U.S. Smokeless Tobacco Company LLC v. Ash Buchan
Claim Number: FA1607001682623
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota. Respondent is Ash Buchan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoal.xyz> (“the Domain Name”), registered with Uniregistrar Corp.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2016; the Forum received payment on July 8, 2016.
On July 07, 2016, Uniregistrar Corp confirmed by e-mail to the Forum that the Domain Name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 July 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@skoal.xyz. Also on July 8, 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.
On July 26, 2016 the Respondent submitted an informal Response.
Complainant submitted a timely Additional Submission, which was received by the Forum on July 29, 2016.
The Respondent submitted a timely informal Additional Submission, which was received by the Forum on August 3, 2016.
On August 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns U.S. common law and incontestable registered trademark rights in the trademark SKOAL based on its long and continuous use of this iconic and famous brand in connection with smokeless tobacco since the 1930s.
The Domain Name is identical or confusingly similar to Complainant’s SKOAL mark. Respondent does not have rights or a legitimate interest in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Domain Name does not resolve to an active website. Hence Respondent does not use the Domain Name in connection with a bona fide offering of goods or services and is not making a noncommercial fair use of the Domain Name. Further, Respondent has never been known as or referred to as “Skoal.” The Whois record for the Domain Name identifies the Respondent as “Ash Buchan.”
As to bad faith, the initial registration of the Domain Name was in bad faith because Complainant’s rights to the SKOAL mark predate the registration of the Domain Name. Respondent undoubtedly was aware of Complainant and its SKOAL mark as the Domain Name prominently features the distinctive term “Skoal.” Finally, Respondent’s holding of the Domain Name for over one month without making active use of it further demonstrates bad faith.
B. Respondent
Respondent says the Domain Name does not constitute a bad faith registration. He proposes to use the Domain Name to create a noncommercial fan site and blog for a unique and iconic American product that is enjoyed by millions of customers.
The Complainant failed to register the Domain Name before it became available to the general public. The fact that it has been only one month since registering the Domain Name and the Respondent has not yet made any “bona fide active use" of it is not an indication of bad faith. Websites and blogs take time to create and become active.
The .xyz suffix is not a common domain name ending and is not accredited by ICANN. Therefore there is no jurisdiction to hear this complaint under the UDRP process.
In short, the Respondent contests the Complainant's challenge to a properly registered domain name that will be used for a legitimate and beneficial purpose.
C. Additional Submissions
Complainant
Respondent’s claim that he registered the Domain Name for the legitimate use of creating a noncommercial fan site and blog is not credible for the following reasons:
1. On July 8, 2016, after Respondent was served with the UDRP complaint, Respondent’s representative left a voice message for counsel for Complainant and during a subsequent telephone call on July 11, sought payment in exchange for the transfer of the Domain Name. The Complainant submits a declaration of counsel under penalty of perjury to this effect. Respondent’s offer to sell the Domain Name is directly contrary to Respondent’s now purported purpose for registering the Domain Name and the offer to sell demonstrates Respondent’s bad faith.
2. Respondent has not provided any documentary proof to substantiate this supposed new purpose.
3. The Domain Name itself does not suggest it was ever intended to be used with a fan site or blog. Rather, it solely comprises Complainant’s distinctive and well known SKOAL trademark.
Respondent’s submission lacks credibility, is inconsistent with the facts, and is an after-the-fact excuse for registering the Domain Name.
Respondent
This reads in full as follows:
“Given the opportunity to make a second response I would like to talk about our intent for the domain. When looking for a domain name for our fan site we found skoal.xyz which according to its dictionary definition means "to drink to toast". We registered the skoal.xyz domain name with the intent to develop a small fan site for my group of friends but with the birth of my first child I have not had time to start. Please take into consideration my intent and the fact that I personally have never asked for anyone to purchase this domain or have tried to sell it.”
The Panel has jurisdiction to hear this complaint.
The Complainant has established all the elements required to entitle it to transfer to it of the Domain Name.
As to Respondent’s submission that there is no jurisdiction to hear this complaint under the UDRP process, the ICANN website states that on December 5, 2013, ICANN and XYZ.COM LLC entered into a Registry Agreement under which XYZ.COM LLC operates the .xyz top level domain, which ICANN has delegated. The Uniregistrar Corp website at <https://uniregistry.com> lists .xyz as one of the domains for which that company is Registrar. As noted above, Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
Accordingly the Panel has jurisdiction to hear this complaint under the Policy.
Rule ¶ 15(a) 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."
Policy ¶ 4(a) requires that Complainant must prove each of the following three elements to obtain an order that the 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 Complainant is the proprietor of several United States registered trademarks for SKOAL including No. 2,086,020 for smokeless tobacco in Class 34, registered on August 5, 1997 with claimed first use in commerce on October 10, 1934.
Apart from the top level domain “.xyz”, which the Panel finds to be inconsequential, the Domain Name is identical to Complainant’s SKOAL mark.
Complainant has established this element.
The Panel finds that the SKOAL mark is distinctive and widely known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate his rights to or legitimate interests in respect of the Domain Name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent registered the Domain Name on May 31, 2016. It does not resolve to an active website. Respondent is not presently making any use of the Domain Name. Given the short time that elapsed between the registration of the Domain Name and the filing of this Complaint, the Panel is not prepared to find that Respondent’s non-use of the Domain Name of itself establishes the absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent.
Respondent does not contend that he is known by the Domain Name. He asserts that he plans to use the Domain Name for a fan site but has produced no evidence of demonstrable preparations in support of that claim. The Panel finds that Respondent has failed to establish any of the circumstances set out in Policy ¶ 4(c). Those circumstances are illustrative, not exhaustive.
In his Additional Submission Respondent relies on the dictionary meaning of the word “Skoal” as "to drink to toast". According to Wikipedia, the word “Skoal” may refer to an exclamation in a toasting ceremony or to a chewing tobacco brand made by Complainant. The Panel finds that the Domain Name would be generally understood in the USA as referring directly to Complainant’s product and would be taken as belonging to or approved by Complainant. Under these circumstances, the fact that the word “Skoal” may also refer to an exclamation in a toasting ceremony does not establish that Respondent has rights or legitimate interests in respect of the Domain Name.
Respondent says Complainant failed to register the Domain Name before it became available to the general public. The mere fact that Respondent registered the Domain Name, which he did subject to the Policy, does not confer upon Respondent rights or legitimate interests in respect of the Domain Name.
In the circumstances of this case the Panel finds that Respondent has not shown that he has rights or legitimate interests in respect of the Domain Name.
Complainant has established this element.
Policy ¶ 4(b) describes four circumstances which constitute evidence of registration and use of a domain name in bad faith; however, these four circumstances are not exclusive, and bad faith may be found for other reasons.
In his Response, Respondent said he proposes to use the Domain Name to create a noncommercial fan site and blog for a unique and iconic American product that is enjoyed by millions of customers. The Panel takes this to be a reference to Complainant’s smokeless tobacco and concludes that Respondent had Complainant’s product in mind when he registered the Domain Name and that Respondent then knew that the Domain Name would inevitably attract Internet users to any website he might establish by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. This is sufficiently close to the prohibition of Policy ¶ 4(b)(iv) for the Panel to find bad faith registration and use.
In his Additional Submission Respondent notes the dictionary meaning of the word “Skoal” as "to drink to toast" and says he selected the Domain Name with the intent to develop a small fan site for his group of friends. The Panel does not accept this explanation since it contradicts Respondent’s earlier Response and appears to be an afterthought designed to avoid the conclusion that he had Complainant’s mark in mind when registering the Domain Name.
Respondent contends that he personally has never asked for anyone to purchase the Domain Name or has tried to sell it. However, the Panel finds that a representative of Respondent sought to sell the Domain Name to Complainant, as declared on penalty of perjury by counsel for Complainant. The Panel finds that this willingness to sell the Domain Name is evidence of bad faith registration and use of the Domain Name pursuant to Policy ¶ 4(b)(i). See Sensient Techs. Corp. v. Russ Stringham c/o CompuCheap and Resco Enters., FA 1178364 (Nat. Arb. Forum June 4, 2008).
Complainant has established this element.
Complainant 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.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 13, 2016
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