John Middleton Co. v. Andrew Luthi
Claim Number: FA1103001381380
PARTIES
Complainant is John Middleton Co. (“Complainant”) represented by Joel D. Leviton, of Fish & Richardson P.C., Minnesota, USA. Respondent is Andrew Luthi (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <middletoncigars.us> and <blackandmildcigars.us>, registered with GoDaddy.com, Inc.
PANEL
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 31, 2011; the Forum received a hard copy of the Complaint on April 1, 2011.
On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <middletoncigars.us> and <blackandmildcigars.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 5, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 25, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <middletoncigars.us> is confusingly similar to Complainant’s MIDDLETON’S mark.
Respondent’s <blackandmildcigars.us> domain name is confusingly similar to Complainant’s BLACK & MILD mark.
2. Respondent does not have any rights or legitimate interests in the <middletoncigars.us> and <blackandmildcigars.us> domain names.
3. Respondent registered and used the <middletoncigars.us> and <blackandmildcigars.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, John Middleton Co., manufactures cigars and pipe tobacco. Complainant uses the MIDDLETON’S and BLACK & MILD marks in connection with cigars and pipe tobacco. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MIDDLETON’S mark (e.g., Reg. No. 2,121,410 issued December 16, 1997). In addition, Respondent holds a trademark registration with the USPTO for the BLACK & MILD mark (e.g., Reg. No. 1,103,566 issued October 3, 1978).
Respondent, Andrew Luthi, registered the <middletoncigars.us> and <blackandmildcigars.us> domain names on May 10, 2010. The disputed domain names resolve to websites that provide hyperlinks that connect to <cigarsmag.com>, a website of Complainant’s competitor.
DISCUSSION
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the MIDDLETON’S (e.g., Reg. No. 2,121,410 issued December 16, 1997) and BLACK & MILD (e.g., Reg. No. 1,103,566 issued October 3, 1978) marks through its registrations of the marks with the USPTO. The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the MIDDLETON’S and BLACK & MILD marks pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).
Complainant claims the <middletoncigars.us> domain is confusingly similar to its MIDDLETON’S mark. Respondent omits the apostrophe and the letter “s” from Complainant’s mark in the disputed domain name. Respondent also attaches the descriptive term “cigars,” which describes Complainant’s products, and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark. The Panel finds these additions fail to adequately distinguish Respondent’s domain name from Complainant’s mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel holds Respondent’s <middletoncigars.us> domain name is confusingly similar to Complainant’s MIDDLETON’S mark under Policy ¶ 4(a)(i).
In addition, Complainant claims the <blackandmildcigars.us> domain name is confusingly similar to its BLACK & MILD mark. Respondent omits the spaces between the terms in the mark. Respondent then replaces the ampersand (“&”) in Complainant’s mark with the word “and” in the disputed domain name. Respondent also affixes the ccTLD “.us” to the mark. The Panel finds these changes are irrelevant to the Policy ¶ 4(a)(i) confusingly similar analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Lifetouch, Inc. v. Fox Photographics, supra. Therefore, the Panel holds Respondent’s <blackandmildcigars.us> domain name is confusingly similar to Complainant’s BLACK & MILD mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first show Respondent lacks rights or legitimate interests in the <middletoncigars.us> and <blackandmildcigars.us> domain names under Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <middletoncigars.us> and <blackandmildcigars.us> domain names. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant states that it has not authorized or licensed Respondent to use its MIDDLETON’S and BLACK & MILD marks. Furthermore, the WHOIS information lists “Andrew Luthi” as the registrant of the <middletoncigars.us> and <blackandmildcigars.us> domain names, which the Panel finds is not similar to either disputed domain name. Therefore, the Panel finds the evidence in the record supports a finding that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent uses the confusingly similar domain names to resolve to websites that provide hyperlinks that connect to <cigarsmag.com>, a website of Complainant’s competitor. Complainant also claims Respondent likely profits from this use through the receipt of click-through fees. The Panel agrees. Therefore, the Panel holds Respondent does not use the <middletoncigars.us> and <blackandmildcigars.us> domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)).
Additionally, Complainant submits screen shots of the websites resolving from the <middletoncigars.us> and <blackandmildcigars.us> domain names. These shots show websites that prominently feature Complainant’s BLACK & MILD mark and images of Complainant’s tobacco and cigar products. The Panel finds Respondent uses the disputed domain names in an attempt to pass itself off as Complainant. Therefore, the Panel finds this behavior provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds the <middletoncigars.us> and <blackandmildcigars.us> domain names redirect Internet users seeking Complainant’s products to websites that provide links for Complainant’s competitor. Therefore, the Panel finds Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
As previously discussed, Respondent most likely uses the disputed domain names in an attempt to profit from referral fees. Moreover, Respondent’s <middletoncigars.us> and <blackandmildcigars.us> domain names are confusingly similar to Complainant’s MIDDLETON’S and BLACK & MILD marks. As a result, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Therefore, the Panel finds Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)).
Finally, the Panel finds Respondent’s attempt to pass itself off as Complainant provides further evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see alsoDaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <middletoncigars.us> and <blackandmildcigars.us> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 6, 2011
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