John Middleton Co. v. Middleton, John / The John Powers Middleton Companies
Claim Number: FA1511001649564
Complainant is John Middleton Co. (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, United States. Respondent is Middleton, John / The John Powers Middleton Companies (“Respondent”), represented by Victor Sapphire of Michelman & Robinson, LLP, California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackandmildsgreen.com> and <middletonsgreenandmilds.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 25, 2015.
On November 24, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <blackandmildsgreen.com> and <middletonsgreenandmilds.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2015 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@blackandmildsgreen.com, and postmaster@middletonsgreenandmilds.com. Also on November 30, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richrd Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a leading manufacturer of cigars and pipe tobacco. Complainant employs more than 400 employees and focus on responsibly manufacturing and marketing its cigar products to adult tobacco consumers. Complainant has registered the BLACK & MILD and MIDDLETON’S marks with the United States Patent and Trademark Office in, respectively, 1978 and 1997.
According to Complainant, the <blackandmildsgreen.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark as it wholly incorporates Complainant’s mark and merely adds the letter “s” to the word “mild,” adds the generic term “green,” uses the word “and” in place of the ampersand symbol, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” The <middletonsgreenandmilds.com> domain name is confusingly similar to Complainant’s MIDDLETON’S and BLACK & MILD marks as it incorporates Complainant’s MIDDLETON’S mark in its entirety combined with a variation of Complainant’s BLACK & MILD mark. Respondent merely removes the apostrophe from the MIDDLETON’S mark, eliminates the spacing between the words of Complainant’s mark, substitutes the word “and” for the ampersand symbol, adds the letter “s” to the word “mild,” and adds the gTLD “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Second, Respondent is not licensed or authorized to use Complainant’s marks. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent’s <blackandmildsgreen.com> resolves to Respondent’s commercial websites which contain numerous revenue-generating links; and the <middletonsgreenandmilds.com> domain name resolves to an inactive webpage. Complainant cites UDRP precedents to support its position.
Complainant states that, on July 30, 2015, its counsel sent a letter to Respondent asking Respondent to transfer the disputed domain names. In response, Respondent, through its attorney, agreed to cancel the registrations for the disputed domain names. Following Respondent’s commitment to cancel the disputed domain names, Complainant’s counsel, on a number of occasions, asked for a status update on the promised cancellation. Because the disputed domain names remained registered months after Respondent’s commitment, Complainant’s counsel eventually informed Respondent’s counsel that it would commence a UDRP proceeding if the disputed domain names were not promptly cancelled. In response Respondent’s counsel acknowledged that the disputed domain names should be cancelled, but to date the registrations for the disputed domain names have not been cancelled. Respondent’s promise to cancel the disputed domain names further demonstrate that Respondent has no legitimate interest in the disputed domain names.
Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. First, Respondent is using the <blackandmildsgreen.com> domain name to resolve to a web page containing commercial links: using a domain name comprised of another’s mark for the purpose of providing links to third party commercial websites constitutes bad faith. Second, Respondent has failed to make any active use of the <middletonsgreenandmilds.com> domain name. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks MIDDELTON’S and BLACK & MILD, with rights dating back, respectively, to 1978 and 1998.
The disputed domain names were registered on May 1, 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
In response to a request by Complainant, Respondent promised to cancel the registrations of the disputed domain names, but it has not yet done so.
One of the disputed domain names resolves to a web site containing advertising links to products that are not related to Complainant’s products. The other disputed domain name is not being used.
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.”).
Complainant has registered the BLACK & MILD and MIDDLETON’S marks in, respectively, 1978 and 1997.
The <blackandmildsgreen.com> domain name is confusingly similar to Complainant’s BLACK & MILD mark as it wholly incorporates Complainant’s mark and merely adds the letter “s” to the word “mild,” adds the generic term “green,” uses the word “and” in place of the ampersand symbol, eliminates the spacing between the words of Complainant’s mark, and adds the gTLD “.com.” The <middletonsgreenandmilds.com> domain name is confusingly similar to Complainant’s MIDDLETON’S marks as it incorporates Complainant’s MIDDLETON’S mark in its entirety combined with the common words “green”,”and”, and “milds”. The use of the term “mild”, in connection with the mark MIDDLETON, is an obvious reference to Complainant’s mark BLACK & MILD. Previous panels have found confusing similarity under Policy ¶ 4(a)(i) where a respondent simply adds the letter “s” to a word of a complainant’s mark, substitutes the word “and” for the ampersand symbol, adds a generic term, eliminates an apostrophe from a complainant’s mark, or eliminates the spacing between the words of a complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also held that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent has no license or authorization to use Complainant’s marks. Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. The WHOIS information merely lists “Middleton, John / The John Powers Middleton Companies” as registrant and Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Further, in response to a request from Complainant, Respondent promised to cancel the registrations of the disputed domain names. This indicates that Respondent concedes that it does not have rights or legitimate interests in the disputed domain names.
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, the <blackandmildsgreen.com> domain name resolves to a website that contains click-through advertising links for websites unrelated to Complainant’s mark. Past panels have found that a respondent’s use of a disputed domain name to display links to goods and services that are unrelated to the complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). See also Intel Corporation v. M. Macare a/k/a M. Macar, FA 660685 (Nat. Arb. Forum April 26, 2006) (“[T]he Panel infers that Respondent receives click-through fees for each consumer it diverts to these other websites[,] finds that Respondent is taking advantage of the confusing similarity between the domain names and Complainant’s marks in order to profit from the goodwill associated with the marks, and holds that Respondent’s registration and diversionary use of the disputed domain names constitutes bad faith ...”).
The <middletonsgreenandmilds.com> domain name resolves to an inactive web page. Past panels have found that a respondent lacks rights or legitimate interests where it fails to make any active use of a disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent is taking advantage of the confusing similarity between the <blackandmildsgreen.com> domain name and Complainant’s marks in order to profit from the goodwill associated with the marks. Specifically, Respondent receives click-through fees for diverting Internet users from Complainant to the unrelated third-party hyperlinks that are displayed on Respondent’s resolving webpage. Previous panels have found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). As such, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent has failed to make any active use of the <middletonsgreenandmilds.com> domain name. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the disputed domain name <middletonsgreenandmilds.com> was registered at the same time as the other disputed domain name, which other domain name is, as noted above, being used in bad faith. Given the bad faith use of the other disputed domain name, and the fact that Respondent agreed to cancel its registration of this domain name, but did not do so, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name <middletonsgreenandmilds.com> is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackandmildsgreen.com> and <middletonsgreenandmilds.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 30, 2015
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