Complainant is ITG Brands, LLC of Greensboro, North Carolina, United States of America, represented by Dykema Gossett PLLC, United States of America.
Respondent is George Dennis of Las Vegas, Nevada, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the "Domain Names") are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 18, 2016.
The Center appointed John C McElwaine as the sole panelist in this matter on January 22, 2016. 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
Complainant, through its predecessors, adopted and has been using the trademark WINSTON and SALEM for cigarettes sold in commerce in the United States since 1952 and 1956, respectively. Complainant owns three United States trademark registrations for WINSTON for cigarettes, U.S. Reg. No. 636,355, U.S. Reg. No. 1,030,233 and U.S. Reg. No. 2,330,639, and two United States registrations for SALEM for cigarettes, U.S. Reg. No. 637,365 and U.S. Reg. No. 3,486,051.
On November 28, 2012, Respondent registered the Domain Names. Currently, the Domain Names both resolve to pay-per-click websites. 5. Parties’ Contentions A. Complainant
Complainant alleges its predecessor companies have been using the WINSTON and SALEM marks for cigarettes since 1952 and 1956, respectively. Moreover, Complainant asserts that WINSTON and SALEM have been continually used since that time and are very well-known brands of cigarettes in the United States.
Complainant owns two trademark registrations for SALEM, U.S. Reg. No, 637,365, and SALEM (and Design), U.S. Reg. No. 3,486,051, for cigarettes. Both of these registrations are incontestable and remain in force and effect.
Complainant also owns three trademark registrations for WINSON, U.S. Reg. No. 636,355, WINSTON (and Design), U.S. Reg. No. 1,030,233, and WINSTON (and Design), U.S. Reg. No. 2,330,639. These three registrations are incontestable and remain in force and effect.
With respect to the first element of the Policy, Complainant asserts that the Domain Names are confusingly similar to Complainant’s registered and common law WINSTON Mark and SALEM Mark. Complainant points out that “cig” is an abbreviation for cigarettes. Therefore it is alleged that the Domain Names merely consist of Complainant’s well-known WINSTON Mark and SALEM Mark in combination with the generic term “cig.”
With respect to the second element of the Policy, Complainant contends that there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating Complainant’s WINSTON Mark and SALEM Mark.
With respect to the third element of the Policy, Complainant asserts that Respondent engaged in bad faith when it registered and used the Domain Names for the purpose of diverting customers searching for Complainant’s products to Respondent’s pay-per-click websites. It is asserted that Internet users are likely to be confused by the Domain Names, particularly since the generic term in these Domain Names, “cig”, is an abbreviation of the same type of product Complainant sells under its WINSTON Mark and SALEM Mark.
In addition, Complainant alleges that Respondent’s bad faith is further established because Respondent has a pattern of registering domain names which include trademarks belonging to well-known companies. In particular, Complainant claims that Respondent has registered and and that LUCKY STRIKE and CAMEL are well-known cigarette brands belonging to Reynolds Innovations, Inc. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the WINSTON Mark and the SALEM Mark, which long predate the registration of the Domain Names.
The Domain Names contain Complainant’s widely known WINSTON or SALEM trademarks, as their dominant elements, combined with the term “cig”. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity (see eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307). The term “cig” is an abbreviation for cigarette which is Complainant’s well-known product. Thus, the public is likely to believe that either or is related to a website authorized by Complainant. The Panel finds that the addition of the descriptive word “cig” does not serve to sufficiently distinguish or differentiate the Domain Names from Complainant’s WINSTON Mark and SALEM Mark.
Also, the addition of the generic Top-Level Domain (“gTLD”) “.com” to a domain name typically does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the Domain Names.
The Panel finds that Complainant has met its burden of showing that is confusingly similar to Complainant’s WINSTON Mark and that is confusingly similar to Complainant’s SALEM Mark. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Names. See Vicar Operating, Inc. v. Domains by Proxy, Inc./Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1145; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not known by the names “Winston” or "Salem", nor has Complainant licensed Respondent’s use of these trademarks. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Names. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Complainant asserts that the Domain Names resolve only to pay-per-click websites. Domain name parking is a type of advertisement syndication where the subject domain name is listed or parked with a company that has developed software for such syndication. In certain cases, the software analyzes the domain name and then displays advertisements and pay-per-click links as the main content of the page to the website visitor. Alternatively, default links can be provided by the software or the domain name owner can enter certain “keywords” to display related advertisements and pay-per- click links. The domain name owner is paid a small sum for Internet users that subsequently click on such links.
This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not in all circumstances to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. See Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). None of those factors are present here. There is no evidence that the Domain Names consist of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Names appear to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in the Domain Names under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita,WIPO Case No. D2014-1726.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Names, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107. Here, Complainant has used the WINSTON Mark and the SALEM Mark for decades and acquired registrations WINSTON and SALEM in the United States. Complainant has established that the mark WINSTON and SALEM are well-known for cigarettes.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. “null,” aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Complainant’s submissions, which were not rebutted by Respondent, it is clear that Respondent knew of Complainant’s widely known WINSTON Mark and SALEM Mark at the time of registration of the respective Domain Names, and therefore Respondent registered and has used the Domain Names in bad faith.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, and be transferred to the Complainant.
John C McElwaine
Sole Panelist
Date: February 4, 2016
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