M. Shanken Communications, Inc. v. Wall Decor Prints
Claim Number: FA1404001552346
Complainant is M. Shanken Communications, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Wall Decor Prints (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigaraficionado.org>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2014; the National Arbitration Forum received payment on April 2, 2014.
On April 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cigaraficionado.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2014 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@cigaraficionado.org. Also on April 3, 2014, 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 April 3, 2014.
On April 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Complainant, M. Shanken Communications, Inc., is the owner of the CIGAR AFICIONADO mark, which covers a variety of goods and services relating to its world-famous print and online magazine in the field of cigars.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CIGAR AFICIONADO mark (e.g., Reg. No. 2,025,421, registered December 24, 1996).
iii. Respondent’s <cigaraficionado.org> domain name is identical to Complainant’s CIGAR AFICIONADO mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent has never made any use of the disputed domain name.
i. Respondent has registered and is using the disputed domain name in bad faith.
ii. Respondent was looking for a significant payment for the disputed domain name.
B. Respondent
In its Response, Respondent made a number of submissions to the effect that Complainant’s trademark CIGAR AFICIONADO is a descriptive term and that consequently it cannot be protected by trademark. Respondent’s submission to that effect was expressed in various forms in the Response and in extensive correspondence during the conduct of the proceeding. However, to ensure Respondent that its submissions were fully taken into account, the Panel appends here the entire Response. The Response is as follows:
“ RESPONSE
While trademark law has provided an expansion of rights to owners of strong trademarks, not all trademarks qualify for such rights. Even where trademark owners have registered trademarks, this registration does not confer trademark strength. But in the pre-litigation enforcement stage, the assessment of the strength of one’s trademark and its corresponding scope of protection is privately conducted, which means that the trademark owner can feel free to claim strength where there is none.
Trademark owners cross the line into bullying when they take advantage of this subjectivity and contend that their trademark is worthy of strong protection without the evidence to support. Another form of bullying comes when a trademark owner attempts to control all uses of a descriptive or generic term that the owner has registered as a trademark.
The word Cigar Aficionado is a descriptive term and cannot be trademarked, therefore my company owning the domain and marketing it to other Cigar companies is no violation of trademark or cybersquatting either because a company can’t trademark a descriptive term and no one can cybersquat a generic term. This is so obvious that it’s hardly worth mentioning. It’s like they tried to trademark the keyword cheese pizza … which I’m sure even at a glance most people realize that you cannot do that.
A Cigar Aficionado is a person that has a fondness for Cigars … it is not a company or a magazine. It is simply a descriptive term. My company identifies vulnerabilities like this and if we realize through research that a domain that we own actually is trademarked … then we / I would easily concede and give the domain up. Our research has shown that the term Cigar Aficionado is just that a generic term that cannot be trademarked. Also as it stands the magazine CigarAficionado.com has implemented several scare tactics including demanding I give up the domain before any type of legal procedures are concluded. The Shanken Group has demonstrated a flair for domain bullying and if they’d of simply contacted me … we could of worked this out long before any type of legal proceedings. As an American and patriot … I do not take kindly to bullying. They have a better chance of my organization transferring this domain with real communication instead litigation, arbitration, or bullying. I will not stand for it.
You cannot take a descriptive keyword and make it your Trademark. This is beyond obvious and constitutes the Shanken Group as Domain bullies. Also the Shanken group did not realize that they named their main business based on a general keyword and now wish ICann to protect them because they attempted to trademark a dictionary word.
Definitions:
Cigar: a cylinder of tobacco rolled in tobacco leaves for smoking.
Aficionado: a person who is very knowledgeable and enthusiastic about an activity, subject, or pastime.
Cigar Aficionado is not a Trade Mark… it’s a descriptive generic term and a domain that is based on this term is not in trademark violation unless they build a cigar magazine on the domain name in dispute. My goal is to either build an actual cigar shop on the domain CigarAficionado.ORG or sell it to a Cigar Shop.
This is very clear cut. There is no trademark violation here and No one should be allowed to bully a domain name from an American Citizen. I know my rights and I know that despite my behavior to get the Shanken groups attention in this oversight … I know that not any company or individual can Trademark a dictionary term. It was my goal all along to get their attention and come to an agreement over the transfer of this domain but instead of communication … they began bullying me.
Further as a point to shed some antiseptic light on this issue. I’ve started an email campaign in which I am sending this information and my responses out to 20,000 different cigar shops, forums and groups over the internet. The Shanken group’s behavior in the matter has been fairly deplorable. They have lawyers when I don’t … they have money where I don’t and are using their size to bully and get me to capitulate acquiescence in this matter and I simply refuse. All they’d had to do is talk to me. Now I’m upset and offended and ICANN would have to ignore a very basic concept to take this domain name from me.
Taking this domain from my company would set a precedent in which large companies could start trademarking descriptive and generic terms such as
Black boots (,)Tequila Aficionado(,)Candy Lovers and on and on.
This is such an obvious point that the Shanken Group should realize this and withdraw. You cannot trademark a descriptive generic term.
Thanks you for your consideration,
Roger Seawright
Internet Consulting
301-385-5833”
C. Additional Submissions
During the proceeding, correspondence took place between Complainant’s representative and Respondent. Where relevant to the decision, that correspondence is sufficiently referred to later in this decision.
1. Complainant, M. Shanken Communications, Inc. is the owner of the CIGAR AFICIONADO mark, which covers a variety of goods and services relating to its world-famous print and online magazine in the field of cigars.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CIGAR AFICIONADO mark (e.g., Reg. No. 2,025,421, registered December 24, 1996).
3. Respondent registered the <cigaraficionado.org> domain name on January 8, 2014.
4. The domain name is not used for an active website and has been offered for sale by Respondent to cigar companies and at a substantial sum.
Preliminary Issue: Arbitration Jurisdiction
Respondent argues that Respondent has not agreed to arbitration. However, Respondent consented to be bound by the UDRP when it executed the Registration Agreement with the Registrar. The verification e-mail from GoDaddy.com, LLC reflects that the UDRP applies to Respondent’s registration of the disputed domain name. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that the UDRP applied because: “[b]y virtue of its contract with NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future”). While Policy ¶ 4(k) allows the parties to litigate in court, the Panel remains free to decide the instant dispute on the merits strictly under the guidelines of the Policy, and trademark issues other than those expressly enumerated within the Policy ¶ 4(a) elements fall outside of the scope of the Panel’s jurisdiction.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant submits that it is the owner of the CIGAR AFICIONADO mark, which covers a variety of goods and services relating to its world-famous print and online magazine in the field of cigars. Complainant alleges that it owns trademark registrations with the USPTO for the CIGAR AFICIONADO mark (e.g., Reg. No. 2,025,421, registered December 24, 1996). See Complainant’s Annex 1. The Panel observes that Respondent resides within the United States. Accordingly, the Panel holds that Complainant’s registration of the CIGAR AFICIONADO mark with the USPTO serves as proof of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CIGAR AFICIONADO mark. Complainant contends that Respondent’s <cigaraficionado.org> domain name is identical to Complainant’s CIGAR AFICIONADO mark. Complainant asserts that the disputed domain name incorporates Complainant’s mark in its entirety. The Panel notes that Respondent removes the space in the CIGAR AFICIONADO mark and adds the generic top-level domain (“gTLD”) “.org.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Accordingly, as the domain name is the same as the trademark except for the minor differences noted, the Panel holds that Respondent’s <cigaraficionado.org> domain name is identical to Complainant’s CIGAR AFICIONADO mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <cigaraficionado.org> domain name is comprised of a common and descriptive term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take the whole of Complainant’s CIGAR AFICIONADO mark and to use it in its domain name, giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) Respondent has not used the domain name for any legitimate purpose and has made it plain that far from intending to use it for a legitimate purpose its intention has been to sell it to Complainant or to another party for a substantial sum;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <cigaraficionado.org> domain name. Complainant asserts that Respondent has neither licensed nor otherwise permitted Respondent to use the CIGAR AFICIONADO mark or to apply for or use any domain name incorporating the CIGAR AFICIONADO mark. The Panel notes that the WHOIS record lists “Wall Decor Prints” as the registrant of the disputed domain name. Further, Respondent self-identifies as “Roger Seawright / Internet Consulting” in its Response. Accordingly, the Panel concludes that Respondent is not commonly known by the <cigaraficionado.org> domain name under Policy ¶ 4(c)(ii). See, e.g., M. Shanken Comms. 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 Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant argues that Respondent has never made any legitimate use of the <cigaraficionado.org> domain name. Complainant contends that Respondent is not using the disputed domain name to conduct any business activities. Complainant asserts that Respondent is merely holding the domain name for sale. The Panel observes that Respondent has solicited its disputed domain name, offering to sell it to Complainant or others by stating “I am Accepting Offers for this valuable domain name.” See Complainant’s Annex 2. In Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000), the panel found no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights. As the Panel finds that Respondent registered the <cigaraficionado.org> domain name with the intention to sell it, the Panel holds that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. It then remains to see if Respondent has been able to rebut that prima facie case. The Panel has given careful consideration to all of the submissions made by Respondent in that regard, but finds that Respondent has not rebutted the prima facie case against it. That is so for the following reasons. First, as has already been pointed out, Respondent’s submission with respect to trademark law cannot be applied in the present proceeding, as the Policy, by which Respondent became bound when it registered the domain name, specifies the guidelines for determining this dispute and the Panel may not go beyond them. Secondly, it is apparent from the evidence that Respondent acquired the disputed domain name because it thought it could opportunistically take advantage of the fact that although Complainant had registered <cigaraficionado.com> it had not registered <cigaraficionado.org> and that Respondent could turn this fact to its advantage by extracting money from Complainant or other cigar companies by selling the domain name to them for a substantial sum of money. Such a series of events cannot conceivably give rise to a right or a legitimate interest in the domain name on the part of Respondent.
Moreover, nothing that Respondent has submitted shows a right or legitimate interest on the part of Respondent in the dispute domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant argues that Respondent was looking for a significant payment for the <cigaraficionado.org> domain name. The Panel notes that Respondent has offered to sell the disputed domain name to Complainant or others stating “I am Accepting Offers for this valuable domain name. Please only serious offers will be considered.” See Complainant’s Annex 2. Prior UDRP panels have held that a respondent’s use of a domain name to sell it shows bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <cigaraficionado.org> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
The facts of the case also bring it within Policy ¶ 4(b) (iii).That is so because it is clear that Respondent concluded that by acquiring the domain name it put itself into the market as a competitor of Complainant in the use of domain names incorporating the expression “cigar aficionado” where the reward would be a substantial sum of money. As such it intended to disrupt Complainant’s business until Complainant agreed to pay to acquire the domain name.
Moreover, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the CIGAR AFICIONADO mark and in view of the conduct that Respondent engaged in as soon as it registered the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cigaraficionado.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 14, 2014
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