WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Middleton Co. v. Domain Administrator, See PrivacyGuardian.org / Shi Lei
Case No. D2020-0668
1. The Parties
The Complainant is John Middleton Co., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Shi Lei, China.
2. The Domain Name and Registrar
The disputed domain name <blackandmildaromareward.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, 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 March 23, 2020 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 March 25, 2020.
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 March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on May 5, 2020. 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’s origins date back to 1856. It is now a substantial manufacturer of cigars and pipe tobacco. Its BLACK & MILD brand has been promoted extensively and is one of the best-selling brands for large, machine-made cigars in the United States.
The Complainant has registered a large number of trade marks to protect its BLACK & MILD brand. These include, by way of example only, United States trade mark, registration No. 1177552, for BLACK & MILD, registered on November 10, 1981 in International Class 34. In addition, the Complainant has registered the domain name <blackandmild.com>. This resolves to its principal website, which contains information about the Complainant’s products and special offers.
The disputed domain name was registered on January 23, 2020. It resolves to a directory page containing links to goods and services, which are unrelated to the Complainant’s business, such as “Internet”, “Car Insurance”, and “Credit Cards”. Occasionally, Internet users accessing the Respondent’s website are redirected to a third party website, which offers cash back and rebates in return for users shopping at specified retail websites.
5. Parties’ Contentions
The Complainant refers to its portfolio of BLACK & MILD trade marks, full details of one of these marks having been set out above, and says that the disputed domain name is identical or confusingly similar to those marks. For the purpose of comparing the disputed domain name with the Complainant’s trade mark, it is standard practice not to take the generic Top-Level Domain (“gTLD”) into account. The Complainant has simply added the generic and descriptive term “aroma reward” to the Complainant’s BLACK & MILD trade mark. The fact that this term is closely linked and associated with the Complainant’s brand and trade mark serves to underscore the confusing similarity between the disputed domain name and the Complainant’s mark. Previous UDRP panels have consistently held that a disputed domain name, which consists merely of a complainant’s mark and an additional term that relates to and describes a complainant’s business, is confusingly similar to that complainant’s trade marks; see Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No. D2015-2042.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. Moreover, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trade marks.
As there is no evidence that the Respondent is using BLACK & MILD as a company name, or has any other legal rights in the name, it is clear that the Respondent is simply trying to benefit from the Complainant’s trade marks. The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third party websites. Presumably, the Respondent receives pay-per-click (“PPC”) fees from the linked websites that are listed on its website. Prior decisions under the Policy have held that respondents who monetize domain names using PPC links are not using such domain names in connection with a bona fide offering of goods and services, nor are they making a legitimate noncommercial or fair use of those domain names.
The disputed domain name occasionally redirects Internet users to a third party website, which offers cashback services in a dynamic monetization scheme, completely unrelated to the Complainant. This use comprises neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed domain name. Moreover, at the time of filing the Complaint, the Respondent was using a privacy service, which past UDRP panels have found to equate to a lack of legitimate interest.
Lastly, the Complainant says that the Respondent registered and is using the disputed domain name in bad faith. The Complainant and its BLACK & MILD trademarks are well known, with numerous trade mark registrations in the United States. The Complainant has marketed and sold its goods using these trade marks since 1856, which is well before Respondent’s registration of the disputed domain name in January 2020. By registering a domain name that incorporates Complainant’s BLACK & MILD trade mark in its entirety and including the term “aroma reward”, the Respondent has created a domain name that is confusingly similar to Complainant’s trade mark. Further, the composition of the disputed domain name and its close similarity with Complainant’s domain name <blackandmildaromarewards.com> makes it difficult to believe that Respondent registered the disputed domain name without being aware of the Complainant’s trade marks and business. As explained in Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226, where a domain name is “so obviously connected with such a well-known name and products, […] its very use by someone with no connection with the products suggests opportunistic bad faith”.
Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on it. The Respondent’s registration and use of the disputed domain name falls within the circumstances described in this paragraph. The fact that the disputed domain name is also a slight misspelling of Complainant’s domain name <blackandmildaromarewards.com> is further evidence that the Respondent is using it to confuse unsuspecting Internet users looking for the Complainant’s goods and services.
Occasionally, the disputed domain name redirects to a third party website, which offers cashback services, completely unrelated to the Complainant and its services. This sort of tactic, labeled “bait-and-switch” for its propensity to confuse Internet users into believing that they are visiting a complainant’s site only to discover that the domain name in issue is completely unconnected to that complainant, amounts to further evidence of bad faith registration and use.
The Respondent, at the time of the filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held can support an inference of bad faith registration and use. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6: “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant 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 Complainant has provided details of the many registered trade marks it owns for BLACK & MILD; these establish the Complainant’s rights in its marks.
As a technical requirement of registration, gTLD (that is “.com” in this case) is typically disregarded when assessing confusing similarity. The remaining differences between the disputed domain name and the Complainant’s mark comprise, first, the use of the word “and” in the disputed domain name, in substitution for the ampersand, which is a component of the Complainant’s trade mark. This is of no significance in view of the fact that typographical symbols (save for the hyphen) cannot be represented in the Domain Name System. Second, the disputed domain name contains the additional words “aroma” and “reward”. These do not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the 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 Complainant’s BLACK & MILD trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: if the respondent has been using the domain name in connection with a genuine offering of goods and services, if the respondent has been commonly known by the domain name or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Whether the use to which the disputed domain name is being put might amount to a bona fide offering of goods or services, the WIPO Overview 3.0 explains at section 2.9 that “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users […] Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. Here, the PPC links do not appear related to any potential dictionary meaning of words contained in the disputed domain name. In addition, Internet users accessing the Respondent’s website are occasionally redirected to a third party website offering cash-back services when Internet users shop at specified retailers; the Respondent is likely to be receiving PPC income from the third party in return for the traffic that is directed to its website from the Respondent’s website.
Furthermore, it should be noted that section 2.5.1 of the WIPO Overview 3.0, in the specific context of paragraph 4(c)(iii) of the Policy but of more general application, explains that: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. The composition of the disputed domain name, containing the Complainant’s trade mark plus the additional words “aroma” and “reward”, does not constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
The second and third circumstances set out at paragraph 4(c) of the Policy can be dealt with briefly. There is no evidence that the Respondent has been commonly known by the disputed domain name. Moreover, the use that the Respondent has made of the disputed domain name does not comprise a legitimate noncommercial or fair use of it, as the Respondent will have been deriving PPC income each time an Internet user clicks on one of the links to third party websites which feature on its directory page.
As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The fact that the Respondent chose to register a domain name which incorporated the Complainant’s BLACK & MILD trade mark and couple it with two words closely associated with the Complainant’s product and services, namely “aroma” and “reward”, establishes, on at least a balance of probabilities, that the disputed domain name was registered by the Respondent as a result of its awareness of the Complainant’s reputation and in order to take advantage of it, by using it in order to resolve to a directory page hosting PPC links.
As the UDRP panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”. Note that, whilst the use of a domain name to point to parking pages hosting pay-per-click sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. By way of further example, see Philip Morris USA Inc. v. Arren Babayani, WIPO Case No. D2017-0724.
The facts point to the Respondent having used the disputed domain name in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
Lastly, the Panel has regard to the fact that the identity of the underlying Respondent is protected by a privacy service. As explained at section 3.6 of the WIPO Overview 3.0, this can be a factor indicative of bad faith, and the Panel so finds in the circumstances of these proceedings.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <blackandmildaromareward.com> be transferred to the Complainant.
Date: May 21, 2020