the time the Complaint was filed, the disputed domain name resolved to an adult oriented pornographic website (See Exhibit 5 to the Complaint). The fact that Respondent has used the disputed domain name to operate an adult oriented pornographic website as shown in Complainant’s evidence is another indication of Respondent’s bad faith. (See Ty, Inc v. O.z. Names, WIPO Case No. D2000-0370; Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002‑0601; Six Continents Hotels, Inc v. Seweryn Nowak, WIPO Case No. D2003-0022). See also La Quinta Worldwide, LLC v. Andirich, AndiPerdana / WhoisGuard Protected, WIPO Case No. D2011-1684 (“The conduct of using Complainant’s trademark as part of a domain name in order to expose Internet users to material of a pornographic nature is evidence of bad faith.”).
At the time of this decision, the disputed domain name does not resolve to an active website. However, Respondent’s passive use of the disputed domain name indicates bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754). See also: “The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of Complainant’s marks, Respondent’s using of the disputed domain name with no conceivable explanation for doing so, Respondent’s former use of the disputed domain name for a website of an adult/pornographic content, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that Respondent’s registration and use of the disputed domain name is in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoalcoupons.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: November 23, 2016
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