Swisher International, Inc. v. Gregory Bong
Claim Number: FA1004001320912
Complainant is Swisher International, Inc. (“Complainant”), represented by Paolo
A. Strino, of Lucas & Mercanti LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <how-to-roll-a-blunt-with-a-swisher-sweet.info>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 23, 2010.
On April 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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").
On April 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2010 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@how-to-roll-a-blunt-with-a-swisher-sweet.info. Also on April 27, 2010, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name is confusingly similar to Complainant’s SWISHER SWEETS mark.
2. Respondent does not have any rights or legitimate interests in the <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name.
3. Respondent registered and used the <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Swisher
International, Inc., holds a trademark registration for its SWISHER SWEETS mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,729,732 issued November 3, 1992) in connection with cigars, tobacco and
related products.
Respondent, Gregory Bong, registered the disputed domain name on March 6, 2010. The disputed domain name does not resolve to an active website.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant asserts rights in its SWISHER SWEETS mark
through its registration of the SWISHER SWEETS mark with the USPTO (Reg. No. 1,729,732 issued November 3, 1992). The Panel finds that Complainant’s
registration of its SWISHER SWEETS mark with the USPTO is sufficient evidence
of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶
4(a)(i).”); see also
Complainant alleges that Respondent’s <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name is confusingly
similar to Complainant’s SWISHER SWEETS mark.
Respondent’s disputed domain name contains the dominant features of
Complainant’s mark, deletes the letter “s” from Complainant’s mark, adds the
generic terms “how to roll a blunt with a” and adds hyphens and the generic
top-level domain (“gTLD”) “.info.” The
Panel finds that the deletion of the letter “s” from Complainant’s mark does
not negate a finding of confusing similarity between the disputed domain name
and Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that based on the arguments made in the Complaint, Complainant has met its burden and established a prima facie case in support of its allegations and Respondent has failed to submit a Response to these proceedings from which the Panel can infer that Respondent lacks rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Complainant argues that Respondent is not commonly known by
the disputed domain name and that Respondent has not been licensed or otherwise
permitted to use Complainant’s SWISHER SWEETS mark for any use including in a
domain name. The WHOIS information for
the disputed domain name lists the registrant as “Gregory Bong.” Without evidence to
the contrary, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the <lilpunk.com>
domain name as there was no evidence in the record showing that the respondent
was commonly known by that domain name, including the WHOIS information as well
as the complainant’s assertion that it did not authorize or license the
respondent’s use of its mark in a domain name); see also
Complainant argues that Respondent lacks rights and
legitimate interests in the disputed domain name. Respondent’s disputed domain name does not
resolve to an active website. The Panel
finds that Respondent’s failure to make an active use of the disputed domain
name is not a bona fide offering of
goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007)
(finding that the respondent had no rights or legitimate interests in a domain
name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to
make any active use of the domain name); see
also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding
that the respondent’s non-use of the <abc7chicago.mobi> domain name since
its registration provided evidence that the respondent lacked rights or
legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <how-to-roll-a-blunt-with-a-swisher-sweet.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 8, 2010
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