The Complainant is U.S. Smokeless Tobacco Company LLC of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jian Lei of Bazhong, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, 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 October 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On October 25, 2018, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 23, 2018. 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 is a leading producer and marketer of smokeless tobacco products. Skoal is a premium brand of dipping tobacco, also known as moist snuff. The Complainant is the proprietor of multiple trademark registrations for SKOAL including Canadian trademark registration number UCA021754, registered on December 13, 1945; United States trademark registration number 0504609, registered on December 7, 1948; and Chinese trademark registration number 15511485, registered on December 7, 2015, all of which specify goods in class 34. Those trademark registrations remain in effect. The Complainant has also registered the domain name that it uses in connection with an official website. That domain name resolves to a registration page where Internet users must first sign in and verify their age before accessing the website, which provides information about the Complainant’s SKOAL brand products.
The Respondent appears to be an individual resident in China. The disputed domain name was registered on December 13, 2017. It resolves to a registration page where Internet users must first sign in and then redirects them to a lottery ticket website. 5. Parties’ Contentions A. Complainant
The disputed domain name contains the Complainant’s SKOAL trademark in its entirety, thus resulting in a domain name that is identical to the Complainant’s SKOAL trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. The Respondent’s website is creating an impression that the disputed domain name’s registration and use are authorized and administered by the Complainant.
The disputed domain name was registered and is being used in bad faith. By registering a domain name that includes the Complainant’s famous SKOAL trademark in its entirety, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Respondent has registered and used the disputed domain name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. Moreover, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks and to divert such users to an unrelated site offering online gambling and lottery services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the Complainant’s representative is unable to communicate in Chinese and that translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter.
Paragraph 10(b) and (c) of the Rules require the panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Despite having received emails from the Center in English and Chinese regarding the issue of language and notification of the Complaint, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the SKOAL trademark.
The disputed domain name incorporates the SKOAL trademark in its entirety. The only additional element is the country code Top-Level Domain (“ccTLD”) suffix of the territory of the the Cocos Islands: “.cc”. A ccTLD suffix does not prevent a finding of identity or confusing similarity between a trademark and a domain name for the purposes of the first element of the Policy. See Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz,WIPO Case No. DCC2010-0006. Consequently, the only distinctive element of the disputed domain name is the Complainant’s SKOAL trademark.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain name, which is identical or confusingly similar to the Complainant’s SKOAL trademark, resolves to a webpage that imitates the registration page on the Complainant’s official website and redirects Internet users who sign in to a lottery ticket website unrelated to the Complainant. The Complainant submits that it has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. The Panel does not consider that these circumstances fall within the terms of paragraph 4(c)(i) or (iii) of the Policy.
The Respondent’s name, according to the Registrar’s WhoIs database, is “Jian Lei”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
As regards registration, the disputed domain name was registered years after the Complainant registered its SKOAL trademark, including in China, where the Respondent is resident. “Skoal” is not a dictionary word. The disputed domain name wholly incorporates the Complainant’s trademark and includes no additional element besides a TLD suffix, which is a technical requirement of domain name registration. The Respondent provides no explanation for his choice to register the disputed domain name. Therefore, the Panel finds that the disputed domain name has been registered in bad faith.
As regards use, the disputed domain name resolves to a webpage that imitates the registration page on the Complainant’s official website and redirects Internet users who sign in to a lottery ticket website unrelated to the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the landing page to divert Internet users to that website. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to the lottery ticket website, or for the commercial gain of the operator of that website, or both. In any of these scenarios, the facts fall within the terms of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 the Complainant.
Matthew Kennedy
Sole Panelist
Date: November 27, 2018
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