M. Shanken Communications, Inc. v.
WORLDTRAVELERSONLINE.COM
Claim Number: FA0606000740335
PARTIES
Complainant is M. Shanken Communications, Inc. (“Complainant”), represented by Robert F. Zielinski, of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22 Floor, Philadelphia, PA 19103-2097. Respondent is WORLDTRAVELERSONLINE.COM (“Respondent”), Tomasska 14, Prague 1 11800 Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigaraficionada.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 27, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 29, 2006.
On June 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <cigaraficionada.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 19, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@cigaraficionada.com by e-mail.
A timely Response was received and determined to be complete on July
18, 2006.
On July 24, 2006, an additional submission was submitted by
Complainant. On July 25, 2006, an
additional submission was submitted by Respondent.
On July 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is the owner of the trademarks CIGAR AFICIONADO and CIGAR AFICIONADO (stylized)
and is the owner of three U.S. Trademark Registrations for CIGAR AFICIONADO,
used in connection with publications and computer services (online magazines)
relating to cigars. Complainant has
been using the trademark CIGAR AFICIONADO in commerce since at least as early
as 1992. In addition, on December 5,
1995, Complainant registered the domain name <cigaraficionado.com> which
incorporates its CIGAR AFICIONADO trademark.
Complainant owns and operates a website promoting the online version of
its “Cigar Aficionado” magazine. Over
the past 14 years, Complainant has spent millions of dollars in advertising and
marketing expenses related to its goods and services and the CIGAR AFICIONADO
trademark.
On May 22, 2005, Respondent registered the domain name <cigaraficionada.com>
and uses the website to promote goods and services relating to cigars and cigar
appreciation. It provides links to
cigar distributors and cigar accessories.
This domain name is virtually identical or confusingly similar to the
Complainants trademark registrations.
The only difference is the substitution of the letter “a” for the last
“o” in “aficionado.” This substitution
does not sufficiently distinguish the domain name from Complainant’s CIGAR
AFICIONADO marks.
Respondent does not have any rights or legitimate interests in the
domain name. It is not affiliated with
Complainant or any other business concern claiming any interest in the term
“cigar aficionado.” Respondent is not
commonly known by the domain name but rather by the name
“worldtravelersonline.com.” It is clear
that Respondent chose the domain name in an effort to create confusion as to
the source, sponsorship, affiliation or endorsement of Respondent’s goods and services
or to benefit from the value created by Complainant’s marks or its domain
name.
The domain name was registered and used in bad faith. Respondent’s bad faith is evidenced by
registration of a domain name confusingly similar to a well-known trademark. Clearly Respondent had knowledge or
reasonably should have had knowledge of Complainant’s usage and registration of
its well-known marks and domain name.
Moreover, Respondent is using the domain name to divert Internet users
to a website featuring links to cigars, cigar appreciation and cigar related
activities. Such use creates a
likelihood of confusion for its own commercial gain.
B. Respondent
Worldtravelersonline.com has been active on the Internet since
1999. It owns and operates many websites
on many different interests and subjects.
It is stated that he is personally a cigar aficionado and has been for
many years. He started a Yahoo club
called “Internet Cigar Guide” in April, 2000.
A few years ago, he came across a book titled a “Woman’s Guide to Cigar
Smoking” – “Everything you need to know to be the ultimate cigar
aficionada.” This gave him the idea to
start a niche website about women and cigars.
The disputed domain name was available and it was registered on May 22,
2005. It was registered in good faith
to pursue a niche market “Fine Cigars and Beautiful Women.” We have spent a considerable amount of time,
effort and money to develop this project and now, one year later, we are facing
a high jacking attempt. We were never
contacted by Complainant. We respect
and admire <cigaraficionado.com> and had they contacted us in a polite
manner, much sooner, we would have had a different attitude.
The similarity of the words “aficionado” and “aficionada” are purely
coincidental due to the Spanish origin and generic nature of the name. Aficionado pertains to men and aficionada
pertains to women. We registered the
domain name to target women smokers.
We have rights and legitimate interests in the domain name. We have spent substantial money, time and
effort to pursue a niche market and create a profitable business. We have advertised repeatedly on Google; we
have a Yahoo group with 170 members; we have a mailing list of over 700 people;
we have a blog; and, we are constantly working to improve and update our
website. As to the allegation that we
are not commonly known by the domain name, “worldtravelersonline.com” is simply
the registrant and mother company. Each
website we own and operate has its own identity, image and purpose.
We did not choose the domain name to create confusion. We chose it to pursue a similar but
different market. We do not use the
domain name to divert anybody. We
target different markets.
C. Additional Submissions
Complainant first raises procedural issues related to the filing of the
Response and the lack of a certification that the information contained is
complete and accurate. It then replies
to the Respondent’s assertions.
Complainant points out that Respondent is familiar with Complainant’s
“Cigar Aficionado” magazine and its online version at
<cigaraficionado.com>. It is
logical to conclude that Respondent knew of Complainant’s marks and yet
proceeded to register and use a virtually identical domain name in connection
with virtually similar goods and services.
In fact, Respondent had appropriated a licensed picture of actress Demi
Moore from Complainant’s “Cigar Aficionado” magazine and website and has placed
it on the website located at the disputed domain name. The photograph, among others, was taken as
part of a 1996 “Cigar Aficionado” magazine layout and article on Demi Moore in
which she was featured on the cover.
This is probative of two issues namely, Respondent’s actual knowledge of
Complainant and its website and Respondent’s intent to create confusion amongst
visitors to its website.
Respondent asserts that, due to its Spanish origin and generic nature,
the similarity between Complainant’s CIGAR AFICIONADO marks and the disputed
domain name is “purely coincidental.”
This reasoning is clearly flawed and misplaced. Complainant’s trademark is comprised of an
English word, “cigar,” and a Spanish work, “aficionado.” The resultant mark is thus a hybrid term
creating a unique and distinct mark.
While Respondent has argued that, “by its dictionary definition a cigar
aficionado is a MAN who loves cigars. A
cigar aficionado is a WOMAN who loves cigars,” Respondent cites no dictionary,
publication or other reference that defines a “cigar aficionado.” And, Complainant has found no dictionary
definition of a “cigar aficionado” as claimed by Respondent.
Respondent asserts that Complainant has only targeted men and that
Respondent pursues a niche market different from that, namely woman cigar
smokers. Over the past 14 years, Complainant
has targeted both men and women. It
does this through its publication of non-gender specific articles on cigars,
cigar appreciation, and cigar related activities. On occasion, Complainant has targeted women cigar smokers through
use of female celebrities on its magazine covers as well as female perspective
articles. Those who have appeared on
the cover include Linda Evangelista, Demi Moore, Claudia Schiffer, Bo Derek,
Raquel Welch and Sharon Stone. It is
clear that Respondent is intentionally diverting Internet users from
Complainant’s site for its own commercial gain, which is not a legitimate
noncommercial or fair use of the disputed domain name.
If Respondent wanted to target women cigar smokers, it could have
chosen any number of domain names not confusingly similar to Complainant’s
mark. For example Respondent could have
chosen fine-cigars-and-beautiful-women.com, womenandcigars.com,
women-cigar-lovers.com, and others.
However, Respondent chose to register and use the disputed domain name 13
years after Complainant began using its mark and 10 years after establishment
of Complainant’s website.
Respondent filed an additional submission restating basically
everything that was raised in his response.
Also, the additional submission contained the certification which was
lacking in the original response.
Respondent also asserts that the Complainant’s request to transfer the
domain name is an attempt at high jacking.
Respondent confirms that it knew of Complainant’s magazine and website
prior to registration. He states that
he registered the disputed domain name because it was available. Photos of Demi Moore were not taken from
Complainant’s magazine but were submitted by a site visitor. The photo has appeared on countless
websites. Respondent does not dispute
the fame of Complainant’s publication but simply claims that the two names
describe two different segments of a market or groups. Respondent claims a legitimate interest in
the domain because of the time, effort and money spent for over a year. Complainant could have acted in good faith
by contacting them much sooner.
Complainant’s suggestion that we could have registered other domain
names to target women cigar smokers is irrelevant.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2006 and in hard copy on June 29, 2006. The deadline for Response was July 19, 2006. Respondent submitted a Response in electronic copy on July 17, 2006. The National Arbitration Forum determined the Response to be deficient at that point because Respondent did not submit a hard copy. The National Arbitration Forum forwarded a copy of the Response to Complainant on July 17, 2006, when the Response was still deficient. On July 18, 2006, a hard copy of the response arrived from Respondent, within the deadline for Response, and therefore, the National Arbitration Forum accepted the Response and deemed it complete pursuant to Supplemental Rule 5(a). The National Arbitration Forum did not notify Complainant of receipt of the hard copy because a courtesy copy had already been sent to Complainant on July 17, 2006. Therefore, Complainant was probably not aware that the Response was complete.
The National Arbitration Forum deemed the Response timely and complete pursuant to Supplemental Rule 5(a). Therefore, the Panel could consider this Response in making its decision.
FINDINGS
1 – The disputed domain name is virtually
identical and/or confusingly similar to Complainant’s mark.
2 – Respondent has no rights or legitimate
interests in respect of the disputed domain name.
3 – The disputed
domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 has registered the CIGAR AFICIONADO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,025,421 issued December 24, 1996; Reg. No. 2,054,780 issued April 22, 1997; Reg. No. 2,131,128 issued January 20, 1998). These trademark registrations are sufficient for Complainant to establish rights in the CIGAR AFICIONADO mark in accordance with Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks that were registered with a trademark authority).
Respondent’s <cigaraficionada.com> domain name is confusingly similar to Complainant’s CIGAR AFICIONADO mark because the disputed domain name differs from Complainant’s mark by only one letter, merely replacing “o” with “a.” Because Respondent’s domain name merely replaces one letter in Complainant’s mark, the <cigaraficionada.com> domain name is confusingly similar to the CIGAR AFICIONADO mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).
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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
The WHOIS information lists the registrant of the domain name as “WORLDTRAVELERSONELINE.COM,” and there is no other evidence in the record indicating that Respondent is commonly known by the <cigaraficionada.com> domain name. Complainant has not authorized or licensed Respondent to register or use a domain name incorporating any variation of Complainant’s mark. The Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
In addition, Respondent is using the <cigaraficionada.com>
domain name to operate a website offering cigars and cigar-related activities,
goods and services that Complainant also provides under its CIGAR AFICIONADO
mark. The Panel finds that Respondent
is redirecting Internet users seeking Complainant’s cigar-related products and
services to its own competing website for commercial gain, which is not a use
in connection with a bona fide offering of goods or services according
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to
Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
Complainant claims that Respondent
is using the <cigaraficionada.com> domain name to divert Internet
users to a website displaying links to cigars, cigar appreciation and
cigar-related activities. Complainant
asserts that Respondent likely profits from earning click-through fees for each
consumer it diverts to cigar-related websites that compete with Complainant. The Panel agrees with this assertion and
finds that Respondent is taking advantage of the confusing similarity between
the <cigaraficionada.com> domain name and Complainant’s CIGAR
AFICIONADO mark in order to profit from the goodwill associated with the
mark. Therefore, the Panel finds that
Respondent has registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (find that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to
Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb.
Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search
engine, a name that infringes upon Complainant’s mark, Respondent is found to
have created circumstances indicating that Respondent, by using the domain
name, has intentionally attempted to attract, for commercial gain, Internet
users to Respondent’s website by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the website or of a product or service on the website as proscribed in
Policy ¶ 4(b)(iv).”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cigaraficionada.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: August 3, 2006
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