WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GMB Inc. v. Moniker Privacy Services / Nevis Domains
Case No. D2008-0214
1. The Parties
Complainant is GMB Inc., of North Carolina, United States of America, represented by Bricker & Eckler LLP, United States of America.
Respondent is Moniker Privacy Services / Nevis Domains, of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. On February 12, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 15, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 20, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint and further amendments thereto on February 25, 2008, and March 3, 2008 respectively. The Center verified that the Complaint together with the amended Complaint and amendments thereto 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 Respondent of the Complaint, and the proceedings commenced on March 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 15, 2008. 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
Richard (R.J.) Joshua Reynolds started his own tobacco company in 1875. The R.J. Reynolds Tobacco Company was chartered as a corporation by the State of North Carolina on February 11, 1890. Complainant, GMB, Inc., together with its exclusive licensee in the United States of America, the R.J. Reynolds Tobacco Company (referred to collectively as “Complainant”), is the United States’ second largest tobacco company, manufacturing roughly one out of every three cigarettes sold in the United States of America. Complainant’s brands include Camel, Kool, Pall Mall, Winston, Salem and Doral.
Over the years, R.J. Reynolds has owned several trademark registrations for the mark REYNOLDS for tobacco products (which have now expired) and has sold various tobacco products using the trademark and trade name REYNOLDS.
Recently, Complainant became aware that Respondent had registered the domain name . Upon investigation, Complainant learned that the domain name had changed registrars five times in two years, with 32 changes in the IP address and 16 unique server names over a four year period.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is identical to and confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used 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”.
A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s corporate name in its entirety. This corporate name, through long use in connection with tobacco products, has obtained at least common law trademark significance.
Accordingly, the Panel finds that the domain name is identical to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant states that Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.
There is no evidence before the Panel to establish that Respondent is generally known by the domain name or that Respondent has acquired any trademark or service mark rights in that name or mark.
Respondent’s website located at the disputed domain name prominently displays Complainant’s cigarette brands, including “Camel”, as well as Complainant’s competitor brands. Such use cannot constitute a bona fide use of the domain name.
On the basis of the present record, Respondent is not using the domain name in a bona fide manner. Instead, Respondent is apparently using the domain name to attract Internet users to a website that invites users to click through to various links. The link “Camel or Marlboro” takes browsers to a page where they can vote on their preferred brand. Marlboro is made by Philip Morris and is a direct competitor to Camel. Other links invite browsers to sites for competing cigarette products and also to sites offering smoking cessation services.
Respondent makes money by luring consumers to the website located at the domain name in order to generate click-through fees for sponsored links, many of which redirect browsers to websites selling competitive products.
Respondent’s use of the domain name for such purposes is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In the present case, it is apparent that the domain name is being deliberately used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s mark. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with Complainant’s mark is evidence of bad faith registration under the Policy. The evidence that Respondent tailored the content of its website at the domain name to relate to R.J. Reynold’s business and directed browsers to competitors of R.J. Reynolds and to some R.J. Reynolds products demonstrates that Respondent was aware of R.J. Reynolds prior trademark rights and leads to the inevitable conclusion that Respondent registered and is using the domain name with actual knowledge of Complainant’s rights.
In addition, the record reflects that Respondent has exhibited a pattern of registering domain names including marks in which others have rights. This is additional evidence of bad faith.
Accordingly, on the present record the Panel finds the disputed domain name to be registered and used in bad faith.
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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: April 28, 2008
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