M. Shanken Communications, Inc. v. Roberto Markcus
Claim Number: FA1504001614535
Complainant is M. Shanken Communications, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Roberto Markcus (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigaraficionado.net>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2015; the Forum received payment on April 14, 2015.
On April 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cigaraficionado.net> 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2015 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.net. Also on April 20, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it, M. Shanken Communications, Inc., is the owner of the trademark/service mark CIGAR AFICIONADO in word and block form, the subject of numerous worldwide registrations, including the registrations in the
United States, covering a variety of goods and services relating to its world
famous print and on-line magazine in the field of cigars. Since launching its magazine in 1992, Complainant has invested substantial time, money and effort in the marketing and sales of its goods and services under the CIGAR AFICIONADO trademarks on an international scale, including numerous cigar sampling and educational events, and has marketed its products and
provided digital content at cigaraficionado.com since 1997. Its magazines feature numerous articles about and advertisements from notable cigar manufacturers, brand owners and merchants. As a result, the CIGAR AFICIONADO trademarks are famous and now enjoy enormous consumer recognition and substantial goodwill and, thus, are properties of incalculable value to Complainant.
Complainant contends that the disputed domain name incorporates the Complainant’s famous trademark in its entirety and merely adds the gTLD .net to the end of the trademark. As such, the disputed domain name is confusingly similar to Complainant’s registered and famous trademarks.
Complainant contends that Respondent is not making any legitimate non-commercial or fair use of the subject domain name. In fact, Respondent has never made any use of the subject domain name, as admitted in the correspondence to Complainant on September 6, 2014. Respondent does not use the domain name in connection with the bona fide offering of any
goods or services, nor is Respondent conducting any business activities under the CIGAR AFICIONADO Marks.
Also, Complainant contends that the Respondent has engaged in bad faith use and registration of the disputed domain name. The Complainant is in possession of an e-mail purportedly from the Respondent wherein the Respondent offers the disputed domain name for sale to the Complainant.
Complainant further argues that by attempting to sell a domain name registration that incorporates Complainant’s CIGAR AFICIONADO trademarks in their entirety, Respondent is, in effect, trading or intending to trade on the goodwill established by Complainant under the CIGAR AFICIONADO trademarks, and to facilitate third parties in doing the same, thus providing a further basis for the
presumption of bad faith. Indeed, registration of a domain name that incorporates another trademark with actual or constructive knowledge of its use as a mark suggests no rights and legitimate interests in the domain name and can serve as evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on December 18, 2013.
As the Respondent has failed to submit a Response in this matter, the Panel decides the case based on the reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainants trademarks, that the Respondent has no rights or legitimate interests in or to the disputed domain name and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.
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.”).
There is little doubt that the disputed domain name is confusingly similar to the Complainant’s famous and registered trademarks. The Respondent merely attaches the gTLD .net to the end of Complainant’s trademark to arrive at the disputed domain name.
The Panel, therefore, finds that the disputed domain name is confusingly similar, if not identical, to the Complainant’s famous and registered trademarks.
Respondent is making no good faith use of the disputed domain name. In fact, the only evidence in the record to establish that the Respondent made any use of the disputed domain name consists of an email communication from the Respondent dated September 16, 2014 wherein Respondents admits that the disputed domain name consisted of “domain name forwarding.” Complainant relies on U.S. News and World Report, Inc. v. Zhongqi, FA 91707 (Nat. Arb. Forum Apr. 9, 2007) for the proposition that “Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interest pursuant to Policy ¶4(a)(ii).”
As the Respondent has not provided any evidence to the contrary, the Panel agrees with Complainant that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Complainant relies on Respondent’s express intention to sell the disputed domain name to evidence bad faith use and registration. The Complainant contends that the Respondent is offering the disputed domain name for sale at a price that far exceeds its out of pocket expenses. The Panel looks in vain for evidence of this fact. To be sure, the Respondent is attempting to sell the disputed domain name to the Complainant or any other third party. The record is devoid of evidence that shows the price Respondent is demanding for this domain name. As such, the Panel finds that this claim by Complainant is not supported by the evidence in the record.
However, Respondent’s attempt to sell the disputed domain name which consists of Complainant’s trademark in its entirety is an attempt to trade off of the good will of Complainant’s famous trademarks. This attempt to trade off of the good will of Complainant’s famous mark, taken in a totality of the circumstances, evidences bad faith use and registration of the disputed domain name.
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.net> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: May 19, 2015
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