www.DefendMyDomain.com
In the recent domain name dispute decision of U.S. Smokeless Tobacco Manufacturing Company LLC v. Four Feathers LLC, FA1266017 (Nat. Arb Forum July 14, 2009), a single member panel was faced with a dispute over the domain www.skoal.com. As explained in the brief factual background, “Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, sells smokeless tobacco products and has been in business since the 1800s. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL mark (i.e., Reg. No. 504,609 issued December 7, 1948).” Complainant appears to maintain a web site at www.skoalbrotherhood.com. The disputed domain was registered in 1997. (There is no discussion throughout the opinion about the delay in bringing this dispute.)
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 addressing the first prong the Panel found the domain was identical except for the additional of the generic top-level domain “.com.” As many Panels in the past have explained this is insignificant and this Panel quickly moved to the second element.
In discussing the second element, the Panel explained:
The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Panel found that respondent’s web site contained links to competing products and that this was not a bona fide offering of goods and services. The Panel also determined that there was no evidence presented to show that Respondent was commonly known by the domain.
Moving to the last element, bad faith, the Panel found as follows:
Respondent is using the <skoal.com> domain name to resolve to a website featuring links to competing products presumably for the profit of Respondent. The Panel finds Respondent’s use of the disputed domain identical to Complainant’s SKOAL mark to redirect Internet users interested in Complainant’s products to competing website links constitutes disruption and bad faith registration and use under Policy ¶ 4(b)(iii)….In addition, the Panel finds Respondent presumably receives click-through fees from links on the disputed domain name sponsored by Complainant’s competitors. Respondent likely profits from Internet users’ likelihood of confusion with Complainant’s affiliation with the disputed domain name. The Panel finds that this use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Ultimately, the Panel finds that Complainant proved all three elements and agreed to order the TRANSFER of the domain.
