U.S. Smokeless Tobacco Company LLC v. chen jin shan / chen jin shan
Claim Number: FA1606001678357
Complainant is U.S. Smokeless Tobacco Company LLC (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is chen jin shan / chen jin shan (“Respondent”), China.
REGISTRAR AND <SKOALL.WIN> DOMAIN NAME
The domain name at issue is <skoall.win>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
On June 9, 2016, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <skoall.win> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 June 20, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 11, 2016 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@skoall.win. Also on June 20, 2016, 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 July 20, 2016, 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 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.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in the Chinese language. 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, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is U.S. Smokeless Tobacco Company LLC, which has been selling smokeless tobacco products since the 1800s. Complainant is a leading manufacturer of smokeless tobacco products sold at retail, owning the SKOAL mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,052,574, registered Nov. 9, 1976).
2. The <skoall.win> domain name is confusingly similar to the SKOAL mark. The domain name contains Complainant’s mark in full while adding an additional letter “l,” and attaches the top-level domain (“TLD”) “.win” to the domain name.
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the <skoall.win> domain name, as evidenced by the WHOIS record for the domain name.
4. Further, Complainant has never authorized or licensed Respondent to use the SKOAL trademark in any form. Respondent’s lack of rights or legitimate interests in the <skoall.win> domain name is made further evident by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
5. Respondent’s <skoall.win> domain name resolves to an inactive webpage.
6. Respondent registered the <skoall.win> domain name in bad faith. Respondent’s <skoall.win> domain name resolves to an inactive webpage. Further Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
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 <skoall.win> 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 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 un<skoall.win> 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 is U.S. Smokeless Tobacco Company LLC which has been selling smokeless tobacco products since the 1800s. Complainant owns the SKOAL mark through the USPTO (e.g., Reg. No. 1,052,574, registered Nov. 9, 1976). Registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark even if the mark is not registered in the country in which a respondent operates. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel concludes that Complainant’s valid registration of the SKOAL mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant alleges that the <skoall.win>1 domain name is confusingly similar to the SKOAL mark. The domain name contains Complainant’s mark, with the addition of an extra “l” and attaches the TLD “.win” to the domain name. The addition of a TLD and an extra letter do not serve to adequately distinguish the <skoall.win> domain name from the SKOAL mark. See Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenmas clouds Network Technology Co., Ltd., FA 1591256 (Forum Dec. 29, 2014) (finding that the gTLD “.club” is one of the new gTLDs and should be disregarded when determining if a <skoall.win> domain name is confusingly similar to a complainant’s mark); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel finds that the <skoall.win> domain name is confusingly similar 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 <skoall.win> 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 the <skoall.win> domain name. Complainant insists that Respondent is not commonly known by the <skoall.win> domain name, as evidenced by the WHOIS record for the domain name. The WHOIS information for the <skoall.win> domain name refers to “chen jin shan / chen jin shan” as the registrant of record. Further, Complainant has never authorized or licensed Respondent to use the SKOAL trademark in any form. In view of Respondent's failure to submit a response, the Panel concludes that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the <skoall.win> domain name. See Reese v. Morgan, FA 917029 (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).
Complainant contends that Respondent’s non-active use of the <skoall.win> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain appears to resolve to a generic landing page set up by the host of the domain name. The failure to make active use of a domain name does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)). The Panel agrees.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <skoall.win> domain name in bad faith. To support this contention Complainant claims that Respondent’s inactive holding of the domain name demonstrates bad faith. Indeed, Respondent’s <skoall.win> domain resolves to a generic landing page. Bad faith may be found where a respondent passively uses a domain name that includes the mark of another party. Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant alleges that Respondent must have had actual notice of Complainant's rights in the SKOAL mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO and other trademark organizations internationally. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the <skoall.win> domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also 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 Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skoall.win> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 25, 2016
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