Swedish Match UK Limited v. Admin, Domain
Claim Number: FA0612000873137
PARTIES
Complainant is Swedish Match UK Limited (“Complainant”), represented by Neil J. Muttock, of Hillgate Patent Services, 6 Aztec Row, Bernes Road, London N1 0PW, United Kingdom. Respondent is Admin, Domain (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <swanweb.com>, registered with eNom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. O’Connor, Chair, Diane Cabell, Petter Rindforth, Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2006.
On December 18, 2006, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <swanweb.com> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). This decision is being rendered in accordance with the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
On January 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@swanweb.com by e-mail.
A timely Response was received and determined to be complete on January 24, 2007.
On January 29, 2007, the National Arbitration Forum received an Additional Submission from Complainant and determined it to be timely and complete pursuant to Supplemental Rule 7.
On
January 30, 2007, pursuant to Respondent’s request to have the dispute decided
by a three-member Panel, the
National Arbitration Forum appointed Bruce E. O’Connor, Chair, Diane Cabell,
Petter Rindforth, as Panelists.
On
February 5, 2007, the National Arbitration Forum received an Additional
Submission from Respondent and determined it to be timely and complete pursuant
to Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the owner of various registered trademarks comprising: the word “Swan” on its own; word marks comprising the word “Swan” in combination with other words; marks including the word “Swan” in combination with a device; and marks incorporating pictorial representations of a swan. The registrations are in various European countries and a few other countries, and protect the marks for tobacco and tobacco related goods including cigarette papers and filters. These will be hereafter referred to as the “SWAN marks.” Complainant supports this contention with a listing of the registrations and selected copies of the registrations on which it particularly relies.
Complainant contends that it is the owner of the unregistered trademark SWANWEB.COM, for tobacco related goods including cigarette papers and filters. Complainant supports this contention with archived web pages from the site previously operated by Complainant at a web site using the domain name <swanweb.com>, with samples of use of the SWAN marks and the domain name <swanweb.com> on packaging, and a statement by an employee of Complainant that also attests to the sale in the European Union of approximately 60,000,000 packs of filters and 40,000,000 pack of papers per annum, each bearing the SWAN marks and the domain name <swanweb.com>, for the past five years.
Complainant contends that the domain name at issue is identical to the unregistered trademark SWANWEB.COM.
Complainant contends that Respondent has no rights or legitimate interests in the domain name at issue. Complainant contends that there is no connection between Respondent and Complainant. Respondent currently offers a “landing page” at <swanweb.com>. Complainant contends that there is nothing to suggest that any of the good or services offered for sale via links at that landing page is actually produced or supplied by the Respondent, and that there is no apparent connection between those goods and services other than the occurrence of the SWAN marks.
Complainant contends that there is nothing in the WHOIS record for the domain name at issue to indicate that Respondent is commonly known by the domain name.
Complainant contends that it has carried out searches in the UK and in the register of Community trademarks for any trademarks registered in the name of Respondent “Admin, Domain” and “eCommerce Advertising” and a search on Google for combinations of the those names with “swanweb,” and has found no marks or trade names that would evidence any bona fide offering of goods or services by Respondent.
Complainant contends that Respondent has registered and used the domain name at issue in bad faith. Complainant contends that the traffic generated by Complainant’s enormous volume of advertising previously described, amounting to use of the domain name <swanweb.com> on approximately 500,000,000 consumer products units sold within the European Union within the past five years, has been diverted by Respondent for commercial gain to its landing page provided by various third parties (DomainSponsor.com and Hitfarm.com).
A visit by Complainant to <swanweb.com> on May 2, 2006 resolved to a landing page containing links to products of Complainant’s competitors as well as to various unrelated commercial products and services, including drug related paraphernalia and gambling sites. Complainant supports this contention with copies of web pages obtained during that visit.
A visit by Complainant to <swanweb.com> on December 18, 2006 resolved to a landing page containing numerous links, each of which resolved to a page containing further links to various third party commercial products and services, many including the term “Swan.” Complainant supports this contention with copies of web pages obtained during that visit.
Complainant points to a statement provided on a web page of the current landing page sponsor that indicates that parking a domain with that sponsor allows registrants to “expect a hassle-free and investment-free opportunity to effectively and efficiently monetize traffic to your domains.”
Complainant contends that the use of these landing pages misleadingly diverts Complainant’s customers for commercial gain, by creating a likelihood of confusion with the SWAN marks and the SWANWEB mark as to the source of Respondent’s online location, and by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the products reached through the landing pages, none of which is supplied or endorsed by Complainant.
Complainant contends that the use of these landing pages tarnishes the SWAN mark and the SWANWEB mark and the reputation of Complainant, through links to various unrelated commercial products and services, including drug related paraphernalia and gambling sites, and dilutes the SWAN mark and the SWANWEB mark.
Complainant contends that it allowed its previous registration for the domain name at issue to lapse through inadvertence. Complainant contends that Respondent intentionally registered the domain name at issue to prevent Complainant from reflecting its SWAN mark and its SWANWEB.COM mark at its long established web site, and that Respondent has engaged in a pattern of similar conduct, citing three decided UDRP proceedings in which Respondent was found to have registered and used the respective domain name in bad faith.
B. Respondent
Respondent identifies itself as “eCommerce Advertising.”
Respondent contends that it acquired the domain name at issue when it expired.
Respondent submits a statement by an individual identified as the “domain name manager” for eCommerce Advertising declaring that: the domain name at issue was acquired because it contained the common words “swan” and “web;” Respondent did not register the domain name at issue with Complainant’s trademark in mind and had no knowledge at the time of registration of Complainant or its trademark; Respondent did not register the domain name at issue with the intent to disrupt Complainant’s business or to confuse consumers or to prevent Complainant from owning a domain name incorporating its trademark.
Respondent hosts the domain name on a web page that presents sponsored search results, provided initially by HitFarm.com and now provided by DomainSponsor.com.
Respondent contends that Complainant’s trademark is SWAN, which is a common word in the dictionary for an aquatic bird, citing a dictionary definition. Respondent states that a Google search for the word “swan,” excluding Complainant’s good and services, yielded 30 million third party web pages containing the term. Respondent thus contends that Complainant does not have exclusive rights to the term.
Respondent contends that the domain name at issue is not identical to Complainant’s trademark SWAN, and that the domain name at issue and the trademark SWAN are not likely to be confused. In support of this latter contention, Respondent argues that SWAN is a common word that is entitled to only a very minimal degree of protection under the UDRP and that the addition of another term such as WEB, even though descriptive, is sufficient find that the domain name at issue and Complainant’s trademark are not confusingly similar. Respondent cites various cases in support of this contention.
Respondent contends that it has rights and a legitimate interest in the domain name at issue.
Respondent contends that the nondistinctiveness of the Complainant’s trademark and the lack of knowledge by Respondent of Complainant or its trademark should establish Respondent’s rights and legitimate interests in the domain name at issue. Respondent states that 38 million third party web pages unrelated to Complainant were found in a Google search for the term “swan,” and submits a copy of the search results. Respondent also cites various cases for the proposition that a common term domain name establishes the owner’s rights and legitimate interests.
Respondent contends that its legitimate interest is bolstered by its use of the domain name in dispute in the bona fide provision of advertising services. Respondent contends although some of the sponsored search results appearing on Respondent’s site relate to Complainant’s business, Respondent has no control over these results and is not responsible for them. Respondent cites various cases in support of its contention.
Respondent contends that its lack of knowledge of Complainant and its mark avoids a finding of bad faith. Respondent contends that the sponsored listings appearing on Respondent’s web site are also not evidence of bad faith, because those listings are provided by a third party (Yahoo in this instance). Respondent cites various cases in support of its contention.
Respondent contends that the registration of a generic or common term, as is the case with the domain name at issue, is not evidence of bad faith. Respondent cites various cases in support of its contention.
Respondent contends that the registration of a deleted domain name is a factor weighing against bad faith, because the deletion is a sign of abandonment. Respondent cites various cases in support of its contention.
C. Additional Submission of Complainant
Complainant contends that Respondent has not rebutted Complainant’s contention that it had trademark rights in SWANWEB.COM and thus admits the same.
Complainant discusses and distinguishes the various cases cited by Respondent regarding the strength or weakness of the SWAN marks, pointing out that the word “Swan” is not descriptive of Complainant’s products, that the trademark registrations owned by Complainant carry a presumption of distinctiveness, and that the large number and age of those trademark registrations evidence both distinctiveness and the breadth of Complainant’s trademark rights.
Complainant states that Respondent is not a retailer of swans, and thus has no bona fide interest in a domain name including the word “Swan.” Complainant discusses and distinguishes a case cited by Respondent as pertaining to only domain names that include a term that is descriptive of the goods and services being offered through use of the domain name. Complainant again contends that Respondent has used the domain name to market tobacco related goods in direct competition with Complainant.
Complainant discusses and distinguishes another case cited by Respondent, arguing that the mere registration of a generic word as a domain name is not sufficient to create a legitimate interest if the intention of the respondent was to capitalize on the complainant’s trademark.
Complainant contends that the business strategy of Respondent is to capitalize on the traffic in the domain name at issue. Complainant contends that although the addition of the term “web” to the word “Swan” does not add distinctiveness, the combination has no made-up meaning. Complainant submits a Google search for “swanweb” that shows only 619 hits, establishing that the search results are far less that the “substantial third party use” that Respondent contends and belying Respondent’s contention that Respondent picked the domain name at issue to generate income from traffic in domain names. Complainant contends that the value in the term “swanweb” is substantially derived from its use as Complainant’s trademark.
Complainant contends that Respondent must have been aware of the trademark SWANWEB when registering the domain name at issue, because the combination of “swan” and “web’ is not obvious and because of Complainant’s previous registration of the domain name at issue. Complainant supports this contention by copies of the WHOIS records for both Complainant’s prior and Respondent’s current registration of the domain name at issue, both of which show one of the SWAN marks.
Complainant discusses various cases in which the registrant was found to have no rights or legitimate interests in the domain name despite a large number of hits found on a Google search of the domain name.
Complainant contends that Respondent has used the domain name at issue to advertise tobacco related products as well as a whole raft of products and services unrelated to swans, and that it is ludicrous for Respondent to hold itself out as having a legitimate interest in aquatic bird life, and support this contention with reference to Respondent’s pages discussed in the Complaint.
Complainant contends that Respondent’s argument regarding descriptiveness cannot be accepted because any domain name containing a common word, such as “Ford,” Coca Cola” and “Jaguar,” would thus be protected from attack under the UDRP.
Complainant contends that those reselling domain names or using them for advertising links are required to make good faith efforts to avoid registering and using domain names that are identical or confusing similar to marks held by others, citing a case for its contention.
Complainant discusses and attempts to rebut the cases cited by Respondent, and cites additional cases, regarding the contention that pay-per-click advertising is sufficient to show a legitimate interest.
Complainant contends that Respondent must bear responsibility for the actions of third parties hosting its web site, because of its authorization of that third party to use the domain name at issue for commercial gain.
Complainant contends that any legitimate interest in a domain name must necessarily be regarded as embracing a legitimate interest in the content of any web site that is accessed using that domain name. Respondent’s admission that it does not control content on its web site thus comprises conclusive evidence that Respondent does not have a legitimate interest in the domain name.
Complainant takes issue with Respondent’s contention that it was unaware of Complainant or its trademarks. Complainant contends that “Ecommerce Advertising” is not the name of a natural or legal person, and that the statement of the person making a declaration on behalf of Ecommerce Advertising does not give address or contact details for that entity so that it is impossible to verify the existence of that person.
Complainant discusses a case standing for the proposition that a serial registrant of other’s trademarks was guilty of bad faith and finding the respondent’s declarant therein of doubtful veracity. Complainant submits that Respondent is such a serial registrant, pointing out the three UDRP cases discussed in the Complaint and speculating as to additional UDRP proceedings in which Respondent may have been involved because Respondent chooses to conceal its identity behind its pseudonym or trading name.
Complainant refers to a remark by Respondent in an email to the Forum’s case administrator, not part of the record here, that “ …The big companies pay you $2,000 and you give them the domain…” as evidence that Respondent is a serial registrant of other’s trademarks.
Complainant contends that its SWAN marks are famous and well-known marks, and supports that contention with the evidence already submitted with the Complaint and with an attached third party web site found through a Google search. Such evidence according to Complainant should be given more weight than an unverifiable assertion of ignorance by an unidentifiable individual.
Complainant contends that the Respondent’s use of the domain name at issue to advertise tobacco related goods immediately after registration is evidence that Respondent was aware of Complainant’s mark at the time of registration. Again, Complainant holds Respondent and not its service providers responsible for the content of the web sites using the domain name at issue.
Complainant contends that ignorance cannot provide a complete defense against a UDRP proceeding, and makes an analogy to trademark infringement cases in which ignorance precludes the awarding of damages but not of injunction.
Complainant again argues that the Registrant must use some good faith effort to avoid infringement of Complainant’s marks. Complainant contends that its failure to renew its registration of the domain name at issue does not relieve Respondent of its obligation to make that good faith effort. Complainant contends that Respondent’s argument of abandonment is unavailable, since Respondent has contended that it was unaware of Complainant and its trademarks. Complainant contends that it has not abandoned its SWAN and SWANWEB trademarks, as evidenced by the Complaint.
Complainant contends that the hard copy of the Complaint could not be delivered because Respondent’s WHOIS address does not appear to exist, and Respondent’s WHOIS telephone number was not answered. Complainant concludes that Respondent gave a false address when registering the domain, creating a presumption of bad faith.
Complainant points out that the name “Ecommerce Advertising” does not appear in the WHOIS record, and introduces confusion as to who is the real party in issue, reinforcing the presumption of bad faith.
Complainant notes that the Response fails to provide the name, postal address, email address, telephone and fax numbers of the Respondent, as required by the Rules, paragraph 5(b)(ii). Complainant contends that Respondent is attempting to conceal its identify and address, thus making it impossible to determine any question of impartiality and independence under paragraph 10(b)(ii) of the Supplemental Rules, and thus making it difficult to establish whether Respondent is a serial registrant of third party trademarks. Complainant also attacks the veracity of the person submitting a declaration on behalf of Respondent, because of the absence of any details verifiably identifying the individual concerned. Complainant thus requests that the Response be inadmissible due to failure to comply with paragraph 5(b)(ii) of the Rules.
D. Additional Submission of Respondent
Respondent contends that the appearance of links on its web pages to third parties competitive with or unrelated to Complainant is without intent of Respondent and without knowledge of Complainant’s trademark rights. Respondent contends that appearance of auto-generated links does not establish bad faith registration, citing a case in support, and that even if those links were found to be bad faith use, they do not establish bad faith registration because the links occurred after registration.
FINDINGS
The Panel finds that Complainant has established trademark rights in the SWAN marks for tobacco related goods, through its numerous trademark registrations and through its evidence of use of the SWAN marks for tobacco related goods, both on packaging and on the web site previously operated by Complainant at <swanweb.com>. See The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish the complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
The Panel notes that although many of the registrations submitted by Complainant are in the names of companies other than Complainant, those companies appear to be related to Complainant either as a predecessor-in-interest or as a parent. The Panel takes notice that it is the practice of modern corporations to engage in express or implied licensing of trademarks held by one entity to another entity, and thus finds that Complainant has been licensed or otherwise authorized to use and enforce trademark rights in the SWAN marks.
The Panel finds that Complainant has not established trademark rights in the SWANWEB mark. All trademark laws require that a trademark be distinctive and be used in a distinctive manner. The only evidence of use submitted to the Panel is as a domain name that is part of the URL <swanweb.com>. The packaging submitted as evidence by Complainant shows that URL being used in a nondistinctive manner, in the fashion of an address, immediately below the SWAN marks.
The WHOIS records submitted by Complainant identify the Respondent only as “Admin, Domains.” Respondent identifies itself as “eCommerce Advertising.” The current WHOIS record identifies Respondent as “Admin, Domains” and includes a fax address beginning with “eCommerce Advertising.” From this record, and from the representations and submissions by Respondent, the Panel finds that “eCommerce Advertising” is a trade name used by “Admin, Domains” and is not a separate party.
The Panel finds that the following factual contention of Respondent is not supported by any evidence and is inadmissible:
A Google search for the word “swan,” excluding Complainant’s goods and services, that yielded 30 million third party web pages containing the term.
Otherwise, the factual contentions of the parties have been admitted and considered in this decision.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Panel finds that the domain name at issue is confusingly similar to the SWAN marks. The domain name is distinguished only by the addition of the generic term “web” that, in the context of the Internet, can only have reference to the “World Wide Web” and that thus refers to a site that displays information in HTML format; and, by the addition of the generic term “com” that is a top level domain used on the Internet. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel’s finding of confusing similarity is bolstered by the use of the domain name at issue by Respondent in advertising tobacco related goods, which are precisely those protected by the SWAN marks.
Respondent’s contention that “swan” is a generic term for a species of aquatic bird and is a common word does not convince the Panel to change its finding. The fact that a Google search for the term “swan” yielded 38 million third party web pages unrelated to Complainant is irrelevant. The trademark rights acquired by Complainant in the SWAN marks mean that the word ‘swan” has been withdrawn from the public domain, insofar as it relates in any way to tobacco related goods. Respondent’s contention that “SWAN’ is a weak mark not entitled to a broad scope of protection is likewise unconvincing to the Panel. The evidence submitted by Complainant, including the number and breadth of its trademark registrations, its extensive use on packaging, and its worldwide promotion on the Internet through the site previously operated by Complainant using the URL <swanweb.com>, show that the SWAN marks are strong marks for tobacco related goods.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been
commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent has not established in any way that it is known by the domain name at issue. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Respondent also admits that its use of the domain name is for advertising services, i.e., commercial purposes. The circumstances of paragraphs 4(c)(ii) and (c)(iii) are therefore inapposite to this case.
Respondent contends that it acquired the domain name because it included the common words “web” and “swan,” without knowledge of Complainant or the SWAN marks, and that it uses the domain name in conjunction with the legitimate service of hosting a web page featuring sponsored search results provided in turn to Respondent by third parties.
The evidence cited by Respondent in support of these contentions includes the declaration of an individual representing Respondent. This declaration includes nothing more than fact conclusions, and lays no foundation for the conclusions or for the qualifications of the individual to make the conclusions. Accordingly, the Panel finds the declaration unpersuasive as to the fact conclusions made, which also pertain to the issue of bad faith, and will not further consider the declaration in this decision.
Majority – Bruce E. O’Connor, Petter
Rindforth
The Majority finds that the evidence supports both knowledge of Respondent as to Complainant and the SWAN marks, and the lack of a bona fide offering of goods and services by Respondent in conjunction with the domain name at issue.
Regarding knowledge, the Majority notes that Respondent must have had notice of Complainant and the SWAN marks at the time of registration. Complainant had used the SWAN marks and the domain name at issue for five years prior to Respondent’s registration of the domain name at issue. The WHOIS record for Complainant’s registration of the domain name at issue includes a web page prominently displaying the SWAN marks (the same web page also appears in the WHOIS record for Respondent’s registration of the domain name at issue). The combination of “swan” and “web” is not common and not to be expected for a domain name registration that closely followed the deletion of an identical domain name registration.
Regarding bona fide offering, the Majority notes
that “advertising” or “pay-per-click” or “sponsored search” services of the
type offered by Respondent can be legitimate.
In this situation, however, the initial and continuing use of the domain
name has been at web pages that direct users to web pages that are competitive
with Complainant and its tobacco related goods or to pages that pertain to
products that are unrelated to tobacco related goods. The landing pages that are the subject of
evidence introduced by Complainant show this misdirection clearly, with the first
occurring no more than 4 months following Respondent’s acquisition of the
domain name at issue. The Majority on
its own has visited the web page provided by Respondent at <swanweb.com> and takes notice that the situation
continues. On that web page, there are
prominent links to “cigarettes” and “filter tips” and “Swan filters.” The first two resolve to links to web pages
featuring tobacco related products that are competitive with Complainant, and
the third resolves to links to web pages featuring filters such as water
filters that are unrelated to tobacco related products. The use of the SWAN marks in such a manner
cannot be considered in any circumstance to be bona fide. See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb.
Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also The Royal Bank of Scot. Group plc v. Demand
Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites).
Respondent contends that its legitimate interest is established by the 38 million hits in a Google search for the word “swan” excluding tobacco related products. That contention is unpersuasive to the Majority given the evidence discussed above.
Respondent contends that its
service providers over whom Respondent has no control provide the sponsored
search results or links on its web pages.
The Majority notes that Respondent has not introduced any evidence of
its lack of control, such as by introduction of its agreements with these
service providers. Even if Respondent
were able to establish such lack of control, the Majority would still find
Respondent responsible for these links because it is Respondent who has
authorized the service providers to use the domain name at issue. See Ideal Products, LLC v.
Manila Industries, Inc., FA0610000819490 (Nat. Arb. Forum Nov. 30,
2006) (“Respondent cannot duck its responsibility for the site by saying
that others choose the content. Passive
holding of a domain name is neither evidence of or
against bad faith, and must be evaluated in light of all of the circumstances
relating to the domain name.”).
Respondent might have a case in the situation that it was using the domain name at issue in dealing in any way with swans. Such is not the situation here.
The cases cited by Respondent have been considered, but are believed by the Majority to be clearly distinguishable on their facts from the present case.
The Majority finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
Dissent – Diane Cabell
The UDRP was
drafted with a clear recognition that the World Wide Web would attract a
multitude of disparate commercial enterprises into the same Internet
marketplace. Principles of fairness and
real-space trademark law prompted a set of defenses that recognize the
territoriality of marks and attempted to ensure that the blissfully ignorant
vendor who has operated in China for thirty years would not be thrust offline
simply because an equally legitimate vendor in the US happens to have
registered a mark in the US for the same name. Both are legitimate
vendors; the UDRP, with its avowed goal of minimalism (see Second Staff Report
on Implementation Documents for the Uniform Dispute Resolution Policy,
Discussion Section 4.1(c) at <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm)
is not intended to resolve their conflict.
That is a straightforward infringement action to be tried in a court of
law.
This panelist
believes that sites which are used for the sole purpose of commercial
advertisement for third party goods and services are as bona fide as a billboard, the land-based equivalent. This
does not excuse a domain holder from policing the content on its site to ensure
that it does not violate another's trademark. However, under ¶ 4(c)(i), it does excuse a mark owner from a UDRP action if that
owner received no notice of the dispute prior to the commencement of the UDRP
complaint. The language of the UDRP is quite clear. No such notice
was provided in this case therefore the Complainant should seek a judicial
remedy.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of paragraph 4(b)(iv) appear to be pertinent:
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
As established by Complainant, the confusing similarity between the domain name at issue and the SWAN marks makes it likely that Internet users attracted to Respondent’s web page will mistakenly believe that Respondent’s web page is sponsored by Complainant. Respondent is profiting from this confusion by advertising the sale of goods and services in competition with Complainant. Respondent’s intent in doing so is established by its knowledge and lack of bona fide offering as previously discussed. Respondent admits that its advertising is done for commercial gain. These acts establish bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
As established by Complainant, one additional example of bad faith is the inclusion of false information in a WHOIS registration. Respondent has used a name in its WHOIS registration that is different from the name used in its Response and the accompanying declaration. The address used by Respondent in its WHOIS registration does not exist, and the telephone number used by Respondent in its WHOIS registration is not answered. These acts are further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T] he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”); see also Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).
Respondent contends that the registration of a deleted domain name is a factor weighing against bad faith, because deletion is a sign of abandonment. The Panel finds that Complainant has not abandoned the SWAN marks and has continued to use both those marks and the domain name at issue in its packaging, and is thus unpersuaded by the Respondent’s contention.
DECISION
Having established all three elements required under the ICANN Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swanweb.com> domain name be TRANSFERRED from Respondent to Complainant
Bruce E. O’Connor, Chair
Diane Cabell, Petter Rindforth, Panelists
Dated: February 13, 2007
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