DANNEMANN AG v. Etai Hugi
Claim Number: FA1206001449716
Complainant is DANNEMANN AG (“Complainant”), represented by Marco Bundi of Meisser & Partners AG, Switzerland. Respondent is Etai Hugi (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dannemanncigars.us> and <alcaponecigars.us>, registered with GODADDY.COM, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received a hard copy on June 25, 2012.
On June 21, 2012, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <dannemanncigars.us> and <alcaponecigars.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 U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 29, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 19, 2012 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 July 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 names be transferred from Respondent to Complainant.
A. Complainant
i. Israeli Patent Office (“IPO”) (Reg. No. 46,101 registered April 30, 1980);
ii. United States Patent and Trademark Office (“USPTO”) (Reg. No. 821,886 registered January 10, 1967); &
iii. Russia’s Federal Service for Intellectual Property (“RFSIP”) (Reg. No. 459,970 registered March 18, 1981).
i. IPO (Reg. No. 83,523 registered April 12, 1994)
ii. USPTO (Reg. No. 1,331,459 registered February 26, 1980); &
iii. RFSIP (Reg. No. 450,889A registered December 9, 1986).
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
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.
According to Complainant, Complainant owns a trademark registration with the following trademark authorities for its DANNEMANN mark:
· IPO (Reg. No. 46,101 registered April 30, 1980);
· USPTO (Reg. No. 821,886 registered January 10, 1967); &
· RFSIP (Reg. No. 459,970 registered March 18, 1981).
Complainant claims to also own a trademark registration with the following trademark authorities for its AL CAPONE mark:
· IPO (Reg. No. 83,523 registered April 12, 1994)
· USPTO (Reg. No. 1,331,459 registered February 26, 1980); &
· RFSIP (Reg. No. 450,889A registered December 9, 1986).
Complainant alleges that it uses its DANNEMAN and AL CAPONE marks in connection with its cigar products. Past UDRP panels have held that a complainant’s ownership of trademark registrations for its marks throughout the world sufficiently proves the complainant’s rights in the marks under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Therefore, the Panel finds that Complainant owns rights in the DANNEMANN and AL CAPONE marks for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <dannemanncigars.us> domain name is confusingly similar to Complainant’s DANNEMANN mark. Complainant notes that the disputed domain name contains the DANNEMANN mark combined with the term “cigars,” which Complainant argues is descriptive of Complainant’s business. Previous UDRP panels have maintained that the addition of a descriptive term does not remove a disputed domain name from the realm of confusing similarity. See 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)). The Panel notes that the disputed domain name also contains the country-code top-level domain (“ccTLD”) “.us.” Prior panels have determined that the addition of the ccTLD “.us” is not relevant to a Policy ¶ 4(a)(i) analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Thus, the Panel concludes that Respondent’s <dannemanncigars.us> domain name is confusingly similar to Complainant’s DANNEMANN mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <alcaponecigars.us> domain name is also confusingly similar to Complainant’s AL CAPONE mark. The disputed domain name combines Complainant’s AL CAPONE mark with the descriptive term “cigars.” The Panel finds that the disputed domain name contains the ccTLD “.us,” while also omitting the space between the terms of Complainant’s mark. Based on the same precedent as above, the Panel holds that Respondent’s <alcaponecigars.us> domain name is confusingly similar to Complainant’s AL CAPONE mark under Policy ¶ 4(a)(i). See 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 Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In light of Respondent’s failure to respond, the Panel notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the dannemanncigars.us> and <alcaponecigars.us> domain names. Therefore, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain names 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 alleges that Respondent is not commonly known by the <dannemanncigars.us> and <alcaponecigars.us> domain names. Complainant claims that Respondent is not licensed or permitted to use Complainant’s AL CAPONE and DANNEMANN marks. Complainant provides the WHOIS information for the <dannemanncigars.us> and <alcaponecigars.us> domain names, which identifies the registrant of the domain names as “Etai Hugi.” Due to the lack of similarity between the disputed domain names and the registrant name, the Panel determines that the WHOIS information does not indicate that Respondent is known by the domain names. Past UDRP panels have held that a respondent was not commonly known by a disputed domain name if the WHOIS information and the evidence in the record did not indicate such a fact and if the complainant did not authorize the respondent to use the complainant’s mark. See 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). Based on the evidence before the Panel, the Panel concludes that Respondent is not commonly known by the <dannemanncigars.us> and <alcaponecigars.us> domain names for the purpose of Policy ¶ 4(c)(iii).
Complainant avers that both of the <dannemanncigars.us> and <alcaponecigars.us> domain names resolve to websites that contain basic information regarding Complainant’s cigar products. Complainant claims that the websites also contain a hyperlink, which the Panel noted is entitled “Buy Dannemann Cigars” on the website resolving from the <dannemanncigars.us> domain name or “Buy Al Capone Cigars” on the website resolving from the <alcaponecigars.us> domain name. Complainant alleges that the hyperlink resolves to the <cigarchoice.com> website where Respondent sells competing cigars along with Complainant’s cigars. Complainant argues that Respondent commercially benefits from the sale of competing cigars and the sale of Complainant’s cigars. Previous UDRP panels have found that the use of a disputed domain name to redirect Internet users to offer competing services is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The Panel agrees and holds that Respondent is not making a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the <dannemanncigars.us> and <alcaponecigars.us> domain names.
Complainant has proven this element.
Complainant claims that Respondent’s registration of the <dannemanncigars.us> and <alcaponecigars.us> domain names is a part of an attempt to prevent Complainant from reflecting Complainant’s AL CAPONE and DANNEMANN marks in domain names. Complainant argues that Respondent has also registered over 50 domain names, some of which, Complainant asserts, contain the marks of third parties. Past UDRP panels have found that the registration of domain names that contain the marks of third parties can be evidence of a respondent’s bad faith registration and use. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated UDRP ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). The Panel agrees and finds that Respondent registered and/or uses the <dannemanncigars.us> and <alcaponecigars.us> domain names in bad faith pursuant to Policy ¶ 4(b)(ii). Alternatively, the Panel finds that the third-party domain names Complainant references have not been evaluated by a UDRP or usTLD panel. Therefore, the Panel concludes that Respondent’s registration of these third-party domain names is not evidence of bad faith registration or use under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent is a competitor of Complainant and that Respondent’s registration and use of the <dannemanncigars.us> and <alcaponecigars.us> domain names disrupts Complainant’s business. As noted above, Complainant claims that the disputed domain names resolve to websites featuring a hyperlink to <cigarchoice.com>. Complainant argues that Respondent sells competing cigars at the <cigarchoice.com> website. Prior UDRP panels have concluded that the sale of competing products at the respondent’s resolving website disrupts the complainant’s business and is evidence of bad faith registration and use. See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). Consequently, the Panel determines that Respondent registered and/or uses the <dannemanncigars.us> and <alcaponecigars.us> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent attempts to create confusion as to Complainant’s affiliation with the disputed domain names. Complainant argues that Respondent provides information about Complainant’s cigar products on the resolving websites, which Complainant alleges creates the impression that Complainant is associated with Respondent. Complainant claims that Respondent attempts to commercially gain from this mistaken association by providing a hyperlink labeled “Buy Dannemann Cigars” or “Buy Al Capone Cigars” that resolves to Respondent’s competing website. Complainant notes that Respondent sells competing cigars along with Complainant’s cigars. Previous UDRP panels have determined that the registration and use of a confusingly similar disputed domain name to sell competing products is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under UDRP ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel finds that Respondent is attempting to create confusion as to Complainant’s association with the disputed domain names and is attempting to profit from that confusion, therefore, the Panel holds that Respondent registered and uses the <dannemanncigars.us> and <alcaponecigars.us> domain names in bad faith according to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent knew or should have known about Complainant’s rights in the DANNEMANN and AL CAPONE marks. Complainant claims that it owns trademark registrations for both of the marks, which the Panel notes are listed under Policy ¶ 4(a)(i). Nevertheless, past UDRP panels have held that constructive notice is not sufficient to demonstrate that the respondent registered the disputed domain name in bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, Complainant also argues that its cigar products are marketed under the DANNEMANN and AL CAPONE marks and that its cigars are well known throughout the world. The Panel notes that Respondent sells Complainant’s DANNEMANN and AL CAPONE cigars. Based on this evidence, the Panel finds that Respondent had actual knowledge of Complainant’s DANNEMANN and AL CAPONE marks. Prior UDRP panels have concluded that actual knowledge of a complainant’s mark demonstrated bad faith registration under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Consequently, the Panel holds that Respondent registered the <dannemanncigars.us> and <alcaponecigars.us> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dannemanncigars.us> and <alcaponecigars.us> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 2, 2012
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