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September 8, 2010 / Nate Harris

John Middleton Co. v. Above.com Domain Privacy

Summary of John Middleton Co. v. Above.com Domain Privacy
(Nat. Arb. Forum Complaint No. 1337989)
Filed July 29, 2010; Decided September 7, 2010 (Panelist: Charles K. McCotter, Jr. (Ret.)

Domain Names: <blacknmildpits.com>

blacknmild.com

blacknmildpits.com

The Parties

Complainant John Middleton Co. (“Middleton”) has sold pipe tobacco and cigars under the BLACK & MILD mark since as early as 1977. Middleton owns several registrations for the mark.

Respondent Above.com (a privacy service concealing the true owner’s identity) didn’t respond to the complaint. Above.com registered the domain on September 19, 2009. Since that time, the domain has pointed at a click-through website that links to Middleton’s competitors.

Identical or Confusingly Similar

Middleton has established its rights in its BLACK & MILD mark. Furthermore:

In the disputed domain name, Respondent removes the spaces separating the terms in Complainant’s mark.  Respondent also replaces the ampersand in Complainant’s mark with the letter “n” in the disputed domain name.  Finally, Respondent adds the generic term “pits” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.

Thus, the disputed domain name is confusingly similar to the BLACK & MILD mark.

Rights or Legitimate Interests

The Panel notes that previous panels have considered a respondent’s failure to respond to be evidence of a lack of rights or legitimate interest in the mark. However, the Panel analyzes the record to make its own determination.

The Panel notes that the registrant of the disputed domain name is listed as “Above.com Domain Privacy.” Thus, there is no evidence that Above.com is known as <blacknmildpits.com>. Furthermore, the disputed domain hosts links to Middleton’s competitors, presumably for a click-through fee. Thus, Middleton has established that Above.com does not have rights or legitimate interests in the mark.

Registration and Use in Bad Faith

Because the disputed domain name points to a click-through page that links to competitors of Middleton, the Panel considers this to be a disruption of Middleton’s business, and thus evidence of bad faith registration and use under Paragraph 4(b)(iii) of the Policy.

Decision

The transfer is GRANTED.

Commentary

According to the Panel, “Respondent adds the generic term “pits” and the generic top-level domain (‘gTLD’) ‘.com’ to Complainant’s mark in the disputed domain name.” What the Panel apparently didn’t realize, however, is that “black n’ mild pits” refers to a breed of pit bull. See here or here (under the “America’s FIRST PIT BULL Museum” heading). In fact, until June 7, 2008 (if not later), the disputed domain pointed to a “Pit Bull Breeder/Kennel in Georgia” :

blacknmild.com

blacknmildpits.com (as of Dec. 13, 2007)

“Pits” in “Black n’ Mild pits” is not generic–it’s descriptive of a type of dog.  I’d say this information complicates the bad faith registration inquiry, since “Black n’ Mild Pits” clearly refers to dogs, not tobacco. At the least, it calls into question the Panel’s theory that the domain was registered to disrupt Middleton’s business (though it may have been registered to disrupt the dog breeder’s business).

Epilogue

9/8/2010: blacknmildpits.com still points to a click-through page, though there don’t appear to be links to Middleton’s competitors anymore.

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