Quality Importers Trading Company, LLC v. Bradon Wells
Claim Number: FA2001001881269
Complainant is Quality Importers Trading Company, LLC (“Complainant”), represented by Nathan P. Suedmeyer of Larson & Larson, P.A., Florida, USA. Respondent is Bradon Wells (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigarmechanicllc.com>, registered with Register.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.
On January 31, 2020, Register.com, Inc. confirmed by e-mail to the Forum that the <cigarmechanicllc.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 February 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@cigarmechanicllc.com. Also on February 3, 2020, 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 February 24, 2020.
On March 02, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Quality Importers Trading Company, LLC, is a national importer and wholesaler of cigars and smoking accessories. Complainant has rights in the CIGAR MECHANIC mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,840,099, registered August 20, 2019). Respondent’s <cigarmechanicllc.com> domain name is confusingly similar to Complainant’s CIGAR MECHANIC mark, as the domain name incorporates the mark in its entirety and adds the wording “llc” and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cigarmechanicllc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CIGAR MECHANIC mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to purposefully divert consumers away from Complainant.
Respondent registered and is using the <cigarmechanicllc.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business and commercially benefit by offering competing products. Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent is commonly known by the CIGAR MECHANIC mark. He argues first use of Cigar Mechanic before the Complainant.
Respondent is a marketing and sales firm for multiple cigar manufacturers, accessory manufacturers, and alternative tobacco products.
Respondents company was started on April 15, 2016 where it was first seen on Instagram. On May 14, 2016, the Cigar Mechanic logo was first revealed and instantly became something people wanted to have. On June 2, 2016, the Cigar Mechanic logo sticker made an appearance and the Respondent was flooded with requests to buy the stickers, so the Respondent had them made and sold them across the country. The brand started growing in popularity from there.
Today the Respondent is one of the largest brokerages in the western United States by territory and is quickly growing to one of the largest by volume as well. The Respondent is now partnered with multiple local online retailers, selling across the country. Cigar Mechanic has sold items worldwide. Cigar Mechanic is not an accessory line and does not sell any branded cigars or cigar accessories. The website sells hats, shirts, water bottles, mugs, bean bags and other non-cigar related items.
On December 29, 2016, Complainant filed trademark application serial number 87283802 for Cigar Mechanic, in the U.S. for the following goods:
IC 009: Hygrometers.
IC 034: Ashtrays; Cigar boxes not of precious metal; Cigar cases; Cigar cutters; Cigar holders; Cigar lighters; Cigar tubes; Humidors; Cigar humidifiers (collectively referred to as the “Goods.”).
On August 20, 2019, the U.S. Patent and Trademark Office registered the Cigar Mechanic trademark for the Goods as registration number 5840099 in the name of Complainant.
Respondent registered the disputed domain name on June 21, 2018. Respondent`s company was started on April 15, 2016 where it was first seen on Instagram.
Starting from December 4, 2019, the Complainants legal representative contacted the Respondent for a few times, but the parties were unable to amicably resolve this matter.
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.
Complainant claims rights in the CIGAR MECHANIC mark based upon registration of the mark with the USPTO (Reg. No. 5,840,099, registered August 20, 2019). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The Panel therefore holds that Complainant’s registration of the CIGAR MECHANIC mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <cigarmechanicllc.com> domain name is confusingly similar to the CIGAR MECHANIC mark, because the domain name incorporates the mark in its entirety and adds the wording “llc” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Adding a gTLD to a complainant’s mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the addition of a gTLD is irrelevant to a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore agrees that Respondent’s domain name, <cigarmechanicllc.com>, is virtually identical in sound, appearance, and commercial impression to Complainant’s registered trademark, Cigar Mechanic®. Likelihood of confusion is not avoided by Respondent’s addition of the wording “llc.”
The Panel therefore determines that the <cigarmechanicllc.com> domain name is confusingly similar to the CIGAR MECHANIC mark per Policy ¶ 4(a)(i).
It is now well established 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues that he is commonly known by the CIGAR MECHANIC mark due to his continued use of the mark in the industry since April 15, 2016.
Doing business under a name prior to registration may evince rights and legitimate interests. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Respondent provides proof of its continued use of the CIGAR MECHANIC mark through Instagram posts and sales of products with his logo across the country. Therefore, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name.
Respondent also argues he makes a bona fide offering or goods or services or a legitimate noncommercial use. Specifically, Respondent offers marketing services to cigar companies and is not a cigar wholesaler. The Panel finds that such use constitutes a bona fide offering or goods or services or a legitimate noncommercial use under Policy ¶ 4(c)(i) or (iii). See Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). The Panel notes that Respondent does not argue that his use is unrelated to Complainant, only that it is not competing with Complainant.
Therefore, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name <cigarmechanicllc.com> per Policy ¶ 4(a)(ii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”).
The Panel notes that if Respondent’s registration of the <cigarmechanicllc.com> domain name predates Complainant’s first claimed rights in the CIGAR MECHANIC mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Since the Panel concludes that Respondent has rights or legitimate interests in the <cigarmechanicllc.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel further finds that Respondent has not registered or used the <cigarmechanicllc.com> domain name in bad faith since it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
Respondent argues that the disputed domain name does not actually compete with Complainant. Respondent contends that his business is a marketing business and not related to Complainant’s wholesale business. Such use is sufficient to overcome a finding of bad faith. See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
The Panel therefore finds Respondent have not registered and used the disputed domain name <cigarmechanicllc.com> in bad faith per Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cigarmechanicllc.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: March 16, 2020
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