U.S. Smokeless Tobacco Company LLC v. Chris Connors
Claim Number: FA1507001628830
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Chris Connors (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canna-skoal.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 16, 2015.
On July 14, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <canna-skoal.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 July 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2015 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@canna-skoal.com. Also on July 16, 2015, 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 August 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant sells smokeless tobacco products under the SKOAL mark.
Complainant holds a registration for the SKOAL trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,086,020, registered August 5, 1997).
Respondent registered the domain name <canna-skoal.com> on or about February 24, 2015.
The domain name is confusingly similar to Complainant’s SKOAL mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has never authorized or licensed by Complainant to use the SKOAL trademark in any form.
Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name does not resolve to an active web page.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. 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 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 as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 rights in the SKOAL trademark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <canna-skoal.com> domain name is confusingly similar to Complainant’s SKOAL trademark. The domain name contains Complainant’s mark in full, and merely adds the generic term “canna,” plus a hyphen and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark in forming the domain name do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark).
See also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see 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.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <canna-skoal.com> domain name, and that Complainant has never authorized Respondent to use the SKOAL trademark. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Chris Connors,” which does not resemble the domain name. On this record, we conclude that Respondent has failed to show that it has been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a UDRP complainant asserted that it did not authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has failed to use the <canna-skoal.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name does not resolve to an active web page. This failure to make any active use of the domain name from the time of its registration, in the circumstances here presented, demonstrates that Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name. It has therefore failed to show that it has acquired rights to or legitimate interests in the contested domain name as provided in Policy ¶¶ 4(c)(i) or 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence of record that Respondent has failed to make any active use of the <canna-skoal.com> domain name from the time of its registration. In the circumstances here presented, this stands as proof that Respondent both registered and now uses the domain name in bad faith. See, for example, Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding, under Policy ¶ 4(a)(iii), that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith).
The Panel thus finds that complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <canna-skoal.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 13, 2015
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