Americanspiritcoupons.com

The timeline behind americanspiritcoupons.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Santa Fe Natural Tobacco Company, Inc. v. Epoch Inc / Larry Wall Claim Number: FA2506002159374 PARTIES Complainant is Santa Fe Natural Tobacco Company, Inc. ("Complainant"), represented by Ginger B Mimier of Kilpatrick, Townsend & Stockton LLP, Georgia, USA. Respondent is Epoch Inc / Larry Wall ("Respondent"), Michigan, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <americanspiritcoupons.com>, registered with NameSilo, LLC. PANEL 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. James Bridgeman SC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on June 5, 2025; Forum received payment on June 5, 2025. On June 5, 2025, NameSilo, LLC confirmed by e-mail to Forum that the <americanspiritcoupons.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2025 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@americanspiritcoupons.com. Also on June 9, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default. On July 1, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the disputed domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant claims rights in the NATURAL AMERICAN SPIRIT mark established by its ownership of the portfolio of United States registered trademarks described below and asserts that it has been a manufacturer of cigarettes since 1985 with an established an Internet maintaining a website at <www.americanspirit.com> on which it provides information related to its products. Complainant firstly alleges that the disputed domain name is identical or confusingly similar to Complainant's NATURAL AMERICAN SPIRIT mark because it incorporates the dominant portion of Complainant's mark with only the addition of the generic or descriptive term "coupons" and the generic Top-Level Domain ("gTLD"). Complainant submits that prior panels have recognized that the incorporation of the dominant portion of a trademark may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. See, e.g., Snap, Inc. v. Peter Vagin / Chubbs Media, FA1805001788597 (Forum June 28, 2018) (finding the domain <snapfuck.me> confusingly similar to the SNAPCHAT mark because it contained the dominant portion of the SNAPCHAT mark.) Complainant adds that the addition of the term "coupons" does not distinguish the disputed domain name from Complainant's AMERICAN SPIRIT marks. Indeed, prior Panels have specifically found the term "coupons" to be generic or descriptive. See, e.g., Udemy, Inc. v. James H Park / JIN-1, FA2302002031142 (Forum Mar. 7, 2023) (stating that the term "coupons" is generic/descriptive and finding the disputed domain name <udemycoupons.com> confusingly similar to Complainant's UDEMY mark); and U.S. Smokeless Tobacco Company LLC v. Protection of Private Person / Privacy Protection, FA1610001697069 (Forum Nov. 23, 2016) ("The addition of the generic term "coupons" and the generic top-level domain does not add any distinguishing element."). Furthermore, Complainant submits that the inclusion of the generic Top-Level Domain ("gTLD") extension <.com> in the disputed domain name does not change the conclusion that the disputed domain name is confusingly similar to Complainant's AMERICAN SPIRIT marks. See, e.g., Snap Inc. v. Nestor Hernandez, FA1709001749325 (Forum Oct. 25, 2017) ("gTLDs are insufficient to defeat a test of confusingly similar"). Complainant secondly alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and submits that it is well established in the decisions of panelists previously appointed under the Policy that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name at issue, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails so to do, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this regard, Complainant specifically alleges that · Respondent has no right to own or use any domain name incorporating Complainant's AMERICAN SPIRIT mark; · nothing in the WhoIs information for the disputed domain name or otherwise in the record suggests that Respondent is commonly known by the disputed domain name; · Respondent refers to himself as "Larry Wall" of "Epoch Inc." in the WhoIs information for the disputed domain name which supports a finding that he is not commonly known by the disputed domain name; · Respondent cannot demonstrate or establish rights or a legitimate interest in the disputed domain name; · there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating Complainant's AMERICAN SPIRIT mark, nor has Complainant given Respondent permission to use Complainant's AMERICAN SPIRIT mark, or any variation thereof, citing Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case D2004-0312 ("neither the Respondent nor Mr. Ozkutuk can claim a legitimate right or interest in the disputed domain name … [because use of it] was at no point licensed or approved by the Complainant; · Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of the disputed domain name; · instead the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint shows that Respondent is using the disputed domain name to offer fake coupons for Complainant's AMERICAN SPIRIT branded products; Complainant asserts that the coupons are unauthorized and invalid, and such use does not constitute a bona fide offering of goods or services. See Buffalo Wild Wings, Inc. v. Domain Admin / Whois Privacy Corp., FA1812001820985 (Forum Jan. 8, 2019) (stating "[t]he website offers fake coupons for Complainant's products in an attempt to drive internet traffic to Respondent's website presumptively for some commercial benefit" and finding that this is neither a bona fide offering of goods or services nor a non-commercial or fair use); · the exhibited screen capture shows that Respondent uses the disputed domain name to attract web traffic to his website that is meant to appear as an official website of Complainant or an official website relating to Complainant's products through the repeated and prominent use of Complainant's AMERICAN SPIRIT marks and other indicia, when in fact there is no connection between Respondent and Complainant. See, e.g., General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case D2007-0645 (unauthorized use of a domain name that includes the identical trademark to create initial interest confusion does not constitute a legitimate interest); · such use of the disputed domain name by Respondent to pass itself off as Complainant is almost certainly for Respondent's commercial gain; · the exhibited screen capture further shows that Respondent has used the website to which the disputed domain name resolves to impersonate Complainant, by using Complainant's AMERICAN SPIRIT mark and other indicia and such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corporation v. John Eagle, FA0801001125685 (Forum Feb. 7, 2008) (finding the Respondent's use of the disputed domain name to pass itself off as the Complainant in order to advertise and sell unauthorized products of the Complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant next alleges that the disputed domain name was registered and is being used in bad faith to benefit from the goodwill and reputation associated with Complainant's AMERICAN SPIRIT mark. It is argued that Respondent's bad-faith registration and use of the disputed domain name is established by the fact that the disputed domain name incorporates the dominant portion of Complainant's AMERICAN SPIRIT mark and the disputed domain name was registered by Respondent decades after Complainant began using the mark. See Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1911001872261 (Forum Dec. 28, 2019) (finding Respondent had actual knowledge of Complainant's rights in the SNAPCHAT and SNAP marks due to notoriety of complainant's marks); that it is difficult to believe that Respondent was unaware of the Complainant's mark because of the confusing similarity of the disputed domain name to Complainant's mark. Complainant adds that Respondent's bad-faith registration and use of the disputed domain name is also evidenced by the fact that Respondent has intentionally attempted to attract users by creating a likelihood of confusion as to the source, affiliation, or endorsement of the website to which the disputed domain name resolves. It is further contended that after seeing Complainant's AMERICAN SPIRIT mark in the disputed domain name, consumers will initially be confused because the website creates an impression that it has an association with or is sponsored by Complainant, particularly because the content of the website uses Complainant's AMERICAN SPIRIT mark and purports to offer coupons for Complainant's AMERICAN SPIRIT products. Complainant submits that such initial confusion is enough to demonstrate bad faith, citing David Foox v. Kung Fox and Bill Hicks, WIPO Case D2008-0472 ("A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trademark owner. When Internet visitors reach Respondent's website they may realize that they have been duped, but in any event Respondent's objective of bringing them there will already have been achieved"). Complainant adds that Respondent's impersonation of Complainant, including its extensive references to Complainant and its AMERICAN SPIRIT marks and display of Complainant's product logos, leaves no doubt that Respondent knew of Complainant and its rights prior to registering and using the disputed domain name, and constitutes further infringement of Complainant's intellectual property rights. In addition, Complainant submits that Respondent's impersonation of Complainant makes clear that it targeted Complainant. See Home Depot Product Auth., LLC v. FAG / yiming liu, FA1901001827397 (finding bad faith where "the disputed domain name is created with a clear reference to Complainant's trademark and official web site, obviously with the goal to make a false impression of being the link to an official customer survey provided by Complainant"). It is further contended that the exhibited screen capture of the website to which the disputed domain name resolves, shows that Respondent uses the website at the disputed domain name to trick users into entering personal information in an attempt to obtain coupons for Complainant's AMERICAN SPIRIT products, when in fact the coupons are unauthorized and invalid. Citing the WIPO Jurisprudential Overview 3.0, ¶ 2.13.1, Complainant argues that "[p]anels have categorically held that the use of a domain name for illegal activity (e.g., … phishing, … impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent." Complainant adds that it has identified one prior decision under the Policy ordering transfer of the domain name at issue in which "Larry Wall, Epoch Inc" is named as Respondent namely ITG Brands, LLC v. Larry Wall, Epoch Inc, WIPO Case D2024-3295 (ordering transfer of <winstoncoupons.com> based on the complainant's rights in the WINSTON marks for cigarettes). Complainant notes that the identified proceeding also involved a cigarette brand and submits that prior decisions against a respondent may be sufficient to show a pattern of bad-faith registration and use under Policy ¶ 4(b)(ii). See, e.g., Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2009001912624 (Forum Oct. 19, 2020) (noting respondent's history of adverse domain name determinations). B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant manufactures and sells tobacco products using the NATURAL AMERICAN SPIRIT trademark for which it holds a portfolio of registrations including the following: · United States registered trademark NATURAL AMERICAN SPIRIT registration number 2,692,958, registered on the Principal Register on March 4, 2003 for goods in international class 34; · United States registered trademark NATURAL AMERICAN SPIRIT and Design registration number 2,620,466 registered on the Principal Register on Sept. 17, 2002 for goods in international class 34; · United States registered trademark NATURAL AMERICAN SPIRIT and Design, registration number 2,620,468 registered on the Principal Register on Sept. 17, 2002 for goods in international class 34. Complainant has an established Internet presence and owns and operates a website at <www.americanspirit.com> on which it provides information related to its products. The disputed domain name <americanspiritcoupons.com> was registered on June 20, 2024, and resolves to a website that purports to offer for sale coupons for use by consumers when purchasing Complainant's cigarettes. There is no information available about Respondent, except for that provided in the Complaint, as amended, the Registrar's WhoIs for the disputed domain name and the response by the Registrar to the request by Forum for details of the disputed domain name for the purposes of this proceeding. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar Complainant has provided convincing, uncontested evidence that it has rights in the NATURAL AMERICAN SPIRIT mark, established by the ownership of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use of the mark in its business selling cigarettes. In the Complaint, Complainant overstates its rights claiming on several occasions that it is the owner of the AMERICAN SPIRIT mark, whereas the evidence adduced does not support this claim. One of the registered trademarks relied upon by Complainant is for the word mark NATURAL AMERICAN SPIRIT, namely United States trademark registration number 2,692,958, registered on March 4, 2003, and each of the other registrations are for the words NATURAL AMERICAN SPIRIT in stylized form in combination with a design representing a native American chieftain. None are for the two words AMERICAN SPIRIT. The disputed domain name <americanspiritcoupons.com> consists of two elements of Complainant's NATURAL AMERICAN SPIRIT mark in combination with the word "coupons" and the gTLD extension <.com>. It is well accepted that the first element functions primarily as a standing requirement, and while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See WIPO Jurisprudential Overview 3.0, ¶.7. Applying these principles this Panel finds that the disputed domain name, which contains two of the three descriptive words in Complainant's NATURAL AMERICAN SPIRIT mark, is confusingly similar to Complainant's mark. In the circumstances of this proceeding, the gTLD extension <.com> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration. This Panel finds therefore that the disputed domain name is confusingly similar to the NATURAL AMERICAN SPIRIT mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the Disputed Domain Name arguing that Respondent is not known by the disputed domain name and is not using the disputed domain name for any bona fide or legitimate purpose. It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the NATURAL AMERICAN SPIRIT mark which long predate the registration and first use of the disputed domain name which was registered on June 20, 2024. A number of factors indicate that the registrant of the disputed domain name was aware of Complainant, its cigarette business and its products bearing the NATURAL AMERICAN SPIRIT mark when the disputed domain name was chosen and registered. Specifically, the disputed domain name is a combination of the "AMERICAN" and "SPIRIT" elements of Complainant's mark in combination with the word "coupons", and the disputed domain name has been used to create a website which targets Complainant's business by purporting to offer coupons which can be exchanged at retail outlets when purchasing Complainant's NATURAL AMERICAN SPIRIT branded goods. On the balance of probabilities therefore the registrant of the disputed domain name chose and registered the disputed domain name to target Complainant and its goodwill. This finding is supported by the fact that registrant of the disputed domain name is likely to have been aware of Complainant's pre-existing website at <www.americanspirit.com>. In this regard the Panel notes that Complainant's domain name omits the element NATURAL from the NATURAL AMERICAN SPIRIT mark, as does the disputed domain name. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's reputation in the NATURAL AMERICAN SPIRIT mark. The exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent is purporting to offer coupons for Complainant's goods. The wording on Respondent's website infers a relationship between Complainant and Respondent which does not exist. Regardless of whether Respondent is purporting to offer bona fide coupons, or fraudulent coupons as alleged, use of the disputed domain name, in the circumstances outlined above, to attract Internet traffic and divert it to Respondent's website constitutes use in bad faith for the purposes of the Policy. Respondent has no right to take advantage of Complainant's reputation to intercept Internet traffic and confuse Internet users. Furthermore, Complainant has shown that Respondent has been the unsuccessful respondent in a previous proceeding brought under the Policy in which Respondent targeted another tobacco product manufacturer. This Panel finds therefore that by using the disputed domain name in the manner outlined above, 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 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 your web site or location. As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <americanspiritcoupons.com> domain name be TRANSFERRED from Respondent to Complainant. ____________________________________________ James Bridgeman SC Panelist Dated: July 3, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.