The Complainant is John Middleton Co., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM ----, Cayman Islands, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2021, the Registrar 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 the Complainant on April 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 16, 2021. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on May 26, 2021. 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 The Complainant operates a cigar and pipe tobacco business that dates back to 1856. The Complainant holds registrations for the trademark BLACK & MILD in numerous countries, which it uses to designate cigars. United States Trademark Registration No. 1,177,552, for example, shows a filing date of June 12, 1980 and was registered on November 10, 1981. The Complainant filed United States Trademark application No. 90406217 for the mark: BLACK & MILD 808, on December 23, 2020. The Complainant owns the domain name The Disputed Domain Name The Complainant cites its registered trademarks including United States trademark Registration No. 1,177,552 registered on November 10, 1981, and numerous other registrations in the United States, for the mark BLACK & MILD as prima facie evidence of ownership. The Complainant submits that its rights in the mark BLACK & MILD predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BLACK & MILD trademark and that the similarity is not removed by the additional number “808” or the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent is not a licensee of the Complainant; is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy; and given the redirection of the Disputed Domain Name to a website offering the Disputed Domain Name for sale, has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior trademark application filed by the Complainant for the mark BLACK & MILD 808 on December 23, 2020 and prior use of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BLACK & MILD in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the BLACK & MILD trademark, the Panel observes that the Disputed Domain Name comprises: (a) a reproduction of the Complainant’s trademark BLACK & MILD, with the ampersand sign “&” (which is unable to be expressed in a domain name) replaced by the word “and” (the term an ampersand represents); (b) followed by the number “808”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “blackandmild808”. It is also well established that where a complainant’s well-known and distinctive trademark is recognisable in the Disputed Domain Name, it may be confusingly similar to that mark despite the addition of a word or, in this case, the number “808”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2600; John Middleton Co. v. Domain Administrator, See PrivacyGuardian.org / Shi Lei,WIPO Case No. D2020-0668). Here, the Complainant’s BLACK & MILD mark is clearly recognisable in the Disputed Domain Name. This Panel accepts the Complainant’s contention that the number “808” after the Complainant’s registered trademark is an additional element that does not serve to distinguish the Disputed Domain Name. The addition of the number “808” to the trade mark does nothing to avoid the conclusion that the Disputed Domain Name is confusingly similar to the Complainant’s BLACK & MILD mark, particularly in view of the Complainant having filed United States Trademark application No. 90406217 for the mark: BLACK & MILD 808, on December 23, 2020, four days prior to the Respondent’s registration of the Disputed Domain Name. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not the Respondent’s name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it redirects to a an webpage with an offer to sell the Disputed Domain Name. WhoIs information identifies the Registrant as “DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM ----” rather than a name reflected in the Disputed Domain Name. The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(i) of the Policy apply. In that regard, the Complainant contends that the redirection of the Disputed Domain Name to a website offering the Disputed Domain Name for sale for an amount that far exceeds the Respondent’s out-of-pocket expenses does not constitute a bona fide offering of goods or services, rather the Respondent is attempting to unfairly capitalize on the reputation and goodwill of the Complainant’s trademark. Furthermore, the nature of the Disputed Domain Name, reproducing the Complainant’s mark and a number associated with a recent trademark application by the Complainant, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, it is most unlikely that the Respondent might have registered the Disputed Domain Name without knowing of the trademark BLACK & MILD. See John Middleton Co. v. Domain Administrator, See PrivacyGuardian.org / Shi Lei,WIPO Case No. D2020-0668 (“The fact that the Respondent chose to register a domain name which incorporated the Complainant’s BLACK & MILD trade mark and couple it with two words closely associated with the Complainant’s product and services, […] establishes, on at least a balance of probabilities, that the disputed domain name was registered by the Respondent as a result of its awareness of the Complainant’s reputation and in order to take advantage of it […]”). This Panel regards the Respondent’s registration of the Disputed Domain Name on December 27, 2020, only four days after the Complainant filed United States Trademark application No. 90406217 for the mark: BLACK & MILD 808, on December 23, 2020, as further evidence of bad faith. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name redirects internet users to a “for sale” page where Respondent is attempting to sell the Disputed Domain Name for USD 990; an amount that exceeds the Respondent’s out-of-pocket expenses. In Trip.com, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066, the Panel stated: “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy […] The offering for sale of a domain name, even to a third party, supports bad faith.” In John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0668, the Panel accepted that: “disputed domain names are being offered for sale for a minimum offer of USD 500, an amount that exceeds, without evidence to the contrary, the Respondent’s out-of-pocket expenses in registering the disputed domain names.” This Panel accepts that USD 990 is an amount that exceeds, without evidence to the contrary, the Respondent’s out-of-pocket expenses in registering the Disputed Domain Names. As such, the Panel finds it most likely that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name, which is further evidence of bad faith. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark BLACK & MILD and incorporated it in the Disputed Domain Name along with the number “808”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark and infringing upon the Complainant’s rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Nicholas Weston
Sole Panelist
Date: June 4, 2021
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