Caduceus Communications, Inc. d/b/a Craft Beer Institute v. Justin Lawrence
Claim Number: FA1308001514074
Complainant is Caduceus Communications, Inc. d/b/a Craft Beer Institute (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is Justin Lawrence (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <backyardcicerones.com>, registered with eNom, Inc.
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.
Mrs. Antonina Pakharenko Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2013; the National Arbitration Forum received payment on August 13, 2013.
On August 13, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <backyardcicerones.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2013 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 postmaster@backyardcicerones.com. Also on August 21, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on August 26, 2013.
On September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant created the renowned certification program for beer servers known as the “Cicerone Certification Program.”
2. Complainant has been using the CICERONE CERTIFICATION PROGRAM mark in connection with its program continuously for six years.
3. Complainant owns rights in its family of marks pursuant to its registrations with the United States Patent and Trademark Office (“USPTO”):
a. CICERONE:
i. Reg. No. 3,811,298 registered June 29, 2010;
b. CICERONE CERTIFIED BEER SERVER:
i. Reg. No. 4,358,643 registered June 25, 2013;
c. CERTIFIED CICERONE:
i. Reg. No. 4,358,642 registered June 25, 2013;
ii. Reg. No. 3,864,791 registered October 19, 2010;
d. MASTER CICERONE:
i. Reg. No. 4,358,641 registered June 25, 2013;
ii. Reg. No. 3,864,792 registered October 19, 2010;
e. CICERONE CERTIFICATION PROGRAM:
i. Reg. No. 3,832,386 registered August 10, 2010.
4. Complainant owns registrations for its CICERONE marks in countries around the world including:
a. Canadian Intellectual Property Office (“CIPO”) (Reg. No. 835,529 registered November 1, 2012);
b. European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 10,285,831 registered April 19, 2012).
5. Society has associated the CICERONE mark with Complainant’s business before Respondent registered the disputed domain name.
6. Respondent’s <backyardcicerones.com> domain name is confusingly similar to Complainant’s CICERONE mark.
a. Respondent’s <backyardcicerones.com> domain name contains Complainant’s CICERONE mark in its entirety.
b. Respondent adds the letter “s” as well as the descriptive term “backyard” to Complainant’s mark.
c. Respondent adds the generic top-level domain “.com” to Complainant’s mark.
7. Respondent has no rights or legitimate interests in the <backyardcicerones.com> domain name.
a. Respondent is not commonly known by the <backyardcicerones.com> domain name.
b. Complainant has not approved, licensed, or authorized Respondent to use its mark in any way.
c. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
d. Respondent is intentionally attempting to confuse Internet users as to the source of Respondent’s website.
e. Respondent is diverting Internet users who are seeking Complainant’s services.
8. Respondent registered and is using the <backyardcicerones.com> domain name in bad faith.
a. Respondent’s <backyardcicerones.com> domain name resolves to a website purporting to offer education services in the field of beer.
B. Respondent
1. A confusingly similar or identical domain name is not grounds for a claim of infringement or grounds to cancel a pre-existing domain name registration.
2. Including the term “backyard” in the domain name conveys a message of being casual and informal, indicating that it is not attempting to be the same as Complainant.
3. Respondent is using the domain name as a guide to Respondent’s personal insights regarding gastro and libations, from Respondent’s own residence.
4. Complainant only has partial ownership of the word “cicerone” because it is a common language word in multiple countries.
5. Respondent is not financially profiting from its use of the disputed domain name.
6. Respondent holds legitimate rights and interests in the disputed domain name.
a. “Justine Lawrence” is the legitimate registrant of the domain name.
b. Respondent’s use of the disputed domain name is not confusingly similar to Complainant’s use.
7. Respondent is not a certification program and does not offer education or services.
8. Respondent’s use does not compete with Complainant’s use.
9. Respondent has offered, in good faith, to include a disclaimer on Respondent’s resolving website. Complainant failed to respond to this offer.
A. Complainant
Complainant argues that it created and oversees the famous certification program for beer servers known as the “Cicerone Certification Program.” Complainant claims that it has used its CICERONE mark for over six years and has issued about 28,000 certifications to beer servers all over the world. Complainant asserts that its CICERONE CERTIFICAITON PROGRAM has a specific meaning associated with Complainant and its services. Complainant argues that its program consists of three levels of expertise including the first level students who are licensed to use the CERTIFIED BEER SERVER mark. Complainant explains that students who pass the second level are licensed to use the CERTIFIED CICERONE mark. Complainant states that those who pass the third level are licensed to use the MASTER CICERONE mark. Complainant asserts its rights in its family of CICERONE marks through its registrations with the USPTO as well as with CIPO and OHIM.
Complainant contends that Respondent’s <backyardcicerones.com> domain name is confusingly similar to Complainant’s CICERONE mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent’s <backyardcicerones.com> domain name includes Complainant’s CICERONE mark in its entirety with the addition of the term “backyard,” the letter “s,” and the gTLD “.com.”
Complainant states that the WHOIS information for Respondent’s <backyardcicerones.com> domain name lists “WhoisGuard, Inc.” as registrant.
Complainant also claims that it has not approved, licensed, or certified Respondent to use its CICERONE mark in any way. Previous panels have found that a Respondent is not commonly known by a disputed domain name where the information on the record, including the WHOIS information does not indicate a relationship.
Complainant argues that Respondent has no rights or legitimate interests in the <backyardcicerones.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. Complainant argues that Respondent uses the disputed domain name to confuse potential visitors as to the source of Respondent’s services. Complainant argues that Respondent’s use diverts consumers away from Complainant’s business. The Panel notes that Complainant provides a screenshot of Respondent’s <backyardcicerones.com> domain name in Annex I.
B. Respondent
Respondent contends that showing that a disputed domain name is similar or identical is not enough to sustain grounds for a claim of infringement or dilution or grounds to cancel a pre-existing domain name registration. Respondent claims that its inclusion of the word “backyard” in the <backyardcicerones.com> domain name portrays Respondent’s business as casual or informal and not the same as Complainant’s business. Respondent argues that it uses the word “Cicerone” because it is a common word meaning “a guide who gives information” according to the Oxford Dictionary.
Respondent argues that it used a private registration when it purchased the disputed domain name and that Respondent, Justin Lawrence, is the legitimate registrant of the domain name. Respondent further argues that its interpretation of its disputed domain name comes from the common word “cicerones” found in the English dictionary. Respondent claims that because of this, Complainant has only partial ownership of the mark. Respondent contends that it uses the disputed domain name as a discussion of food and libations and to offer personal opinions. Respondent argues that it is not profiting financially from its use of the <backyardcicerones.com> domain name. Respondent argues that there is no likelihood of confusion between Complainant and Respondent’s use of the word “Cicerone.” Respondent argues that any confusion between the website resolving from the disputed domain name is dispelled by simply looking at the website.
Respondent claims it uses its website resolving from the disputed domain name to offer personal experiences and opinions regarding food and beverages. Respondent claims that it has never competed with Complainant and has no intention of doing so in the future. Respondent claims that Internet users will not be confused as to Complainant’s involvement with Respondent’s website resolving from the disputed domain name because the Twitter account features photographs of food, and photos of Respondent’s pet dog. Respondent claims that this is not similar or related to Complainant’s educational or certification program.
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 and is being used in bad faith.
There are two requirements that the Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
Previous panels have found that providing evidence of a registration for a mark is enough to establish rights in a given mark for Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). The Panel notes that Complainant holds trademark registrations in the countries of origin of both Complainant, the United States, and Respondent, Canada. The Panel thus finds that Complainant has rights in its family of CICERONE marks under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <backyardcicerones.com> domain name is confusingly similar to Complainant’s CICERONE mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent’s <backyardcicerones.com> domain name includes Complainant’s CICERONE mark in its entirety with the addition of the term “backyard,” the letter “s,” and the gTLD “.com.” Previous panels have found that variations such as adding descriptive words, letters, or gTLDs are insufficient to differentiate a disputed domain name from a given mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); 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). Based on prior UDRP decisions, the Panel finds that Respondent’s <backyardcicerones.com> domain name is confusingly similar to Complainant’s CICERONE mark under Policy ¶ 4(a)(i).
Complainant owns rights in its family of marks pursuant to its registrations with the United States Patent and Trademark Office (“USPTO”):
b. CICERONE:
i. Reg. No. 3,811,298 registered June 29, 2010;
c. CICERONE CERTIFIED BEER SERVER:
i. Reg. No. 4,358,643 registered June 25, 2013;
d. CERTIFIED CICERONE:
i. Reg. No. 4,358,642 registered June 25, 2013;
ii. Reg. No. 3,864,791 registered October 19, 2010;
e. MASTER CICERONE:
i. Reg. No. 4,358,641 registered June 25, 2013;
ii. Reg. No. 3,864,792 registered October 19, 2010;
f. CICERONE CERTIFICATION PROGRAM:
i. Reg. No. 3,832,386 registered August 10, 2010.
Thus, the Panel finds that the Complainant holds the trademark rights in a series of the marks with the common element “cicerone”. Although the “cicerone” element is the dictionary word, inherently it does not possess the high degree of distinctiveness. The distinctiveness of a sign is not an absolute and unchangeable factor. Depending on the steps taken by the user of the sign or third parties, it can be acquired or increased or even lost. Circumstances such as (possibly long and intensive) use of the sign have to be taken into account Common words from everyday language can also be highly distinctive if they communicate a meaning that is arbitrary in relation to the products on which they are used.
Due to the extensive and various uses of the mark “cicerone” by the Complainant, the Panel finds that this name communicates now the meaning arbitrary to a consumer and is serving now as an indicator of the source of services.
The domain name <backyardcicerones.com> is actually composed of the word combination “backyard cicerones” made of two dictionary words, and the gTLD “.com.”
Thus, the domain name includes the highly distinctive and easily recognizable element “cicerone” used in plural form with the addition of the word “backyard” that is the common word taken from the everyday language and may be regarded as the distinctive element in the domain name. Thus, there is the likelihood that Internet users may associate the domain name with the Complainant as they where the consumers may have become accustomed to associate the series with a common source, and will tend to make the same assumption about any new trademark and/or domain name containing the same element.
This word combination does not have an individual meaning that might preclude confusion between the domain name and the Complainant’s mark either.
Previous panels have found that variations such as adding descriptive words, letters, or gTLDs are insufficient to differentiate a disputed domain name from a given mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); 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). Based on prior UDRP decisions, the Panel finds that Respondent’s <backyardcicerones.com> domain name is confusingly similar to Complainant’s CICERONE mark under Policy ¶ 4(a)(i).
Therefore, the Panelist holds that the Respondent’s <backyardcicerones.com> domain name is confusingly similar to the Complainant’s CICERONE mark under Policy ¶ 4(a)(i).
While the overall burden of proof rests with the complainant, the Panel recognizes that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
The Panel finds that that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) as the WHOIS information for Respondent’s <backyardcicerones.com> domain name lists “Justin Lawrence” as the domain name registrant.
The Respondent has not been approved, licensed, or certified by the Complainant to use its CICERONE mark in any way. Previous panels have found that a Respondent is not commonly known by a disputed domain name where the information on the record, including the WHOIS information does not indicate a relationship. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel further recognizes that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.
The Panel also takes into consideration that Respondent’s <backyardcicerones.com> domain name resolves to a website featuring the greeting, “Welcome to Backyard Cicerones, making the world of Beer better!” The Panel also notes that Complainant provides a screen shot of Respondent’s Twitter page featuring the name “Justin Lawrence @bycicerones” and the phrase, “Backyard Cicerones Let us be your guide to better food and beer.” Previous panels have found that using a confusingly similar domain name to resolve to a website aimed at competing with and redirecting Internet users away from a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Thus, the Panel finds that Respondent’s use of the confusingly similar domain name to compete with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel thus concludes that Respondent has no rights or interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
The Panel finds that Respondent uses the disputed domain name relating to the beer and food industry, and therefore competes with Complainant’s services and certification programs as creates the clear association with the Complainant’s business and its certification programs as the website contains the information “Backyard Cicerones Let us be your guide to better food and beer.” That may create an impression that the web-site is operated by the persons certified by the Complainant.
Previous panels have found bad faith use and registration where a respondent uses a confusingly similar domain name to divert Internet users seeking a complainant’s business, to the respondent’s website featuring competing goods or services. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Thus the Panel is of the opinion that Respondent registered and is using the <backyardcicerones.com> domain name in bad faith under Policy ¶ 4(b)(iv) as the Respondent is causing visitors to falsely believe that Respondent is certified by or related to Complainant or its services. Previous panels have found bad faith use and registration when a respondent uses a confusingly similar domain name to offer similar services as complainant’s. See 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).
The Panel also infers some commercial use of the disputed domain name that Respondent accomplishes by creating a likelihood of confusion with the Complainant’s mark.
Accordingly, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <backyardcicerones.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: October 11, 2013
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