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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ITG Brands, LLC v. Whois Privacy Services Pty Ltd. / Domain Hostmaster, Protopixel Pty Ltd

Case No. D2016-2312

1. The Parties

The Complainant is ITG Brands, LLC of Greensboro, North Carolina, United States of America (“US”), represented by Dykema Gossett PLLC, US.

The Respondent is Whois Privacy Services Pty Ltd. / Domain Hostmaster, Protopixel Pty Ltd of Fortitude Valley, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <salemcigarette.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2016. On November 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 21, 2016.

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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2016.

The Center appointed Adam Samuel as the sole panelist in this matter on December 20, 2016. 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

The Complainant is a well-known US cigarette manufacturer. It owns a US trademark for SALEM, registration no. 637365, registered on November 20, 1956.

The disputed domain name was registered on July 29, 2002. The website at the disputed domain name is currently inactive although in the past it has contained a parking page displaying links to websites offering a variety of goods and services, some of which relate to cigarettes.

5. Parties’ Contentions

A. Complainant

The disputed domain name consists of the Complainant’s well-known SALEM mark and the generic word “cigarette”, the product that the Complainant sells using the SALEM mark. The addition of a generic term is irrelevant for the purposes of determining confusing similarity, particularly here where it describes the Complainant’s goods and services. The combination of the generic term and the Complainant’s mark is likely to lead the public to believe that the disputed domain name is associated with the Complainant when in fact it is not.

The Respondent is in no way affiliated with the Complainant. The Respondent has not sought a license from the Complainant to use the SALEM mark and has not attempted to file any trademark applications for the name SALEM. The Respondent is not commonly known as “salem”.

The Respondent’s intentional use of the Complainant’s trademark to mislead and divert customers away from the Complainant’s legitimate business amounts to use of the disputed domain name in bad faith. Internet users are likely to be confused by the combination of the SALEM mark and the product that the Complainant sells. The Respondent’s only motive is to trade on the Complainant’s rights in its SALEM trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s SALEM trademark, the word “cigarette” which describes the product type that the Complainant sells using the trademark and the generic Top-Level Domain (“gTLD”) “.com”. The predominant feature of the disputed domain name is the combination of the Complainant’s trademark and the word that describes the Complainant’s use of that mark. This makes it clear to the ordinary Internet user that the disputed domain name refers to the Complainant’s trademark as opposed to other uses of the name “Salem”. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not called “Salem” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use the trademark SALEM. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name consists of the Complainant’s well-known trademark, the product that it sells using that mark and the gTLD “.com”. The Respondent must have known or been put on notice of the need to check whether the Complainant owned trademark rights with respect to the name SALEM in connection with the sale of cigarettes. In the circumstances, there appears to have been no reason for the Respondent to register the disputed domain name except to reflect the Complainant’s trademark.

Without a substantive response to the Complaint, it is impossible to know exactly why the Respondent registered the disputed domain name. In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register and use the disputed domain name: to disrupt the Complainant’s relationship with their customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.

The Respondent could have argued that the Complainant had taken a long time from the date of the registration of the disputed domain name to pursue this complaint. However, there are no time-limits under the Policy for bringing complaints. Delay in bringing a case is only a relevant factor in determining whether the disputed domain name was registered and has been used in bad faith. The delay here fails to outweigh the strength of the Complainant’s case on registration and use in bad faith.

For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith for the purposes of the Policy.

7. Decision

For 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 <salemcigarette.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: January 3, 2017

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