WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

North Atlantic Operating Company, Inc., National Tobacco Company, L.P. v. Macarius Rizk

Case No. D2012-0994

1. The Parties

Complainants are North Atlantic Operating Company, Inc. (“NAO”) and National Tobacco Company, L.P. (“NTC”) of Louisville, Kentucky, United States of America (“United States”), represented by Bingham Greenebaum Doll LLP of Louisville, Kentucky, United States.¹

Respondent is Macarius Rizk of Los Angeles, California, United States.²

2. The Domain Name and Registrar

The disputed domain name <zigzagcig.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2012.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 6, 2012. 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

Complainants state that NAO and NTC are “affiliated” companies and that NAO is the owner of the trademark ZIG ZAG, which has been used in commerce since at least July 1971 in connection with tobacco-related products. Complainants state, and provide evidence in support thereof, that NAO owns seven federal trademark registrations that contain “zig zag” in the United States, including United States Reg. No. 1,133,291 for the mark ZIG ZAG (first used in commerce on July 1, 1971: registered on April 15, 1980) for use in connection with “cigars”: United States Reg. No. 1,472,580 for the mark ZIG ZAG (first used in commerce on October 6, 1986: registered on January 12, 1988) for use in connection with “cigarette tobacco”: and United States Reg. No. 2,582,490 for the mark ZIG-ZAG (first used in commerce on August 9, 2000: registered on June 18, 2002) for use in connection with “cigarettes”. These trademarks are referred to collectively hereafter as the “ZIG ZAG Trademark”.

Complainants state, and have provided evidence to support, that the Disputed Domain Name has been used in connection with a monetized parking page, which, according to website printouts, include such links as “Cigarette Rolling Machine” and “Learn to Quit Smoking”. Complainants further state, and the Registrar has confirmed, that the WhoIs record for the Disputed Domain Name refers to a “P.O. Box” with no corresponding number and contains the telephone number “(323) 000-0000.” Complainants further state, and have provided copies of communications in support thereof, that they corresponded with Respondent via email about the Disputed Domain Name and that, among other things, Respondent offered to sell the Disputed Domain Name to Complainants for “$17,000” and that Respondent later said the Disputed Domain Name was “referring to a new board game for kids between the ages of 6-7,” although Respondent could not disclose more information about the board game due to a non-disclosure agreement.

The Disputed Domain Name was created on February 5, 2012.

5. Parties’ Contentions

A. Complainant

Complainants contend, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the ZIG ZAG Trademark because the Disputed Domain Name “wholly incorporates” the trademark and “use of the generic word, ‘CIG,’ is not sufficient to prevent confusing similarity because ‘CIG’ is a word that identifies the products that Complainants provide under the ZIG ZAG Trademark, namely cigarettes.”

- Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent has not been commonly known by the domain name, or any portion thereof,” “Respondent is simply ‘parking’ the website, which has and continues to host pay-per-click advertisements, in an effort to generate click-through revenue and divert consumers from the legitimate business of the Complainants”: and “Respondent intends to and has offered on multiple occasions to realize commercial gain by selling the domain name to the Complainant.”

- The Disputed Domain Name was registered and is being used in bad faith because Respondent offered to sell the Disputed Domain Name to Complainants for “$17,000”: Respondent provided incorrect information in the WhoIs record for the Disputed Domain Name: and Respondent “park[ed] the web page through an online parking service in order to generate ill-gotten advertising revenue and divert traffic from Complainant’s legitimate website.”

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief they have requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as the accompanying copies of trademark registration certificates, it is apparent that NAO has rights in and to the ZIG ZAG Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the ZIG ZAG Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “zigzagcig”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)

The addition of certain words, as here (that is, “cig”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the […] trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))).

Here, because the word “cig” (a commonly abbreviated form of the word “cigarette”) is associated with the ZIG ZAG Trademark, this word increases the confusing similarity between the Disputed Domain Name and the ZIG ZAG Trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainants have argued that, inter alia, “Respondent has not been commonly known by the domain name, or any portion thereof,” “Respondent is simply ‘parking’ the website, which has and continues to host pay-per-click advertisements, in an effort to generate click-through revenue and divert consumers from the legitimate business of the Complainants”: and “Respondent intends to and has offered on multiple occasions to realize commercial gain by selling the domain name to the Complainant.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainants have proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor: or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Repeatedly under the Policy, UDRP panels have found that use of a domain name in connection with a monetized parking page, under the circumstances present here, amounts to bad faith under paragraph 4(b)(iv). See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850. Further, Respondent’s offer to sell the Disputed Domain Name to Complainants for “$17,000”, without any documentation of Respondent’s out-of-pocket costs directly related to the Disputed Domain Name, is additional evidence of bad faith. See, e.g., AstraZeneca AB v. Alvaro Collazo, WIPO Case No. D2005-0367 (finding an offer to sell two domain names for $270 to be “disingenuous”). Finally, the incorrect contact information provided by Respondent in the Whois record for the Disputed Domain Name (including an incomplete mailing address and an illegitimate telephone number), is also evidence of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Respondent “actively provided, and failed to correct, false contact details, in breach of its registration agreement”).

Accordingly, the Panel is satisfied that Complainant has proven the third element 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 <zigzagcig.com> be transferred to National Tobacco Company, L.P., as requested by Complainants.

Douglas M. Isenberg
Sole Panelist
Dated: June 12, 2012

¹ Unless otherwise specified or as the context makes clear or requires, references in this decision to “Complainant” refer to both NAO and NTC. It is appropriate for this Complaint to be brought by both NAO and NTC, given their affiliation. See, e.g., Shaw Industries Group, Inc. and Columbia Insurance Company v. Texas Best Flooring Company Inc., WIPO Case No. D2011-1676 (Complaint filed by two “related companies”).

² As described in more detail below, Respondent has failed to maintain an accurate WhoIs record for the Disputed Domain Name and has not submitted a Response, so Respondent’s true location is impossible for the Panel to determine. The reference to Los Angeles, California, is based on partial information in the WhoIs record for the Disputed Domain Name.