national arbitration forum

 

DECISION

 

Altadis U.S.A., Inc. and Max Rohr, Inc. v. Andrew Luthi

Claim Number: FA1301001482230

PARTIES

Complainant is Altadis U.S.A., Inc. and Max Rohr, Inc. (“Complainant”), represented by Russell D. Dize of Grimes & Battersby, LLC, Connecticut, USA.  Respondent is Andrew Luthi (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <backwoodscigars.us>, registered with GoDaddy.com, LLC.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2013; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2013.

 

On January 28, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <backwoodscigars.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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.

 

On January 31, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 20, 2013 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 March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 usTLD Policy, usTLD Rules, the 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 name be transferred from Respondent to Complainant.

Preliminary Issue: Multiple Complainants

The relevant rules governing multiple complainants are usDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  usDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter: Altadis U.S.A., Inc., and Max Rohr, Inc. Complainant argues that Max Rohr, Inc. is the owner of the BACKWOODS marks, while Altadis U.S.A., Inc., is the exclusive licensee of the BACKWOODS marks, using them primarily through domain names.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example See Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006)(It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.). see also Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.).

 

The Panel finds that the evidence in the Complaint is sufficient to establish an acceptable nexus or link between the Complainants, and treats them as a single entity in this proceeding. The Complainants will hereafter be collectively referred to as “Complainant” throughout this decision. 

 

PARTIES' CONTENTIONS

A. Complainant

Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.

Policy ¶ 4(a)(ii): Respondent lacks rights or legitimate interests in the domain name.

Policy ¶ 4(a)(iii): Respondent either registered or used the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is Altadis USA, Inc. and Max Rohr, Inc. who list its address as USA. Complainant is the owner of the BACKWOODS trademark registrations which it uses for cigars and related goods. Complainant also has registered numerous domain names incorporating its BACKWOODS mark to facilitate its use in internet commerce.

 

Respondent is Andrew Luthi who list his address as New York, USA and who used a registrar who list its address as AZ, USA. The disputed domain name was registered on May 10, 2010.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights for the BACKWOODS mark for use in the sale of cigars given its registrations for the mark with the USPTO.  See Reg. No. 1,164,008 registered on Aug. 4, 1981; see also Reg. No. 3,268,658 registered on July 24, 2007.  The Panel agrees that USPTO registration is a satisfactory showing of rights under Policy ¶ 4(a)(i), especially when both parties reside in the United States.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant next contends that Respondent’s name is confusingly similar because it has incorporated the entire BACKWOODS mark into its <backwoodscigars.us> domain name, and merely included the word “cigars.”  The Panel notes that Respondent also added the country code top-level domain (“ccTLD”) “.us” but the Panel finds that this addition is irrelevant.  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).  The Panel finds that the addition of the word “cigars” actually enhances the confusing similarity between the domain name and the BACKWOODS mark because the mark is used almost exclusively with the sale of cigars.  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).  The Panel finds that the <backwoodscigars.us> domain name is confusingly similar to the BACKWOODS mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that 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). The Complainant has met this burden.

 

Complainant argues that Respondent is not licensed or otherwise authorized by Complainant’s to use the BACKWOODS trademarks.  The Panel notes that no evidence is brought forth to illustrate that Respondent is the owner or beneficiary of a mark identical to the  <backwoodscigars.us> domain name.  The Panel concludes that Respondent has no independent interest or rights in the domain name by way of trademark under Policy ¶ 4(c)(i).  See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the 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 next contends that Respondent has not been commonly known by the <backwoodscigars.us> domain name.  Complainant declares that nothing in the WHOIS information can prove that Respondent is known by the domain name.  The Panel notes that the WHOIS information lists “Andrew Luthi” as the registrant of the name.  Previous panels have concluded that a respondent is not commonly known by a domain name when there is no evidence in the record to illustrate otherwise.  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).  The Panel finds that Respondent is not commonly known by the <backwoodscigars.us> domain name under Policy ¶ 4(c)(iii).

 

Complainant avers that Respondent is not providing a bona fide offering of goods or services under its <backwoodscigars.us> domain name.  Complainant claims that the domain name resolves to a website advertising the unauthorized sale of BACKWOODS cigars.  Complainant states that the links on the domain name redirect customers to another website owned by Respondent at the <bolivarcigars.us> domain name, wherein Respondent seeks to sell products to Internet users.  The Panel notes that the disputed domain name resolves to a website dominated by the BACKWOODS trademark and a variety of Complainant’s own products.  See Complainant’s Ex. D.  Previous panels have agreed that a respondent’s unauthorized solicitation of a complainant’s own goods can never be a bona fide offering of goods or services, or a legitimate noncommercial or fair use.  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 finds that Respondent has failed to make either 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 disputed domain name.

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration or Use in Bad Faith

Complainant argues that Respondent has engaged in a pattern of bad faith use and registration.  Complainant points out that the John Middleton Co., David & Cia SA, and Oettinger Imex AG cigar businesses all filed domain proceedings against Respondent, and Respondent did not submit a Response in any of the proceedings.  Complainant notes that in all of these cases, the complainants were awarded an order for the transfer of the disputed domains to the respective complainant.  See Complainant’s Ex. J; see also John Middleton Co. v. Andrew Luthi, FA 1381380 (Nat. Arb. Forum May 6, 2011); see also David & Cie SA and Oettinger Imex AG v. Andrew Luthi, FA 1407508, FA 1407541 (Nat. Arb. Forum Oct. 31, 2011).  Previous panels have found that bad faith use or registration may be inferred from when UDRP or USDRP panels have found a respondent to have previously registered domain names in bad faith.  See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).  The Panel finds that Respondent’s bad faith use or registration of the <backwoodscigars.us> domain name can be inferred from a Policy ¶ 4(b)(ii) pattern of bad faith registration.

 

Complainant finally argues that Respondent is diverting Internet users from Complainant’s websites to the disputed domain name so as to confuse Internet users into believing there is some affiliation between Respondent and Complainant.  Complainant notes that Respondent’s domain name features logos, trademarks, and copyrighted material created and owned by Complainant.  Complainant worries that consumers will likely believe that this website is owned by, or affiliated with, Complainants.  Complainant believes that when Internet users try to go through the “Buy Cigars Now” hyperlink, they are rerouted to another domain name that sells Respondent’s own goods. The Panel finds that whether the disputed domain name is being used to suggest Respondent sells Complainant’s own products, or if it is used to redirect Internet users to competing goods, it is nonetheless indicative of a bad faith attempt to confuse Internet users for Respondent’s own financial gain under Policy ¶ 4(b)(iv).  See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <backwoodscigars.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                    Dated: March 15, 2013

 

 

 

 

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