U.S. Smokeless Tobacco Company LLC v. Na Shan
Claim Number: FA1701001713085
Complainant is U.S. Smokeless Tobacco Company LLC ("Complainant"), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Na Shan ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoal.site>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) ("HiChina").
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2017; the Forum received payment on January 20, 2017. The Complaint was received in both Chinese and English.
On January 19, 2017, HiChina confirmed by email to the Forum that the <skoal.site> domain name is registered with HiChina and that Respondent is the current registrant of the name. HiChina has verified that Respondent is bound by the HiChina 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 25, 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 14, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@skoal.site. Also on January 25, 2017, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 and its affiliated companies and predecessors in interest have sold smokeless tobacco products since the 1800s, and have used the SKOAL mark in connection with these products since the 1930s. SKOAL and related marks are the subject of various longstanding United States trademark registrations.
Respondent registered the dispute domain name <skoal.site> in September 2016. The domain name does not resolve to an active website. Complainant states that Respondent is not commonly known by the mark or domain name, and is not authorized or licensed to use the mark. Complainant contends on these grounds that the disputed domain name is identical or confusingly similar to Complainant's marks; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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(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.").
The Panel notes that the Registration Agreement is written in Chinese, thereby making that the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English. See, e.g., U.S. Smokeless Tobacco Co. v. Zhao Zhong Xian, FA 1710836 (Forum Feb. 14, 2017); Morgan Stanley v. Nashan, FA 1706094 (Forum Jan. 23, 2017); Morgan Stanley v. NaShan, FA 1703414 (Forum Dec. 14, 2016); E. Remy Martin & C° v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin, D2016-1948 (WIPO Dec. 5, 2016).
The disputed domain name <skoal.website> corresponds to Complainant's SKOAL mark, adding only the ".site" top-level domain, making it identical to Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., U.S. Smokeless Tobacco Co. v. Zhao Zhong Xian, supra (finding <skoal.website> identical or confusingly similar to SKOAL); E. Remy Martin & C° v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin, supra (finding <remymartin.site> identical or confusingly similar to REMY MARTIN); U.S. Smokeless Tobacco Co. v. Ash Buchan, FA 1682623 (Forum Aug. 13, 2016) (finding <skoal.xyz> identical to SKOAL). The Panel so finds.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known mark without authorization, and Respondent does not appear to have made any use of the domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009). Furthermore,
a domain name may be so closely connected with a well-known trademark that its very use by someone with no connection to the trademark owner may support an inference of bad faith. See, e.g., Altria Group, Inc. & Altria Group Distribution Co. v. Yu Fan / Fanyu, FA 1683563 (Forum Aug. 18, 2016).
Respondent does not appear to have made any active use of the disputed domain name. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., U.S. Smokeless Tobacco Co. v. Zhao Zhong Xian, supra (finding bad faith registration of <skoal.website> based upon inference of actual knowledge of SKOAL mark, and finding bad faith use based upon inactive holding of domain name following bad faith registration); Philip Morris USA Inc. v. Shan Na / Na Shan, D2016-1421 (WIPO Sept. 8, 2016) (finding bad faith based upon Respondent's registration and inactive holding of <marlboro.news>). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoal.site> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David E. Sorkin, Panelist
Dated: February 24, 2017
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