U.S. Smokeless Tobacco Company LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation
Claim Number: FA1603001666791
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copenhagenmint.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2016; the Forum received payment on March 23, 2016.
On March 22, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <copenhagenmint.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2016 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@copenhagenmint.com. Also on March 24, 2016, 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.
A timely Response was received and determined to be complete on April 11, 2016.
On April 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant has been selling smokeless tobacco products since the 19th century, and is today a leading manufacturer of smokeless tobacco retail products.
The Complainant has registered the COPENHAGEN trademark with the United States Patent Trademark Office (“USPTO”) (e.g., Reg. No. 520,387, registered Jan. 31, 1950). The <copenhagenmint.com> domain name is confusingly similar to the COPENHAGEN trademark as it includes the mark in its entirety while adding the generic term “mint” and the generic top level domain (“gTLD”) “.com.”
The Respondent lacks rights in the <copenhagenmint.com> domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Further, the Respondent uses the disputed domain name to host links to third party sites presumably netting click-through revenue. Such use is not protected by Policy ¶¶ 4(c)(i) or (iii).
The Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to profit from Internet users’ confusion by displaying links to products and services that are unrelated to Complainant’s business.
Finally, Respondent registered the disputed domain with actual knowledge of Complainant’s trademark.
B. Respondent
The Respondent has consented to transfer the <copenhagenmint.com> domain name to the Complainant. Respondent request that the Panel order the transfer without consideration of the policy ¶ 4(a) elements.
The Panel finds that the Complainant has established trademark rights in the COPENHAGEN trademark, covering the following registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 520,387 COPENHAGEN, registered January 31, 1950
Reg. No. 2,086,026 COPENHAGEN, registered August 5, 1997
Reg. No. 1,282,751 COPENHAGEN IT SATISFIES, registered June 19, 1984
Reg. No. 1,598,879 COPENHAGEN IT SATISFIES (fig), registered May 29, 1990
Reg. No. 4,108,553 COPENHAGEN SNUS, registered March 6, 2012
Reg. No. 4,240,213 COPENHAGEN NEAT CUT, registered November 13, 2012
(Exhibit 3 of the Complaint).
The Complainant has also trademark registrations for COPENHAGEN in various Central American states.
The Respondent registered <copenhagenmint.com> on January 16, 2016.
According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “a Panel shall 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 this case, the Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to the Complainant.
Therefore, under these special circumstances, the Panel decides to forego the traditional UDRP analysis, not to make any further findings or discussion, and instead order an immediate transfer of the <copenhagenmint.com > domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Giving the special circumstances in this case, the fact that Respondent has consented to the transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copenhagenmint.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 26, 2016
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