U.S. Smokeless Tobacco Company LLC v. Joshua Eisenhower
Claim Number: FA1706001736637
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Joshua Eisenhower (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skoal.us>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2017; the Forum received payment on June 22, 2017.
On June 22, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <skoal.us> 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 h the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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.us. Also on June 26, 2017, 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 July 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
1. Complainant, U.S. Smokeless Tobacco Company LLC, is a leading manufacturer of smokeless tobacco products. Complainant has rights in the SKOAL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,086,020, registered Aug. 5, 1997.) Respondent’s <skoal.us>[1] domain name is identical or confusingly similar to complainant’s mark as it includes the entirety of the SKOAL Mark in combination with the country code top-level domain (“ccTLD”) “.us.”
2. Respondent does not have rights or legitimate interests in the <skoal.us> domain name. Respondent is not commonly known by the domain name and Complainant has not granted respondent permission or license to use the SKOAL mark any purpose.
3. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the <skoal.us> domain name does not resolve to an active website and Respondent is offering to sell the domain name.
4. Respondent has registered and uses the <skoal.us> domain name in bad faith. Respondent does not make an active use of the domain and is offering the domain name for sale.
5. Further, Respondent had actual knowledge of Complainant’s SKOAL mark when he registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKOAL mark. Respondent’s domain name is confusingly similar to Complainant’s SKOAL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skoal.us> domain name and that Respondent registered and uses the domain name 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 has rights in the SKOAL mark based upon its registration with the USPTO (e.g., Reg. No. 2,086,020, registered Aug. 5, 1997.) Registration of a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s <skoal.us> domain name is identical or confusingly similar to the SKOAL mark as it contains Complainant’s mark in its entirety merely adding the ccTLD “.us.” The addition of a ccTLD is insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Accordingly, the Panel finds that the <skoal.us> domain name is identical to the SKOAL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skoal.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <skoal.us> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the SKOAL mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Joshua Eisenhower”. Additionally, the record supports Complainant’s contention Respondent has not been authorized to register a domain name using Complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <skoal.us> domain name is shown by Respondent’s failure to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has produced evidence that Respondent’s domain name does not resolve to an active website. The failure to make an active use of a domain name confusingly similar to a complainant’s mark is not a bona fide offering of goods under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ (4)(c)(iii). See 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”).
Further, Respondent has offered to sell the <skoal.us> domain name. Respondent specifically states “Buy This Domain Now $399 USD.” Offers to sell a domain name containing a mark in which a complainant has rights shows a respondent’s lack of rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel therefore finds that Respondent has failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent is not making active use of the <skoal.us> domain name. The failure to make an active use of a domain name under the circumstances of this case 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). The Panel agrees with Complainant and finds that Respondent registered and uses <skoal.us> in bad faith.
Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the SKOAL mark prior to registering the <skoal.us> domain name—evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). It is apparent that Respondent had actual knowledge of Complainant’s rights to the SKOAL mark because the mark was registered almost 20 years before the domain name was registered and because Respondent incorporated Complainant’s mark in its entirety in the <skoal.us> domain name. This supports a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoal.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 7, 2017
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