M. Shanken Communications v. Club Aficionado Cigar and Wine
Claim Number: FA1003001311547
Complainant is M. Shanken Communications (“Complainant”), represented by Robert
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aficionadocigar.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 7, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <aficionadocigar.com> domain name is registered with GoDaddy.com and that the 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 March 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Respondent’s Response was received on April 9, 2010. As Respondent’s Response was received in hard copy only, the Response is not in compliance with ICANN Rule 5. However, as set forth below, the Panel has considered the Response as part of the record.
Respondent submitted a timely Additional Submission on April 14, 2010 without the required fee. Because Respondent’s Additional Submission was not submitted in compliance with Supplemental Rule 7, the Panel chooses not to consider it in rendering its Decision. Complainant submitted a timely Additional Submission on April 14, 2010. Respondent submitted additional information on April 23, 2010 that was neither requested by the Panel nor permitted by any Rule or Supplemental Rule; the Panel chooses not to consider this submission as well.
On April 15, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Respondent submitted its Response in hard copy only. No electronic copy was received prior to the deadline. The National Arbitration Forum deems the Response noncompliant with ICANN Rule 5. However, the Panel has determined to accept this response and give it full weight in rendering a Decision, given the technical nature of the noncompliance. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003). However, as noted above, the Panel has determined not to accept or consider Respondent’s Additional Submission because Respondent failed to submit the Response timely, and failed to pay the required fee in connection with its Additional Submission, failures which the Panel does not view as technical noncompliance.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns registered trademarks in the term “Cigar Aficionado” and has used the term in commerce since 1992. Complainant also owns the domain name cigaraficionado.com. Complainant asserts that the domain name at issue, <aficionadocigar.com>, is identical to, or confusingly similar to its registered CIGAR AFICIONADO trademark. Complainant notes that variations in spelling, or reversing word order in a domain name is not enough to avoid confusion. Complainant next argues that Respondent has no rights or legitimate interests in the domain name, noting that Respondent is not affiliated with Complainant and that Respondent is not commonly known by the domain name. Complainant further asserts that Respondent registered the name in “an obvious attempt to create confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s services and to benefit from the value created by Complainant’s use of its Cigar Aficionado trademark.” According to Complainant, Respondent’s registration of the domain name was a “blatant attempt to falsely imply a sponsorship by or a strong affiliation with Complainant,” while no such sponsorship or affiliation exists. Finally, Complainant asserts that the domain name was registered and is being used in bad faith. Complainant states that bad faith is shown when a respondent adopts or uses another’s confusingly similar, and well-known trademark long after the trademark was used and/or registered. Moreover, Complainant alleges that Respondent is using, for commercial gain, the domain name to divert Internet users seeking information about Complainant to Respondent’s website, thereby creating a likelihood of confusion for commercial gain.
Respondent does not dispute Complainant’s trademark. However, Respondent asserts that the domain name is not confusingly similar to Complainant’s mark. According to Respondent, “cigaraficionado.com is not the same as aficionadocigar.com, and it is not confusingly similar because it looks different on its font, on its sound, and it looks different on its appearance but mostly to the vision of a sophisticated buyer they are totally distinguishable as not coming from the same origin,…” Respondent notes that the two websites have a very different look as well. Respondent next contends that it has legitimate rights or interests in the domain name, averring that it has used the terms “aficionado cigar” since 1999 or 2000. Respondent asserts that it chose the terms for its retail store without knowledge of the Complainant’s mark, and that when it learned of the Complainant’s mark it asked permission to use the words “aficionado cigar and gifts” as the name of its retail store, which was granted in 2001 by Complainant. Respondent concludes that in light of its lack of knowledge of the Complainant’s mark at the time it started to use the term aficionado cigar for its business, and in light of the permission granted by Complainant to do so, it did not register the domain name, and it is not using the domain name in bad faith.
C. Additional Submissions
In its Additional Submission Complainant contends that there is no admissible evidence that Complainant granted permission to Respondent to use the term “aficionado cigar” in its business. No affidavits or other evidence was submitted to this effect. More important, Complainant notes that the alleged meeting during which permission was granted allegedly took place in 2001, before Respondent registered the domain name. It is one thing for Complainant to agree not to challenge the usage of “aficionado cigar” in its one- location retail business, which is not admitted, and quite another thing to grant permission or a license to register a domain name on the World Wide Web. Complainant points out that Respondent has not submitted evidence, such as follow-up correspondence, which would support its contention that permission was granted for any use of the term, let alone as a domain name. Moreover, Respondent’s Response, in describing the alleged 2001 meeting proves that Respondent knew of the existence of the Complainant’s trademark prior to registering the domain name in 2003.
The Panel concludes that (a) the domain name is identical or confusingly similar to a mark in which Complainant has rights; (b) Respondent has no rights or legitimate interests in the domain name and (c) the domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
First, Complainant easily shows its rights in the CIGAR AFICIONADO mark by virtue of its registered trademarks. Second, the Panel believes that the domain name is confusingly similar to the mark. The Panel notes that the mere transposing of words will not necessarily avoid the confusion. See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum Mar. 27, 2007) (transposing the words “Publishers Weekly” to “Weekly Publishers” does not avoid a finding of confusing similarity). The Panel notes that the uniqueness of the word “aficionado” in conjunction with the word “cigar” also leads to confusion.
The Panel finds that Respondent has no rights or legitimate interests in the domain name. Respondent has used several names for its retail establishment, including “Aficionado Cigar and Gifts,” and “Aficionado Cigar and Wine,” but has never been known by the name “Aficionado Cigar.” There is no evidence that Respondent was commonly known by the domain name prior to registering the name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). Moreover, there is no evidence that Respondent had a license or other permission from Complainant to register the domain name, even assuming that Complainant had—as Respondent claims—granted permission to Respondent to call its retail store “Aficionado Cigar and Gifts.”
Respondent claims that it did not act in bad
faith when, in 2001, it named its retail store Aficionado Cigar and Gifts,
because at that time it did not know of the existence of the Complainant’s
trademark. Respondent goes on to assert that shortly thereafter, and well
before the domain name was registered, it learned of Complainant’s mark, and
allegedly asked permission to continue to use the Aficionado Cigar and Gifts
name for its retail establishment. While the Panel is not convinced that any
permission was actually granted by Complainant in 2001 in connection with the
name of Respondent’s retail store, Respondent certainly cannot claim that it
did not know of Complainant’s trademark when it registered the domain name in
2003. Because Respondent registered the domain name with full knowledge of
Complainant’s confusingly similar trademark, the registration was in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aficionadocigar.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: April 29, 2010
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