national arbitration forum

 

DECISION

 

Davidoff & Cie SA and Oettinger Imex AG v. Andrew Luthi

Claim Number: FA1109001407508 and FA1109001407541

 

PARTIES

Complainant is Davidoff & Cie SA and Oettinger Imex AG (“Complainant”), represented by Benedikt Schmidt of Meisser & Partners, Switzerland.  Respondent is Andrew Luthi (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us>, registered with GODADDY.COM, INC.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the Forum received a hard copy of the Complaint on September 20, 2011.

                                 

On September 15, 2011, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.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 disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On September 27, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:

 

1.    Respondent’s <avocigars.us> domain name is confusingly similar to Complainant’s AVO mark.

 

Respondent’s <baccaratcigars.us> domain name is confusingly similar to Complainant’s BACCARAT THE GAME mark.

 

Respondent’s <camachocigars.us> domain name is confusingly similar to Complainant’s CAMACHO mark.

 

Respondent’s <griffinscigars.us> domain name is confusingly similar to Complainant’s THE GRIFFINS mark.

 

Respondent’s <cusanocigars.us> domain name is confusingly similar to Complainant’s CUSANO mark.

 

Respondent’s <davidoffcigars.us> domain name is confusingly similar to Complainant’s DAVIDOFF mark.

 

Respondent’s <zinocigars.us> domain name is confusingly similar to Complainant’s ZINO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names.

 

3.    Respondent registered and used the<avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Davidoff & Cie SA, is a subsidiary of Complainant, Oettinger Imex AG.  For the purposes of this case, the Complainants will be referred to as Complainant.  Complainant produces and distributes cigars worldwide under its AVO, BACCARAT THE GAME, CAMANCHO, CUSANO, THE GRIFFINS, DAVIDOFF and ZINO marks.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AVO (e.g., Reg. No. 3,029,240 registered December 13, 2005), BACCARAT THE GAME (Reg. No. 2,691,274 registered February 25, 2003), CAMACHO (e.g., Reg. No. 738,143 registered September 25, 1962), THE GRIFFINS (Reg. No. 1,353,194 registered August 6, 1985), CUSANO (Reg. No. 2,752,275 registered August 19, 2003), DAVIDOFF (e.g., Reg. No. 1,058,684 registered February 8, 1977), and ZINO marks (e.g., Reg. No. 1,245,948 registered July 19, 1983).

 

Respondent, Andrew Luthi, registered the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names on April 1, 2010.  The disputed domain names either resolve to or contain hyperlinks to Complainant’s competitors in the cigar industry or websites selling Complainant’s competitors’ cigars.

 

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 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 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.

 

Preliminary Issue: Consolidation of Cases

 

Complainant filed two cases against Respondent, FA 1407508 and FA 1407541.  After filing the cases, Complainant has asked the Panel to consolidate the cases and issue one decision under Policy ¶ 4(f).  Policy ¶ 4(f) allows the consolidation of usTLD disputes, at the discretion of the Panel, if either party requests to consolidate and the disputes arise under the Policy.  As both cases arise under the usTLD Policy and Respondent is the same in both cases, the Panel chooses to consolidate FA 1407508 and FA 1407541 and issues this single decision.

 

Identical and/or Confusingly Similar

 

As Complainant owns trademark registrations with the USPTO for its AVO, BACCARAT THE GAME, CAMANCHO, CUSANO, THE GRIFFINS, DAVIDOFF and ZINO marks, the Panel finds Complainant has established rights in its marks for purposes of Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Respondent, in its <avocigars.us> domain name, attaches the descriptive term “cigars” and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s AVO mark.  The Panel determines that such additions do not adequately distinguish the disputed domain name from Complainant’s mark, and finds that Respondent’s <avocigars.us> domain name is confusingly similar to Complainant’s AVO mark for the purposes of Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under UDRP ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Respondent’s <baccaratcigars.us> domain name contains the main portion of Complainant’s BACCARAT THE GAME mark, simply removing the terms “THE” and “GAME”, and adding the descriptive term “cigars” and the ccTLD “.us.” The Panel finds that Respondent’s <baccaratcigars.us> domain name is confusingly similar to Complainant’s BACCARAT THE GAME mark pursuant to Policy ¶ 4(a)(i).  See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds that Respondent’s <camachocigars.us> domain name is confusingly similar to Complainant’s CAMACHO mark under Policy ¶ 4(a)(i) because the only difference between the two is the additions of the descriptive term “cigars” and the ccTLD “.us.”  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described the complainant’s products, was insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Respondent’s <griffinscigars.us> domain name removes the word “THE” from Complainant’s mark, and adds the descriptive term “cigars” and the ccTLD “.us.” The Panel finds that Respondent’s <griffinscigars.us> domain name is confusingly similar to Complainant’s THE GRIFFINS mark for the purposes of Policy ¶ 4(a)(i).  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under UDRP ¶ 4(a)(i)); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

In the <cusanocigars.us> domain name, Respondent removes the letter “o” from Complainant’s mark and attaches the descriptive term “cigars” and the ccTLD “.us” to the mark.  The Panel finds that these alterations do not distinguish the disputed domain name and finds that Respondent’s <cusanocigars.us> domain name is confusingly similar to Complainant’s CUSANO mark according to Policy ¶ 4(a)(i).  See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds that Respondent’s <davidoffcigars.us> domain name is confusingly similar to Complainant’s DAVIDOFF mark under Policy ¶ 4(a)(i), as the disputed domain name only combines Complainant’s mark with the descriptive term “cigars” and the ccTLD “.us.”  See 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 Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Finally, the Panel similarly concludes that Respondent’s <zinocigars.us> domain name is confusingly similar to Complainant’s ZINO mark under Policy ¶ 4(a)(i) because the disputed domain name contains the same alterations as the <avocigars.us>, <camachocigars.us>, <davidoffcigars.us> domain names, namely the additions of the descriptive term “cigars” and the ccTLD “.us.”  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.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 asserts that Respondent is not commonly known by the disputed domain names.  As the WHOIS information identifies “Andrew Luthi” as the registrant of the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names, the Panel finds that Respondent is not commonly known by the domain names pursuant to Policy ¶ 4(c)(iii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent’s <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names either directly resolve to or contain hyperlinks to the websites of Complainant’s competitors, such as Romeo Y Julieta, or third-party cigar websites that sell competing cigars, such as <cigarchoice.com> or <cigarsmag.com>.  Therefore, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iv).  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration or Use in Bad Faith

 

Respondent has registered seven domain names that contain variations of Complainant’s trademarks.  The Panel determines that Respondent’s registration and use of these disputed domain names is evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).  See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to UDRP ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the UDRP ¶ 4(b)(ii)). 

 

Respondent’s <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names resolve to websites that contain hyperlinks to, or directly resolve to, Complainant’s competitors’ websites or third-party websites that sell Complainant’s competitors’ cigars.  Therefore, the Panel holds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). 

 

 

The Panel presumes that Respondent commercially benefits from click-through or affiliate fees from the disputed domain names.  The Panel finds Respondent’s registration of confusingly similar domain names for the purpose of commercially gaining by redirecting Internet users to Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <avocigars.us>, <baccaratcigars.us>, <camachocigars.us>, <griffinscigars.us>, <cusanocigars.us>, <davidoffcigars.us>, and <zinocigars.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  October 31, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page