WIPO Domain Name Decision: D2008-0376

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Conwood Company, LLC, Conwood Sales Company, LLC, and Rosswil, LLC v. Texas International Property Associates - NA NA

Case No. D2008-0376

1. The Parties

The Complainants are Conwood Company, LLC, Memphis, Tennessee, United States of America; Conwood Sales Company, LLC, Memphis, Tennessee, United States of America; and Rosswil, LLC, Chicago, Illinois, United States of America, each represented by Wyatt, Tarrant & Combs LLP, United States of America.

The Respondent is Texas International Property Associates - NA NA, Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Names and Registrar

The disputed domain names <grizzlychew.com> and <grizzlysnuff.com> are registered with Compana, LLC d/b/a budgetnames.com (“Compana”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2008. On March 11, 2008, the Center transmitted by email to Compana a request for registrar verification in connection with the domain names at issue. On March 11, 2008, Compana transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. However, the Respondent’s name as provided by Compana differed from the name – Texas International Property Associates (minus the “NA NA”) – listed by the Complainants in the Complaint. In response to a notification of the same by the Center, the Complainants filed an amendment to the Complaint on March 18, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 8, 2008. The Response was filed with the Center on April 8, 2008.

The Center appointed D. Brian King as the sole panelist in this matter on April 16, 2008. The Panel finds that it was properly constituted. The undersigned 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 Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand. The Complainants filed for registration of the GRIZZLY mark, in connection with smokeless tobacco products, on July 15, 1996, and the United States Patent & Trademark Office (“USPTO”) granted registration on March 27, 2001. Approximately five years later, the Complainants sought registration in the European Union, Australia, Mexico, Brazil, Canada and Norway.

The Respondent is in the business of registering and utilizing domain names. On January 30, 2005 and June 3, 2005, the Respondent registered respectively the domain names <grizzlychew.com> and <grizzlysnuff.com> with Compana. Currently, the Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on <grizzlychew.com>. The Complainants first learned of the Respondent’s registration of the domain names in August 2007.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the domain names <grizzlychew.com> and <grizzlysnuff.com> are confusingly similar to a trademark in which the Complainants have rights; that the Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names were registered and are being used in bad faith.

In support of the foregoing contentions, the Complainants submit in summary that:

- the domain names at issue incorporate the Complainants’ GRIZZLY trademark and two terms, “chew” and “snuff”, that are commonly used to refer to smokeless tobacco, and thus the domain names are confusingly similar to the Complainants’ GRIZZLY mark;

- the Respondent is not using the domain names in connection with a bona fide offering of goods or services; the Respondent is not known by the name of “Grizzly”, and is not engaged in any other legitimate fair use, but rather “is simply diverting internet traffic intended for Complainants by providing links to numerous third party websites – sites that advertise and sell products and services that directly compete with Complainants’ products”; and

- the fact that the Respondent has registered and is making commercial use of domain names that combine the Complainants’ trademark with words commonly used for smokeless tobacco demonstrates that the Respondent registered and is using the disputed domain names in bad faith, “to trade on the good will of the Complainants’ famous mark”.

B. Respondent

The Respondent counters that the Complainants have not met their burden of establishing that the domain names <grizzlychew.com> and <grizzlysnuff.com> are identical or confusingly similar to a trademark in which the Complainants have rights; that they have not shown that the Respondent lacks rights or legitimate interests in respect of the domain names; and that they likewise have not proven that the domain names were registered and are being used in bad faith.

In particular, the Respondent contends in summary that:

- “Grizzly” is a common term that has been registered as a trademark by numerous companies; further, the Complainants do not market GRIZZLY products as “chew” or “snuff”, but rather as smokeless tobacco, so the domain names are not identical or confusingly similar to any trademark in which the Complainants have enforceable rights;

- offering targeting advertising searches is a legitimate business, and in any event the Respondent has no control over which advertisers Hitfarm posts using the domain names; and

- the Complainants’ bad faith argument must fail because “constructive notice” is insufficient to establish that the Respondent registered the domain names in bad faith, which the Respondent denies.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements that have to be met for a complaint under the Policy to succeed. Those are:

– the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

– the respondent has no rights or legitimate interests in respect of the domain name; and

– the respondent’s domain name has been registered and is being used in bad faith.

In proceedings before a panel, the complainant bears, in principle, the burden of proof on each of these elements. The panel has to decide the matter based on the statements and documents submitted, and in accordance with the Policy, the Rules and any rules or principles of law that it deems applicable (see Rules, Paragraph 15(a)). A discussion of each element follows below.

A. Identical or Confusingly Similar

While it is true that the term “grizzly” may have been registered for various products by numerous trademark holders, the USPTO’s decision to grant a trademark – a decision taking place almost four years prior to the Respondent’s registration of the disputed domain names – demonstrates that the Complainants have enforceable rights in the GRIZZLY mark in respect of their various smokeless tobacco products. Regardless of whether the Complainants refer to this product on their website as “smokeless tobacco” or by some other name, it is clear based upon the evidence submitted that the terms “chew” and “snuff” are commonly used to reference smokeless tobacco. Furthermore, anyone familiar with the GRIZZLY brand would likely assume that the domain names are affiliated with the Complainant. Prior cases have established that where a domain name merely adds generic or descriptive terms to a trademark, and where those terms are related to the goods or services offered under that mark, such domain name should be considered confusingly similar to the trademark. See, e.g. Bayer Aktiengesellschaft v. Henrik Monseen, WIPO Case No. D2003-0275; Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The Panel thus finds that the Complainants have established that the domain names are confusingly similar to a trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

The business of offering targeted advertising searches may be a legitimate business in certain circumstances. The Respondent refers the Panel to The Landmark Group v. Digimedia L.P., NAF Case No. 285459, which held that “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy”; but that case is of no assistance to the Respondent here.

In the present case, the domain names do not refer merely to “smokeless tobacco”, “chew” or “snuff”. Rather, they merge two of those terms with “grizzly”, a trademarked brand of smokeless tobacco, and use the resulting domain names for commercial purposes, with the result that Internet users are in some cases directed to sites offering competing products. That is not a legitimate use capable of establishing rights or legitimate interests. Furthermore, it is clear that the Respondent has no other association with the term “grizzly”. The Panel thus finds that the Complainants have established that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

The Complainants contend that there is simply no good faith reason why the Respondent would register and use the domain names as it has. The Panel notes that the Respondent has presented no evidence that the term “grizzly” is associated with smokeless tobacco other than with the GRIZZLY brand. The Respondent refers the Panel to the discussion of bad faith in McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., WIPO Case No. D2007-0676, in which the Panel noted that the “Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s”, but again this case reference is of no avail to the Respondent. In this case, the Complainants have shown that users are indeed likely to assume that the domain names are affiliated with GRIZZLY brand smokeless tobacco. There is no reasonable explanation, besides hoping to accomplish this, for the Respondent’s registration of the domain names four years after the Complainant’s GRIZZLY trademark registration was granted by the USPTO. Moreover, the Respondent has subsequently utilized the domain names a manner that attracts consumers for commercial purposes based upon the GRIZZLY trademark. The Panel finds, based upon these circumstances, that the Complainants have established that the Respondent registered and has used the domain names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <grizzlychew.com> and <grizzlysnuff.com> be transferred to the Complainants.

D. Brian King
Sole Panelist

Dated: April 30, 2008