M. Shanken Communications, Inc. v. WORLDTRAVELERSONLINE.COM
Claim Number: FA0606000740335
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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).”).
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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