U.S. Smokeless Tobacco Company LLC v. Christopher Davies / Copenhagen Dipper
Claim Number: FA1406001565613
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Christopher Davies / Copenhagen Dipper (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copenhagendipper.com>, registered with Register.com, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2014; the National Arbitration Forum received payment on June 23, 2014.
On June 20, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <copenhagendipper.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 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@copenhagendipper.com. Also on June 25, 2014, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
1. Complainant is the leading manufacturer of smokeless tobacco products sold at retail to adult consumers.
2. Complainant has rights in the COPENHAGEN mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 520,387 registered on January 31, 1950) and several other Incontestable Registrations for COPENHAGEN (“the COPENHAGEN mark”). Complainant also has common law rights in the COPENGAGEN mark.
3. The disputed domain name is confusingly similar to the COPENHAGEN mark.
4. Respondent has no rights or legitimate interests in the disputed domain name.
5.Respondent registered and has used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the leading manufacturer of smokeless tobacco products sold at retail to adult consumers.
2. Complainant has rights in the COPENHAGEN mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 520,387 registered on January 31, 1950) and several other Incontestable Registrations for the COPENHAGEN mark. Complainant has also established that it has common law rights in the COPENGAGEN mark.
3. Respondent registered the <copenhagendipper.com> domain name on February 21, 2014.The domain name does not resolve to an active website.
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(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.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s COPENHAGEN mark. Complainant submits that Respondent’s <copenhagendipper.com> domain name is confusingly similar to Complainant’s registered COPENHAGEN trademark and its common law trademark as it incorporates the COPENHAGEN mark in its entirety and adds the additional word “dipper” which together relates to users of smokeless tobacco products and therefore makes the domain name virtually a direct reference to Complainant and its products. The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys. FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).The Panel also holds that the addition of a generic word such as “dipper” does not detract from confusing similarity that is otherwise present , as it is in the present case. See AOL Inc. v. Tech Helpdesk 247, FA1311001532064 (Nat. Arb. Forum Dec.31, 2013) where the trademark was AOL and the registrant of the domain name had added “tech support” to the trademark, making the domain name <aol-tech-support.com>. The panel found that there was confusing similarity and observed, in remarks equally applicable to the present case:
” The Panel determines that Respondent’s addition of a generic phrase to Complainant’s mark does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).””
Accordingly, the Panel finds that the <copenhagendipper.com> domain name is confusingly similar to Complainant’s COPENHAGEN mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations
(a) Respondent has chosen to take Complainant’s COPENHAGEN mark and to use it in its domain name and added the generic word “dipper” which does not detract from the confusing similarity that is present;
(b) Respondent registered the disputed domain name on February 21, 2014 and did so without the permission or authority of Complainant;
(c) The domain name does not resolve to an active website and Respondent is not using the domain name in connection with a bona fide offering of goods or services and is not making and has not made a legitimate non-commercial or fair use of the domain name;
(d) Respondent could have given an explanation for taking Complainant’s long standing and well known trademark and using it in a domain name, but has not done so, leaving the Panel in the position where it must assume that there is no legitimate reason for Respondent having registered the domain name;
(e) Complainant argues that Respondent is not commonly known by the <copenhagendipper.com> domain name. The Panel notes that the WHOIS record for the domain name initially identified Respondent as “Domain Discreet Privacy Service” and that the current WHOIS record for the domain name identifies Respondent as “Christopher Davies”. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <copenhagendipper.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, as Complainant submits and as was observed in Hugh Jackman v. Peter Sun, FA 248716 (Nat. Arb. Forum May 10, 2004) “Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).” In the present case, Complainant’s COPENHAGEN trademark is of such long standing that it must be assumed that Respondent knew of its existence and registered the domain name to acquire some benefit from adopting the trademark without permission or authority. Again, it must be said that if there were some explanation for doing so, Respondent could have given it, but has declined to do so. The Panel therefore finds that the domain name was registered in bad faith.
Secondly, as has also been submitted by Complainant, Respondent has held the domain name since February 21, 2014 without making active use of it for a legitimate or any other purpose and this likewise demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) in appropriate fact situations : Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Having regard to all the circumstances, including the fact that Complainant’s trademark is prominent and of long standing and the fact that the domain name in its entirety invokes Complainant and its products, the Panel finds that this is an appropriate case to apply theTelstra principle and the Panel will follow that course. The Panel therefore finds that Respondent registered and has used the domain name in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed
<copenhagendipper.com> domain name using the COPENHAGEN mark and Respondent’s passive holding of the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copenhagendipper.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 24, 2014
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