Smokin' Over Domain Name Dispute…
Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand. Complainants have filed various trademark registrations for the GRIZZLY mark in connection with smokeless tobacco products.
Respondent is in the business of registering and utilizing domain names and, on January 30, 2005 and June 3, 2005, Respondent registered respectively the disputed domain names "grizzlychew.com" and "grizzlysnuff.com". Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on "grizzlychew.com". Complainants did not learn of Respondent's registration of the domain names until August 2007.
In arguing that the domain names were not confusingly similar to the GRIZZLY marks, Respondent relied upon the fact that the common term "Grizzly" has been registered as a trademark by numerous companies and it also took the disingenuous position that Complainants do not market GRIZZLY products as "chew" or "snuff" but, rather, as smokeless tobacco. These arguments, however, did not hold smoke with the Panel. As the Panel noted, even though true that the term "Grizzly" has been registered for various products by numerous trademark holders, the USPTO's decision to grant Complainants a trademark demonstrates that Complainants have enforceable rights in the mark. The Panel further noted that regardless of whether Complainants refer to their product as "smokeless tobacco", the evidence submitted made clear that the terms "chew" and "snuff" are commonly used to reference smokeless tobacco. It was logical to conclude that anyone familiar with the GRIZZLY mark would likely assume that the domain names were affiliated with Complainants, rendering them confusingly similar.
Respondent also argued that offering targeting advertising searches is a legitimate business and that, in any event, they had no control over which advertisers Hitfarm posts using the domain names. Can you say "pass the buck"?? While the Panel conceded that the business of offering targeting advertising searches may be a legitimate business in certain circumstances, those circumstances did not exist in this case. It may be legitimate as long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks. In this case, however, the domains did not merely refer to "smokeless tobacco", "chew" or "snuff". Rather, they merged two of those terms with a trademarked brand of smokeless tobacco and use the resulting domain names for a commercial purpose. Under the Policy, that is not a legitimate use capable of establishing rights or legitimate interests. Not surprisingly, for these same reasons, the Panel also found that Respondent had registered and used the domains in bad faith and ordered transfer of the domain names to Complainants. Conwood Company, LLC, Conwood Sales Company, LLC and Rossvil, LLC v. Texas International Property Associates, WIPO Case No. D2008-0376