U.S. SMOKELESS TOBACCO COMPANY v. Lei Shi
Claim Number: FA2201001981466
Complainant is U.S. SMOKELESS TOBACCO COMPANY (“Complainant”), represented by CORSEARCH, INC., Texas, USA. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com>, registered with Cloud Yuqu LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2022; the Forum received payment on January 22, 2022.
On January 24, 2022, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names are registered with Cloud Yuqu LLC and that Respondent is the current registrant of the names. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 31, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of February 22, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skoalreards.com, postmaster@skoalrewads.com, postmaster@skoalrewars.com, postmaster@skoalrewrds.com, postmaster@skoalrwards.com. Also on January 31, 2022, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that the record supports Complaint’s assertion that the Respondent is conversant and proficient in the English language. Thus, the Panel decides that the proceeding should be in English.
A. Complainant
1. Complainant is a tobacco company. Complainant has rights in the SKOAL mark through its registrations with the USPTO and OHIM (e.g. USPTO Reg. 504,609, registered Dec. 7, 1948; OHIM Reg. 3,797,719, registered Sep. 6, 2005). Respondent’s <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names[i] are identical or confusingly similar to Complainant’s SKOAL mark as they incorporate the mark in its entirety and add misspellings of the word “rewards”, along with the “.com” generic top-level domain (“gTLD”).
2. Respondent lacks rights and legitimate interests in the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its SKOAL mark in the domain names.
3. Respondent does not use the domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked, pay-per-click links at the domain name’s resolving website.
4. Respondent registered and uses the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names in bad faith. Respondent hosts parked, pay-per-click links on the domain name’s resolving website.
5. Respondent registered the domain names with actual knowledge of Complainant’s rights in the SKOAL mark.
6. Respondent has engaged in a pattern of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKOAL mark. Respondent’s domain names are confusingly similar to Complainant’s SKOAL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names and that Respondent registered and uses the domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the SKOAL mark through its registrations with the USPTO and OHIM (e.g. USPTO Reg. 504,609, registered Dec. 7, 1948; OHIM Reg. 3,797,719, registered Sep. 6, 2005). Registration with the USPTO and OHIM is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015) (“Registration of a trademark with the OHIM (or other governmental authority) adequately demonstrates rights in a mark under Policy ¶ 4(a)(i).”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names are identical or confusingly similar to Complainant’s SKOAL mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive word along with the “.com” gTLD is generally insufficient in differentiating a domain name from the mark it incorporates. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names incorporate the SKOAL mark in its entirety and add different misspellings of the word “rewards” along with the “.com” gTLD. Therefore, the Panel holds that Respondent’s <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names are identical or confusingly similar to Complainant’s SKOAL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names nor has Complainant authorized or licensed Respondent to use its SKOAL mark in the domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “LE SHI,” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its SKOAL mark. Therefore, the Panel holds that Respondent is not commonly known by the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of another to host parked, pay-per-click links unrelated to a complainant is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the domain names’ resolving website, which features no content and parked, pay-per-click links, for a variety of products and services. Therefore, the Panel holds that Respondent does not use the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), where a respondent has a history of adverse UDRP proceedings levied against it, and/or has multiple domain names at stake in the current dispute, past panels have found a pattern of bad faith registration and use is present. See H-D U.S.A., LLC v. zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson, FA1410001587625 (Forum Dec. 10, 2014) (“The Panel agrees that the case relates to the same Respondent here, and Respondent’s history of bad faith suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii), especially given the presence of three domain names in this proceeding that incorporate the HARLEY-DAVIDSON mark.”). Complainant provides a list of adverse past proceedings against Respondent. Also, multiple domain names are in dispute in this proceeding. Therefore, the Panel holds that Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names with actual knowledge of Complainant’s rights in the SKOAL mark. Under Policy ¶ 4(a)(iii), incorporating a well-known/registered mark into a domain name may demonstrate actual knowledge of that mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Considering the entire record in this proceeding and specifically that each domain name fully incorporates the registered SKOAL mark, the Panel holds that Respondent registered the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names with actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 4, 2022
[i] The <skoalreards.com>, <skoalrewads.com>, <skoalrewars.com>, <skoalrewrds.com>, and <skoalrwards.com> domain names were registered on Dec. 1, 2021.
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