U.S. Smokeless Tobacco Manufacturing Company v. Tom A. Slamecka c/o TSlam Export
Claim Number: FA0806001203211
Complainant is U.S. Smokeless Tobacco Manufacturing Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skoal.net>, registered with Epag Domainservices Gmbh.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2008.
On June 11, 2008, Epag Domainservices Gmbh confirmed by e-mail to the National Arbitration Forum that the <skoal.net> domain name is registered with Epag Domainservices Gmbh and that Respondent is the current registrant of the name. Epag Domainservices Gmbh has verified that Respondent is bound by the Epag Domainservices Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June
12, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 2, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@skoal.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skoal.net> domain name is identical to Complainant’s SKOAL mark.
2. Respondent does not have any rights or legitimate interests in the <skoal.net> domain name.
3. Respondent registered and used the <skoal.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Smokeless Tobacco Manufacturing Company (“USSTMC”), a leading manufacturer of smokeless tobacco products, has been selling smokeless tobacco products since the 1800s. Complainant introduced its SKOAL brand in 1934 and has used the SKOAL mark continuously since that time. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”), including several variations of the SKOAL mark (Reg. No. 504,609 issued Dec. 7, 1948).
Respondent registered the <skoal.net> domain name on February 22, 2000. Respondent’s disputed domain name resolves to a website that displays Complainant’s SKOAL mark and sells Complainant’s products as well as products that directly compete with Complainant’s.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the SKOAL mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that Respondent’s <skoal.net> domain name is identical to Complainant’s SKOAL mark pursuant to Policy ¶ 4(a)(i). The addition of the generic top-level domain (“gTLD”) “.net” does not distinguish the disputed domain from Complainant’s SKOAL mark for the purposes of being identical under Policy ¶ 4(a)(i). Therefore, the Panel finds that the <skoal.net> domain name is identical to Complainant’s SKOAL mark under Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first establish a prima facie case that Respondent does not have rights and legitimate interests in the <skoal.net> domain name. Once this prima facie case has been established, the burden then shifts to Respondent and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent is using the <skoal.net>
domain name to sell Complainant’s products as well as products that are in
direct competition with Complainant’s products without Complainant’s
authorization. The Panel finds that this
unauthorized sale of Complainant’s products is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
In addition, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <skoal.net> domain name and there is no other evidence in the record to indicate otherwise. Furthermore, Complainant asserts that Respondent is not authorized to use the SKOAL mark and is not associated with Respondent in any way. Therefore, the Panel finds that Respondent is not commonly known by the <skoal.net> domain name under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel concludes that Policy ¶ 4(a)(ii) has been
satisfied.
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent is using the <skoal.net>
domain name to sell Complainant’s products without authorization as well as
products that are in direct competition with Complainant. The Panel finds that this unauthorized sale
is capable of creating a likelihood of confusion as to Complainant’s
affiliation with the disputed domain name.
This commercial benefit constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See Compaq Info.
Techs. Group, L.P. v. Waterlooplein Ltd.,
FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of
the <compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”); see also Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO
Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON]
products, Respondents have shown bad faith in use of the Domain Name.”).
In addition, the Panel finds that Respondent is using the <skoal.net> domain name to redirect Internet users to Respondent’s website that sells Complainant’s products as well as products that are in direct competition with Complainant. This use constitutes a disruption of Complainant’s business and is bad faith registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoal.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 11, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum