U.S. Smokeless Tobacco Company LLC v. Zhao Zhong Xian
Claim Number: FA1701001710836
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Zhao Zhong Xian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoal.website>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2017; the Forum received payment on January 9, 2017. The Complaint was received in both Chinese and English.
On January 6, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <skoal.website> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 January 13, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 2, 2017 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.website. Also on January 13, 2017, the Chinese language 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 February 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
U.S. Smokeless Tobacco Company LLC, by and through its predecessors in interest and affiliated companies (collectively “USSTC”), has been selling smokeless tobacco products since the 1800s. Today, USSTC is a leading manufacturer of smokeless tobacco products sold at retail to adult consumers under certain iconic and famous brands such as SKOAL and COPENHAGEN.
USSTC possesses longstanding common law rights in its SKOAL trademark dating back to the 1930s as well as numerous United States trademark registrations for marks comprising or containing its SKOAL mark, including the following: Incontestable Registration No. 504,609 for the mark SKOAL (stylized); Incontestable Registration No. 2,086,020 for the mark SKOAL; Incontestable Registration No. 1,052,574 for the mark SKOAL and Design; Incontestable Registration No. 1,344,928 for the mark SKOAL BANDITS; and Incontestable Registration No. 2,523,910 for the mark SKOAL LONG CUT.
USSTC operates a website for use by age-verified adult smokeless tobacco consumers 21 years of age or older at www.skoal.com, on which it provides information about SKOAL smokeless tobacco products and special offers.
USSTC acquired both common law and registered rights in its famous SKOAL trademark long before Respondent registered the Domain Name on September 28, 2016.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Knowing of USSTC’s exclusive rights to the SKOAL trademarks, Respondent registered the Domain Name to capitalize on the goodwill associated with this famous brand. Respondent’s registration of the skoal.website domain name constitutes bad faith registration and use of a domain name in which Respondent has no rights or legitimate interests.
Under Section 4(a) of the UDRP, an administrative proceeding resulting in the transfer of a domain name to the complainant is required where (i) the domain name is identical or confusingly similar to the trademark in which the complainant has rights, (ii) the domain name holder has no rights or legitimate interests in the domain name, and (iii) the domain name has been registered and is being used in bad faith. As will be more fully explained below, USSTC has made the necessary showing for the Domain Name to be transferred.
[a.] The Domain Name Registered By Respondent Is Confusingly Similar To Marks In Which USSTC Has Rights
USSTC owns U.S. common law rights in its SKOAL trademark based on its long and continuous use of its iconic and famous brand since the 1930s. As set forth above, USSTC also owns numerous U.S. trademark registrations for marks comprising or containing SKOAL, many of which have become incontestable. An incontestable registration serves as “conclusive evidence of the validity of the registered mark and of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115 (b) (emphasis added). See also Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum March 18, 2004) (citing Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985) to confirm that incontestable registrations are conclusive evidence of the registrant’s exclusive right to use the mark). Without question, USSTC owns valuable rights in its iconic and famous SKOAL trademark.
The Domain Name is nearly identical and confusingly similar to Complainant’s well-known SKOAL mark, as it consists of the distinctive SKOAL designation combined with the top-level domain “.website.” The addition of the generic top-level domain “.website” does not serve to distinguish the Domain Name from the SKOAL mark. See Hugh Jackman v. Peter Sun, FA 248716 (Nat. Arb. Forum May 10, 2004) (“Generic top-level domains are irrelevant in determining whether a domain name is identical to another’s mark.”).
Without question, the skoal.website domain name was chosen by Respondent because of the Domain Name’s association with USSTC and its SKOAL trademark. The Domain Name is nearly identical to Complainant’s SKOAL mark. Thus, Section 4(a)(i) of the UDRP Policy is clearly satisfied, as the Domain Name is “identical or confusingly similar” to trademarks in which USSTC has rights.
[b.] Respondent Has No Rights or Legitimate Interests In the Domain Name
Respondent does not use the Domain Name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the Domain Name; and Respondent has never been known as or referred to as “Skoal.” As such, Respondent does not have a legitimate interest in the Domain Name, as legitimate interests are defined in Sections 4(c)(i)-(iii) of the UDRP Policy.
The skoal.website domain name does not resolve to an active website. “The passive holding of a domain name confusingly similar to Complainant’s mark is not a bona fide offering of goods under 4(c)(i) nor is it a legitimate noncommercial or fair use under 4(c)(iii).” Bronco Wine Co. v. Midnight Wine Cellars a/k/a/ Joe Thrift, FA 97740 (FORUM Aug. 2, 2001). See also Golf Galaxy, Inc. v. yu dezheng, FA1307001509462 (FORUM Sept. 5, 2013 (finding no rights or legitimate interest because “Respondent is currently failing to make an active use of the disputed domain”).
Moreover, Respondent is not commonly known as “Skoal.” The Whois record for the Domain Name identifies the Respondent as “Zhao Zhong Xian/ Zhao Zhong Xian.” Failure of the WhoIs record to indicate that Respondent is commonly known by the domain name suggests that Respondent is not known by Complainant’s SKOAL trademark. See Tercent Inc. v. Yi, FA 139720 (FORUM Feb. 10, 2003); see also Emmitt J. Smith, III v. EMMITTSMITH.COM c/o Whois IDentity Shield, FA 555486 (FORUM Sept. 25, 2005) (held that where the respondent’s whois record merely listed the registrant as a domain name privacy service, there was “no evidence in the record suggesting that Respondent is commonly known by the <emmittsmith.com> domain name”); Middle Atlantic Products, Inc. v. Domain Administrator c/o Whois IDentity Shield, FA 1081303 (FORUM Oct. 5, 2007 (where Respondent used a domain privacy service, held that “[n]othing in the evidence before the Panel indicates that Respondent is commonly known by the domain name” at issue). In the instant case, Respondent cannot credibly argue that it is commonly known by Complainant’s SKOAL trademark. Indeed, the only logical conclusion is that Respondent intends to use such a designation solely to trade on the goodwill of the SKOAL mark and to cause a likelihood of confusion.
Furthermore, Respondent is not authorized or licensed by Complainant to use its SKOAL trademark in any form. Given that Respondent is not using, and has not used, the Domain Name in connection with a bona fide offering of goods or services, that Respondent is not known by the SKOAL designation, and that Respondent is not making and has not made a legitimate noncommercial or fair use of the skoal.website domain name, it is apparent that Respondent has no rights or legitimate interest in the Domain Name, as defined in Paragraphs 4(c)(i)-(iii) of the UDRP. As such, USSTC has satisfied the second element of its complaint under UDRP ¶4(a)(ii).
[c.] Respondent Registered and Is Using the Domain Name In Bad Faith
“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).” Hugh Jackman v. Peter Sun, FA 248716 (FORUM May 10, 2004); see also Digi Int’l v. DDI Sys., FA 124506 (FORUM Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); Eastman Kodak Co. v. Dionne Lamb, FA 97644 (FORUM July 17, 2001) (“Registering a domain name that the registrant knows belongs to someone else and that the registrant knows will confuse the users about the source or sponsorship of the domain name is bad faith.”); See also Collegetown Relocation, L.L.C. v. John Mamminga, FA 95003 (FORUM July 20, 2000) (“When registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”). 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. See Phoenix Mortgage Corp. v. Tom Toggas, WIPO Case No. D2001-0101 (Mar. 30, 2001) (finding that the Policy “necessarily implies that the Complainant’s rights predate the Respondent’s registration . . . of the domain name”); see also Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys Inc., FA 93636 (FORUM Mar. 13, 2000) (“The domain name ‘sound-choice.com’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party.”) Here, Respondent undoubtedly was aware of Complainant and its SKOAL mark as the Domain Name prominently features the distinctive term “Skoal.” Furthermore, when a user searches for the skoal.website domain name, the search returns numerous results that refer to Complainant’s SKOAL products. This is additional evidence that Respondent registered the Domain Name in bad faith to cause confusion with Complainant’s SKOAL mark.
Respondent’s holding of the disputed domain name without making active use of it further demonstrates bad faith pursuant to Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (FORUM Feb. 28, 2007) (holding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute bad faith); Caravan Club v. Mrgsale, FA 95314 (FORUM Aug. 30, 2000) (holding that lack of use permits an inference of bad faith registration and use). Respondent has held the skoal.website domain name since September of 2016 and has failed to make any bona fide active use of the Domain Name. This also demonstrates Respondent’s bad faith.
There is ample evidence that Respondent registered and is using the skoal.website domain name in bad faith. As such, the third and final element of USSTC’s Complaint is satisfied. See Policy ¶4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 operates in the smokeless tobacco industry and uses the SKOAL mark in connection with various products. Complainant registered the SKOAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,086,020, registered Aug. 5, 1997). Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even where a respondent operates and/or resides in a different country. Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Complainant has rights in the SKOAL mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <skoal.website> includes the SKOAL mark in its entirety with the gTLD “.website”. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Chex Systems, Inc. v. Mark Heinrich, FA 1578916 (Forum Oct. 8, 2014) (finding that “Respondent clearly took advantage of the “.systems” new top-level domain to make a domain name that is effectively identical to the trademark.”). Respondent registered <skoal.website> to merely take advantage of the new “.website” TLD to register an identical domain name under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in <skoal.website>. Where no response is on record, panels look to WHOIS information under Policy ¶4(c)(ii) and apply their common sense. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS lists “Zhao Zhong Xian” as the registrant. There is no obvious relationship between the registrant’s name and the domain name. Respondent has failed to submit a Response in this proceeding, which might have explained if there was a relationship. Respondent is neither licensed nor authorized to use Complainant’s SKOAL mark. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims <skoal.website> does not resolve to an active website. Where no active use is associated with a domain name (which is broader than simply not having a website), then no rights or legitimate interests may exist because of the domain name’s registration. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Complainant has provided screenshots of search engine results returned from inputting the disputed domain name. No bona fide offering of goods or services or any legitimate noncommercial or fair use exists under Policy ¶¶4(c)(i) and 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
When Complainant does not make any claims that fall within the articulated provisions of Policy ¶4(b), Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The factors under Policy ¶4(b) are not exclusive.
Complainant claims Respondent had actual knowledge of the SKOAL mark and Complainant’s rights in the mark. It seems the SKOAL mark is famous enough to conclude Respondent knew about the mark at the time the disputed domain was registered, even though Respondent was based in China. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The domain name includes Complainant’s mark entirely. Complainant’s mark predates the domain name registration by many years. This Panel must conclude Respondent was “well aware” of Complainant and its rights in the SKOAL mark. Respondent registered and used the domain name with actual knowledge under Policy ¶4(a)(iii).
Complainant claims Respondent inactively held the domain name. Inactive holding of a domain name may be evidence of bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent registered and “used” the domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <skoal.website> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, February 14, 2017
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