WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GMC, Inc. v. DomainS Inc.
Case No. D2006-1388
1. The Parties
The Complainant is GMB, Inc., King, North Carolina, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is DomainS, Inc., Redding, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2006. On October�31,�2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November�2,�2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November�14,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�4,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December�6,�2006.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 14, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
(i) The Complainant, together with it’s exclusive licensee in the United States of America, the R.J. Reynolds Tobacco Company (collectively, with their predecessors, “R.J. Reynolds”), is the United States’ second largest tobacco company, manufacturing roughly one out of every three cigarettes sold in the United States.
(ii) With approximately thirty percent (30%) of United States’ tobacco sales, R.J. Reynolds manufactures five of the top ten selling cigarette brands, including Camel, Doral, Winston, Kool and Salem.
(iii) R.J. Reynolds owns, among others, the following United States federally registered trademarks for use on cigarettes:
CAMEL – Registration No. 126,760, for cigarettes;
CAMEL (stylized) – Registration No. 1,502,414 for use on cigarettes;
CAMEL (and design) – Registration No. 1,391,824 for use on cigarettes;
CAMEL WIDES – Registration No. 1,693,466 for use on cigarettes.
(iv) R.J. Reynolds has used the CAMEL trademark continuously and exclusively in connection with cigarettes since at least as early as 1913 in the United States.
(v) One marketing tool used by R.J. Reynolds for the Camel cigarettes has been the use of “Camel Cash”. Camel Cash refers to a coupon adhered to the back of most varieties of Camel cigarettes.
5. Parties’ Contentions
A. Complainant
(i) The Respondent registered the domain name in an effort to capitalize on the recognition of the CAMEL mark by those seeking information on Camel cigarettes, seeking to redeem Camel Cash or looking to purchase Camel cigarettes.
(ii) The Respondent has registered and is using the domain in bad faith to benefit from misdirected traffic in search of information on Camel cigarettes, Camel Cash and R.J. Reynolds’ products and services. Indeed, the Respondent has tailored the entire site to contain links to products in competition with Camel cigarettes. The Respondent directly profits from the traffic it intentionally misdirects.
(iii) The Respondent is capitalizing on the CAMEL trademark by registering a domain name that includes the well-known Camel marks and incorporates, in its entirety, the name of R.J. Reynolds’ marketing program “Camel Cash” and then profiting from the resulting confused traffic that gets misdirected to that domain name.
(iv) The Respondent has no legitimate rights in the CAMEL mark or the domain name.
(v) The Respondent’s use of the domain name to direct traffic to competitive products is not a legitimate use.
(vi) The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Respondent’s name does not include the word Camel. As such, all of the content currently on the domain is misleading and confusing to consumers. The domain name was registered and is being used in bad faith, with a clear intent to profit from confusion.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph�14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph�4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered CAMEL as a trademark in the United States of America and has made continuous use of the mark, in connection with cigarettes, since 1913.
The domain name incorporates the Complainant’s mark and is identical to the Complainant’s “Camel Cash” marketing tool, and is in the Panel’s view confusingly similar to the Complainant’s mark (see Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph�4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel finds that the use of the domain is not fair or noncommercial as the website with the domain is used to offer competing products/services to the Complainant’s products/services.
The Respondent has not submitted a proper response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph�4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. As set forth above, the Complainant contends that the Respondent has violated paragraph 4(b)(iv) of the Policy, thus establishing bad faith.
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of Paragraph 4(b)(iv). The Respondent is, in using the domain name, diverting Internet users to the Respondent’s website offering competing services to the Complainant’s services. The mere fact of diverting users in this misleading manner is evidence of bad faith. See Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554.
It may be inferred from the nature of the Respondent’s domain name website – a portal site that leads to various products/services similar to those provided by the Complainant – that the Respondent was aware of the Complainant’s mark.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Dated: December 28, 2006
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