U.S. Smokeless Tobacco Company LLC v. Charles Bienvenu / Got Domains 4 Sale, LLC
Claim Number: FA1602001661559
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Charles Bienvenu / Got Domains 4 Sale, LLC (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gotskoal.com>, <gotcopenhagen.com>, and <gothusky.com>, registered with GoDaddy.com, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2016; the Forum received payment on February 19, 2016.
On February 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gotskoal.com>, <gotcopenhagen.com>, and <gothusky.com> domain names (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@gotskoal.com, postmaster@gotcopenhagen.com, postmaster@gothusky.com. Also on February 22, 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.
A timely Response was received and determined to be complete on March 8, 2016.
On March 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it has rights in the SKOAL, COPENHAGEN, and HUSKY marks through its multiple registrations with the United States Patent and Trademark Office (“USPTO”), and through its continued and longstanding use of the marks in commerce. Complainant argues that the Disputed Domain Names are confusingly similar to Complainant’s marks because the Disputed Domain Names include the marks in their entirety, with the addition of the generic top-level domain (“gTLD”) “.com” and the generic term “got.”
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant contends that Respondent has not been commonly known by the Disputed Domain Names and that Respondent’s use of the Disputed Domain Names, to resolve to a passively-held parked website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Further, Complainant alleges that Respondent has registered and is using the Disputed Domain Names in bad faith. Complainant alleges that Respondent’s bad faith is evident from its willingness to sell the Disputed Domain Names, Respondent’s failure to make an active use of the Disputed Domain Names, and Complainant’s knowledge of Respondent’s rights in the SKOAL, COPENHAGEN, and HUSKY marks.
B. Respondent
Respondent claims to be a generic domain name reseller, and argues that it only purchased the disputed domains for the value of the generic terms in the domains. Respondent argues that the Disputed Domain Names are not identical or confusingly similar to Complainant’s marks, and that Respondent has rights or legitimate interests in the Disputed Domain Names, because the domains consist of generic terms with meanings that are not associated with Complainant’s marks or products. Respondent also argues that it did not register or use the Disputed Domain Names in bad faith because it has not used or begun to use the Disputed Domain Names in any manner. Respondent contends that its only action related to the Disputed Domain Names was to inform Complainant that Respondent would not use the Disputed Domain Names to infringe on Complainant’s trademarks and that Respondent would be willing to sell the Disputed Domain Names to Complainant.
Complainant, through its affiliates and predecessors in interest, has been selling smokeless tobacco products under the COPENHAGEN mark since 1822, under the SKOAL mark since 1934, and under the HUSKY mark since 2003. Complainant also owns United States trademark registrations for these marks: Incontestable Registration No. 504,609 for the mark SKOAL (stylized); Incontestable Registration No. 2,086,020 for the mark SKOAL; Incontestable Registration No. 1,052,574 for the mark SKOAL and Design; Incontestable Registration No. 520,387 for the mark COPENHAGEN (stylized); Incontestable Registration No. 2,086,026 for the mark COPENHAGEN; and Incontestable Registration No. 2,967,831 for the mark HUSKY.
Respondent registered the Disputed Domain Names on September 11, 2015. The WHOIS records for the Disputed Domain Names indicate that all three domains were registered within a period of three minutes. The Disputed Domain Names are currently inactive.
Complainant sent a cease-and-desist letter to Respondent on January 7, 2016. In response to the letter, Respondent informed Complainant that Respondent would not use the Disputed Domain Names to infringe on Complainant’s trademarks. Respondent also stated: “I can understand how the domains could be useful to the U.S. Smokeless Tobacco Company as part of a potential marketing campaign and as a way to measure the effectiveness of and interaction of cross-channel marketing campaigns. Should U.S. Smokeless Tobacco Company be interested in acquiring some or all of the related domains, I would be prepared to entertain an offer.”
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 this case, the Panel finds that Complainant has met each of the elements required by the Policy. In particular, the Disputed Domain Names are confusingly similar to Complainant’s marks; Respondent has no rights or legitimate interests in the Disputed Domain Names; and Respondent registered and used the Disputed Domain Names in bad faith.
Complainant has shown that it has rights in the SKOAL, COPENHAGEN, and HUSKY marks. Panels have consistently held that a Complainant’s trademark registrations with the USPTO demonstrate rights in those marks. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”). Accordingly, the Complainant’s rights in the SKOAL, COPENHAGEN, and HUSKY marks have been established through Complainant’s multiple registrations with the USPTO.
In addition, the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks. Each of the Disputed Domain Names includes an entire mark, the gTLD “.com,” and the generic term “got.” It is uncontroversial that adding the gTLD “.com” to a domain is not relevant under Paragraph 4(a)(i) of the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a gTLD, such as “.net” or “.com,” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Generic terms also do not differentiate a domain from the mark to which the term is attached. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). Accordingly, the addition of the gTLD “.com” and the term “got” do not differentiate the disputed domains from the SKOAL, COPENHAGEN, and HUSKY marks under Paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the Disputed Domain Names. First, it is undisputed that Respondent has never been commonly known by any of the Disputed Domain Names. WHOIS information associated with the Disputed Domain Names identifies Respondent as Charles Bienvenu from the organization Got Domains 4 Sale, LLC. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including WHOIS information, suggesting that the respondent was so known).
Second, Respondent’s use of the Disputed Domain Names, to resolve to a passively-held website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domains all resolve to a website parked by the registrar. Panels have found that a respondent lacks rights or legitimate interests in a disputed domain where there was no indication that the domain was in use or that there were plans to use the domain. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely held the domain passively).
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to Paragraph 4(a)(ii) of the Policy.
The evidence indicates that Respondent registered the Disputed Domain Names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration[s] to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name[s].” Policy, Paragraph 4(b)(i). Accordingly, Respondent registered and used the Disputed Domain Names in bad faith.
Although Respondent contends that the Disputed Domain Names’ inactive status precludes a finding of bad faith, prior Panel decisions have held otherwise. See, e.g., Jupiters Limited v. Aaron Hall, D2000-0574 (WIPO Aug. 3, 2000) (finding bad faith: “There is no active use of the domain names in the sense that they resolve to an active web site. Nevertheless the circumstances of the registration of the domain names and Respondent’s US trade mark application are indicative of his intention to hold the trade mark and the domain names for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.”). “[I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (Feb. 18, 2000). Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration.
In this case, the Panel finds that Respondent had actual knowledge of Complainant’s marks at the time Respondent registered the Disputed Domain Names. Complainant’s SKOAL, COPENHAGEN, and HUSKY marks represent well-known brands, and Respondent’s registration of all three Disputed Domain Names took place within a period of three minutes. It is inconceivable that Respondent could have registered the Disputed Domain Names without actual knowledge of Complainant’s rights in the marks. Respondent does not contend otherwise. Under these circumstances, actual knowledge is evidence of bad faith under the Policy. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (finding bad faith where Respondent had knowledge of Complainant’s rights in the mark when registering the disputed domain name).
Having acquired the Disputed Domain Names with knowledge of Complainant’s marks, Respondent then attempted to sell the Disputed Domain Names to Complainant. Complainant sent a cease-and-desist letter to Respondent on January 7, 2016. In response to the letter, Respondent stated: “I can understand how the domains could be useful to the U.S. Smokeless Tobacco Company as part of a potential marketing campaign and as a way to measure the effectiveness of and interaction of cross-channel marketing campaigns. Should U.S. Smokeless Tobacco Company be interested in acquiring some or all of the related domains, I would be prepared to entertain an offer.” Respondent’s actual offer to sell the Disputed Domain Names to Complainant serves as additional evidence that Respondent registered the Disputed Domain Names primarily for that purpose.
Further, Respondent presented “no evidence whatsoever of any actual or contemplated good faith use by it of the domain name[s].” Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003). Although Respondent provided the Panel with several definitions for the three nouns contained within the Disputed Domain Names, it showed no legitimate justification for registering domains containing these particular words. Respondent defines “skoal,” for instance, as “an exclamation in Scandinavian toasts” and “the name of a Tiawanese hotel.” The Panel finds it highly unlikely that Respondent registered the domain <gotskoal.com> with an intention to use it in connection with either of these definitions. See id. (“As the sole value of the domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark, the Panel infers that Respondent registered the domain name for the primary purpose of selling its registration to Complainant.”); Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner.”). Respondent’s registration of all three Disputed Domain Names within the same three-minute period belies any contention that Respondent planned to use the Disputed Domain Names for a good faith purpose. For these reasons, the Panel concludes that Complainant has met its burden of proving that the Disputed Domain Name was registered and used 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 <gotskoal.com>, <gotcopenhagen.com>, and <gothusky.com> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: March 25, 2016
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