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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2018-2600

1. The Parties

The Complainant is John Middleton Co. of Limerick, Pennsylvania, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.

2. The Domain Names and Registrar

The disputed domain names <bblackandmild.com>, <blackamild.com>, <blackandmilld.com>, <blackansmild.com>, <blakandmild.com>, and <blankandmild.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2018, 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 amended Complaint on November 20, 2018.

The Center verified that the Complaint, together with the amended 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2018.

The Center appointed Charles Gielen as the sole panelist in this matter on December 14, 2018. 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 owns a number of trademark registrations, such as in the United States for the word mark BLACK & MILD, registered under number 1,177,552 on November 10, 1981, as well as for a series of device marks consisting of the words BLACK & MILD in a stylized version which were all registered for tobacco products, such as cigars.

The disputed domain name <blackamild.com> was created on July 3, 2018, the disputed domain names <bblackandmild.com>, <blackansmild.com>, <blakandmild.com>, and <blankandmild.com> were created on July 6, 2018, and the disputed domain name <blackandmilld.com> was created on July 9. 2018.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is a leading manufacturer and marketer of cigars and pipe tobacco under its trademark BLACK & MILD, which is one of the best-selling brands for large machine-made cigars in the United States. The Complainant argues that it has spent substantial time, effort, and money advertising and promoting the BLACK & MILD trademark throughout the United States, and that it has thus developed substantial goodwill in this trademark. Through such widespread, extensive efforts, the BLACK & MILD trademark has become distinctive and is uniquely associated with the Complainant and its products. The Complainant furthermore has registered the domain name <blackandmild.com>. This domain name directs to the Complainant’s website which enables access to information regarding the Complainant, BLACK & MILD products, and special offers to age-verified adult smokers of 21 years of age or older.

According to the Complainant, the disputed domain names are purposeful misspellings of the Complainant’s BLACK & MILD trademarks and must be considered confusingly similar to the Complainant’s trademarks. More specifically, the disputed domain names vary from the Complainant’s trademarks by one letter. The Respondent merely added, removed or modified just one letter in the Complainant’s trademarks. The disputed domain names must therefore be considered prototypical examples of typosquatting, which intentionally takes advantage of Internet users that inadvertently type an incorrect address when seeking to access the trademark owner’s website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. Above this, the Complainant argues that the Respondent’s use of the word “and” instead of the ampersand in the disputed domain names does nothing to distinguish the disputed domain dames from the Complainant’s BLACK & MILD trademarks, the ampersand being a prohibited character in a domain name. The Complainant concludes that the disputed domain names are confusingly similar to the Complainant’s trademarks.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain names which were registered long after the Complainant established substantial rights in the trademark BLACK & MILD and also because the Respondent is not commonly known by the disputed domain names. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use the trademark BLACK & MILD or to apply for or use any domain name incorporating or simulating this trademark. The Respondent is not using the name BLACK & MILD as a company name or has any other legal rights in the name, which, according to the Complainant makes it quite clear that the Respondent is simply trying to benefit from the Complainant’s trademarks. The Complainant furthermore contends that the Respondent has intentionally chosen the disputed domain names based on the Complainant’s registered trademarks in order to generate traffic and income through websites, which take advantage of the fame of the Complainant’s trademarks. Specifically, the disputed domain names redirect to different, randomized third party webpages. According to the Complainant, the disputed domain names <blackandmilld.com>, <bblackandmild.com>, <blankandmild.com>, <blackansmild.com>, and <blakandmild.com> would for instance occasionally redirect users to pages where they randomly select from a wheel for a chance to win a prize, while at times, the disputed domain name <blackamild.com> redirects users to a website featuring links to third-party websites or pay-per-click links. Furthermore, the disputed domain names are being offered for sale for a minimum offer of USD 500, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain names, which, according to the Complainant, serves as further evidence of the Respondent’s lack of rights and legitimate interests. Lastly, the Complainant argues that the Respondent registered the disputed domain names on dates, which are significantly after the Complainant filed for registration of its BLACK & MILD trademarks, and significantly after the Complainant’s first use in commerce of its trademark on August 1, 1977. The disputed domain names were also registered after the Complainant’s registration of its <blackandmild.com> domain name on May 26, 1999.

Finally the Complainant argues that the Respondent registered and is using the disputed domain names in bad faith. First of all, by registering domain names that include the Complainant’s famous BLACK & MILD trademarks, the Respondent has created domain names that are confusingly similar to the Complainant’s trademarks. As such, the Respondent has demonstrated a knowledge of, and familiarity with the Complainant’s trademarks and business. On this basis, the Complainant argues that it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s trademark at the time the disputed domain names were registered. At the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that registrations of domain names containing well-known trademarks constitute bad faith per se. Due to the fame of the Complainant’s BLACK & MILD trademarks, it must be held that the Respondent has intentionally misappropriated the Complainant’s trademarks as a way of redirecting Internet users to the disputed domain names’ websites, thereby using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website. Secondly, the fact that the disputed domain name <blackamild.com> redirects users to a website featuring links to third-party websites or pay-per-click links, is proof of bad faith use of the trademark. Thirdly, the Respondent shows a pattern of conduct of cybersquatting. Not only has the Respondent been involved in other cases where it was held that the Respondent acted in bad faith resulting in the transfer of disputed domain names, but also it is holding registrations for several other domain names that misappropriate well-known trademarks. Finally, the Respondent is offering to sell the disputed domain names for valuable consideration in excess of its out-of-pocket expenses.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain names should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark BLACK & MILD based on several trademark registrations in the United States and intensive use that resulted in this trademark to be well known in the United States. The disputed domain names all contain the words “black” and “mild” but in clear misspellings of those words, leaving out, or adding one letter to either “black” or “mild” and changing the ampersand into “and” or “a.” The word mark BLACK & MILD is clearly recognizable in the disputed domain names making all of them confusingly similar to this trademark. As far as the device marks are concerned, these are all stylized forms of the wordmark and therefore the disputed domain names are also confusingly similar to these device marks.

The Panel is of the opinion that for these reasons the disputed domain names are confusingly similar to the trademarks of the Complainant. The added suffix “.com” does not change the finding that the disputed domain names are confusingly similar, since the “.com” is generally understood to be a technical requirement. In making the comparison between the trademark and the disputed domain names the generic Top-Level Domain “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain names are confusingly similar to the trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. First of all, the Respondent has not come forward claiming any rights or legitimate interests in the disputed domain names and the Panel does not find so in the present record. Secondly, the disputed domain names were registered long after the Complainant started to use and register its trademarks. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use the trademark BLACK & MILD or to apply for, or use any domain name incorporating or simulating this trademark. Also, the disputed domain names redirect to different, randomized third party webpages. The Complainant proves that the disputed domain names <blackandmilld.com>, <bblackandmild.com>, <blankandmild.com>, <blackansmild.com>, and <blakandmild.com> occasionally redirect users to pages where they randomly select from a wheel for a chance to win a prize, while at times, the disputed domain name <blackamild.com> redirects users to a website featuring links to third-party websites or pay-per-click links. The Panel is of the opinion that this serves as evidence that the Respondent lacks rights or legitimate interests in the disputed domain names. Finally, this conclusion is strengthened by the fact that the disputed domain names are being offered for sale for a minimum offer of USD 500, an amount that exceeds, without evidence to the contrary, the Respondent’s out-of-pocket expenses in registering the disputed domain names.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith.

The main reasons for this conclusion are as follows. First, there can be no doubt that it was the intention of the Respondent to choose domain names that contain intentional misspellings of the trademark BLACK & MILD. Second, by registering and using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant as to the source, affiliation or endorsement of the website of the Respondent. This follows from the proven fact that the disputed domain names <blackandmilld.com>, <bblackandmild.com>, <blankandmild.com>, <blackansmild.com>, and <blakandmild.com> occasionally redirect users to pages where they randomly select from a wheel for a chance to win a prize, while at times, the disputed domain name <blackamild.com> redirects users to a website featuring links to third-party websites or pay-per-click links. The Panel is of the opinion that this is clear proof of bad faith registration and use of the disputed domain names. This conclusion is also based on the proven fact that the Respondent shows a pattern of conduct of cybersquatting. Not only has the Respondent been involved in other cases where it was held that the Respondent acted in bad faith resulting in the transfer of disputed domain names, but also it is holding registrations for several other domain names that misappropriate well-known trademarks. Finally, the fact that the Respondent is offering to sell the disputed domain names for valuable consideration in excess of its out-of-pocket expenses, is further evidence of bad faith registration and use of the disputed domain names

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

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 names <bblackandmild.com>, <blackamild.com>, <blackandmilld.com>, <blackansmild.com>, <blakandmild.com>, and <blankandmild.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: December 26, 2018

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