The Complainant is U.S. Smokeless Tobacco Company LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 7, 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 September 9, 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 September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Luca Barbero as the sole panelist in this matter on October 8, 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 BackgroundThe Complainant is a United States company founded in 1822 by George Weyman, inventor of the Copenhagen Snuff, who opened his first shop in Pittsburg, Pennsylvania. In 2009, the Complainant joined the Altria Group, Inc. family of companies, becoming a leader in manufacturing and producing smokeless products for adult tobacco consumers.
The Complainant’s brands, including SKOAL, are sold to adult consumers in the retail industry. SKOAL was introduced into the market in 1934 and is still one of the Complainant’s leading brands, representing over USD 1 billion in annual retail sales.
The Complainant is the owner of several trademark registrations for SKOAL, including the following, as per trademark certificates submitted as annexes to the Complaint:
- United States trademark registration No. 0504609 for SKOAL (figurative mark), filed on August 15, 1947, and registered on December 7, 1948, in International Class 34;
- United States trademark registration No. 1052574 for SKOAL (figurative mark), filed on April 27, 1976, and registered on November 9, 1976, in International Class 34;
- United States trademark registration No. 2086020 for SKOAL (word mark), filed on September 19, 1996, and registered on August 5, 1997, in International Class 34;
- European Union trademark registration No. 003797719 for SKOAL (word mark), filed on April 27, 2004, and registered on September 6, 2005, in International Class 34.
The Complainant is also the owner of the domain name
The disputed domain name was registered on March 31, 2021 and has been redirected to a website offering online gambling and live casino games.
5. Parties’ Contentions A. ComplainantThe Complainant contends that disputed domain name is confusingly similar to the trademark SKOAL in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “casino” and the generic Top-Level Domain (“gTLD”) “.com”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way sponsored by or affiliated with the Complainant and that the latter has not given the Respondent any permission to use the Complainant’s trademarks in any way.
The Complainant submits that the Respondent is also not commonly known by the disputed domain name and that it has in no way licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, at the time of registration of the disputed domain name, the Respondent knew or at least should have known of the existence of the Complainant’s trademark and submits that the registration of domain names containing well-known trademarks constitutes bad faith.
The Complainant emphasizes that employing a well-known trademark in a domain name to redirect users to an unrelated third-party website, further proves that the Respondent selected the disputed domain name to intentionally confuse unsuspecting Internet users into visiting such website, which also suggests opportunistic bad faith on the Respondent’s part.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 SimilarThe Complainant has provided evidence of ownership of trademark registrations for SKOAL in the United States and European Union, as mentioned under Section 4 above.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In addition, as found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
The Panel finds that the disputed domain name is confusingly similar to the trademark SKOAL as it reproduces the trademark in its entirety with the mere addition of the word “casino” and the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark for the disputed domain name or for any other purpose. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or has trademark rights for the terms encompassed in the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name, clearly confusingly similar to the Complainant’s distinctive and well-known trademark SKOAL, to redirect users to an unrelated website providing gambling and gaming services does not amount to a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the disputed domain name.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentwebsite or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel finds that, in light of the prior registration and use of the Complainant’s trademark SKOAL in connection with the Complainant’s smokeless tobacco and the confusing similarity of the disputed domain name with the Complainant’s distinctive and well-known trademark SKOAL which, to the best of the Panel’s knowledge, has no meaning in any language, the Respondent was more likely than not aware of the Complainant’s trademark at the time of registration.
The Panel also finds that the Respondent’s use of the disputed domain name in connection with a website offering online gambling and live casino games amounts to bad faith under paragraph 4(b)(iv) of the Policy, since, on balance of probabilities, the Respondent intentionally attempted to attract Internet users, for commercial gain, to the website linked to the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of such website and the services provided therein.
In view of the above and in absence of a Response, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Luca Barbero
Sole Panelist
Date: October 25, 2021