Westmore · UDRP DecisionFreshskoal.com
The Panel ordered transfer of <freshskoal.com>. It found the domain confusingly similar to Complainant’s registered SKOAL mark because it incorporated SKOAL with the descriptive term “fresh.” Respondent’s use of the domain for links to competing third-party websites did not establish rights or legitimate interests and, together with the nature of the domain and links, supported a finding of registration and use in bad faith with knowledge of Complainant’s prior rights.
The timeline behind freshskoal.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates a straightforward trademark-targeting pattern in which a complete mark is paired with a descriptive term and used for links related to the trademark owner’s industry. The descriptive addition did not defeat confusing similarity, while the subject matter of the links was material to the findings on legitimate interests and bad faith.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION U.S. Smokeless Tobacco Company LLC v. Super Privacy Service LTD c/o Dynadot Case No. D2019-0225 1. The Parties Complainant is U.S. Smokeless Tobacco Company LLC of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar The disputed domain name <freshskoal.com> is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2019. The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 11, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is a member of the Altria Group based in Richmond, Virginia. Complainant is the successor-in-interest to common law rights to use the mark SKOAL for smokeless tobacco products since the 1930s. Complainant also has long-standing trademark registrations for its SKOAL mark for “smokeless tobacco” and “chewing tobacco”, including United States Registration No. 504609 (registered December 7, 1948) in stylized form and United States Registration No. 2086020 (registered August 5, 1997) in typed drawing form. Complainant owns the registration for the domain name <skoal.com> (registered November 18, 1997). Complainant has set up a website associated with this URL. Complainant uses the domain name and its associated website to inform eligible tobacco consumers 21 years of age or older about its SKOAL mark and its smokeless tobacco products. The disputed domain name <freshskoal.com> was registered on November 8, 2018. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to provide links to competing third-party websites featuring such words as “Fresh Products”, “Cigarette Tobacco”, and “Cigarettes”. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the disputed domain name <freshskoal.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. In particular, Complainant contends that its SKOAL mark is well-known for its smokeless tobacco. Complainant further contends that it has long-standing registrations for SKOAL. Complainant contends that Respondent has used the disputed domain name to link to competing third-party websites. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith. B. Respondents Respondent did not file a reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar This Panel must first determine whether the disputed domain name <freshskoal.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark SKOAL, and merely adds the descriptive term “fresh”. The Panel thus finds that the added term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not avoid identity or confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example , General Electric Company v. Recruiters , WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter-IKEA v. Polanski , WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. StepWeb , WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp. , WIPO Case No. D2000-1065 (transferring <cbsone.com>). The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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”. Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to link to competing third-party websites. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name, [respondent has] 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 [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to link to competing third-party websites, presumably for Respondent’s own commercial gain. The links feature such words as “Fresh Products”, “Cigarette Tobacco”, and “Cigarettes”. Given the nature of the links and the disputed domain name which incorporates Complainant’s SKOAL mark, as well as the global nature of Complainant’s mark, the Panel finds strong evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <freshskoal.com> be transferred to Complainant. Lorelei Ritchie Sole Panelist Dated: March 25, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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