Cigar Aficionado Magazine c/o M. Shanken Communications, Inc. v. Andrew Fitting
Claim Number: FA0802001152662
Complainant is Cigar Aficionado Magazine c/o M. Shanken
Communications, Inc. (“Complainant”),
represented by Conal M. Berberich, of Wolf, Block, Schorr and Solis-Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cigaraficionado.mobi>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2008.
On February 21, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <cigaraficionado.mobi> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cigaraficionado.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cigaraficionado.mobi> domain name is identical to Complainant’s CIGAR AFICIONADO mark.
2. Respondent does not have any rights or legitimate interests in the <cigaraficionado.mobi> domain name.
3. Respondent registered and used the <cigaraficionado.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the publisher of the men’s lifestyle magazine
Cigar Aficionado. Complainant registered the CIGAR AFICIONADO
mark with the United State Patent and Trademark Office (“USPTO”) on December
24, 1996 (Reg. No. 2,025,421). Complainant
has published Cigar Aficionado since
1992, and conducts business relating to cigars, cigar accessories and cigar
appreciation throughout the
Respondent registered the <cigaraficionado.mobi> domain name on October 10, 2006. The disputed domain name resolves to a website with no online content other than a note that the domain name is parked for free by the Registrar.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the CIGAR AFICIONADO mark for purposes of Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”).
Complainant contends that
Respondent’s <cigaraficionado.mobi> domain name is identical to its CIGAR AFICIONADO mark. The <cigaraficionado.mobi> domain name differs from Complainant’s mark in two ways:
(1) the space between the words has been removed; and (2) the generic top-level
domain (“gTLD”) “.mobi” has been added.
The Panel finds that these changes do not minimize or eliminate the
resulting likelihood of confusion, and so Respondent’s disputed domain name is
not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Croatia Airlines v. Kwen Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding
that the domain name <croatiaairlines.com> is identical to the
complainant's CROATIA AIRLINES trademark); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Starkey v. Bradley, FA
874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the
same way as .com and should be ignored when comparing the mark and the disputed
domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <cigaraficionado.mobi> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the disputed domain name, <cigaraficionado.mobi>,
nor have they ever been the owner or licensee of the CIGAR AFICIONADO mark. The WHOIS record for the disputed domain name
lists the Respondent as “Andrew Fitting.”
In light of this evidence, along with the fact that Respondent has
failed to show any evidence contrary to Complainant’s contentions, the Panel
finds that Respondent is not commonly known as <cigaraficionado.mobi> pursuant to Policy ¶ 4(c)(ii). See
Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent maintains a website at <cigaraficionado.mobi> with no online content other than a note that the domain name is parked for free by the Registrar. The Panel finds that this inactive use of the domain name <cigaraficionado.mobi> is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's inactive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website, through the confusion caused by the similarity between
the CIGAR AFICIONADO mark and the <cigaraficionado.mobi>
domain name. The Panel finds that
Respondent’s inactive use of the disputed domain name disrupts Complainant’s
business, and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cigaraficionado.mobi> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 28, 2008
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