Complainant is U.S. Smokeless Tobacco Company LLC of Richmond, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Stuart Stephens of Juneau, Alaska, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2018, 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 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. Respondent did not submit any substantive response, but did send a request for more information on December 8, 2019.
The Center appointed Brian Winterfeldt as the sole panelist in this matter on January 9, 2019. 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.
A further email communication was received from the Respondent on January 13, 2019, explaining that the Respondent purchased the disputed domain name on behalf of a friend and offering to transfer the disputed domain name to the Complainant. 4. Factual Background
Complainant is a subsidiary of Altria Group, Inc., and a leading manufacturer and producer of smokeless tobacco products headquartered in Richmond, Virginia. Complainant owns valid and subsisting registrations for the SKOAL trademark in numerous jurisdictions around the world, including in the United States (U.S. Reg. No. 504,609). The SKOAL trademark has been used by Complainant and its predecessors in interest since at least as early as October 10, 1934 in connection with smokeless tobacco products. Complainant registered the domain name to use as its primary website presence on November 17, 1997.
Respondent registered the disputed domain name on May 17, 2018. Currently, the disputed domain name resolves to a webpage parked courtesy of GoDaddy that invites visitors to “Get This Domain.” 5. Parties’ Contentions A. Complainant
Complainant asserts rights in the SKOAL trademark based on its national and regional registrations. Complainant asserts that the disputed domain name captures, in its entirety, the SKOAL trademark, and that the added descriptive term “heads” does not negate the confusing similarity between the disputed domain name and the SKOAL trademark.
Complainant also asserts that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not given Respondent permission to use the SKOAL trademark. Complainant asserts that Respondent is not commonly known by the disputed domain name because the Whois record identifies “Stuart Stevens,” which does not resemble the disputed domain name. Complainant also asserts that redirection of the disputed domain name by Respondent to a parked webpage does not constitute any attempt to make legitimate use of the disputed domain name.
Complainant finally asserts that the SKOAL trademark is well-known or famous, and that Respondent was aware of Complainant’s brand and business when Respondent registered the disputed domain name. Complainant argues that the registration of the disputed domain names that contain famous trademarks constitutes per se bad faith. Complainant argues that resolution of the disputed domain name to an inactive website constitutes bad faith use of the disputed domain name, and that given the confusing similarity of the disputed domain name to the SKOAL trademark, there is no plausible good-faith reason or logic for its registration and use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that complainant’s claims are true.”
Thus, although in this case Respondent has failed to substantively respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SKOAL trademark, which has been registered internationally, including in the United States where Respondent is located.
With Complainant’s rights in the SKOAL trademark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s SKOAL trademark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the descriptive term “heads” after the dominant SKOAL element does not distinguish the disputed domain name from Complainant’s mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SKOAL trademark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the Policy.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its SKOAL trademark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to redirect Internet users to a parked website that invites visitors to “Get This Domain.”, and has disclaimed interests in the disputed domain name. Furthermore, it is evident that Respondent is not known by the disputed domain name.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
In the instant proceeding, the record is devoid any demonstrable use of the disputed domain name since it was registered on May 17, 2018. However, Complainant has submitted evidence demonstrating the distinctiveness and well-known reputation of the SKOAL trademark, including recognition of the same by numerous prior panels. Thus, when coupled with the failure of Respondent to substantively respond to the Complaint or provide any evidence of actual or contemplated good-faith use of the disputed domain name, and the relative implausibility of any good faith uses for the disputed domain name, this Panel views such long-term passive holding as strong evidence of registration and use in bad faith. WIPO Overview 3.0, section 3.3. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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 disputed domain name be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: January 25, 2019
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