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WIPO Arbitration and
Fuente Cigar LTD and Fuente Marketing LTD v. E.W Industries
Case No. D2004-0200
1. The Parties
The Complainants are Fuente Cigar Ltd., a Turks and Caicos Islands corporation and Fuente Marketing Ltd., a British Virgin Islands corporation, represented by Finnegan, Henderson, Farabow, Garrett, & Dunner LLP., United States of America.
The Respondent is E.W Industries, British Columbia,
2. The Domain Name and Registrar
The disputed domain name <fuentefuenteopusx.com>
is registered with Go Daddy Software, Inc. d/b/a GoDaddy.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2004 (electronic version) and on March 19, 2004, (hardcopy). On March 17, 2004, the Center transmitted by email to Go Daddy Software, Inc. d/b/a GoDaddy.com a request for registrar verification in connection with the domain name at issue. On March 17, 2004, Go Daddy Software, Inc. d/b/a GoDaddy.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Having verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with the Rules, Paragraphs 2(a) and 4(a), on March 23, 2004, the Center formally notified the Respondent of the Complaint, and thus the proceedings commenced on that date. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 12, 2004. On April 15, 2004, the Center notified the Parties of Respondent's default to file a Response.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on April 26, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
Complainant Fuente Cigar LTD. is the owner o f the following trademark registrations:
FUENTE FUENTE OPUS X (AND DESIGN)
FUENTE FUENTE OPUS X (AND DESIGN)
FUENTE FUENTE OPUS X (AND DESIGN)
FUENTE FUENTE OPUS X (AND DESIGN)
The disputed domain name <fuentefuenteopusx.com> was registered on December 2, 2002.
5. Parties' Contentions
A.1. Identity or Confusing Similarity
Complainants asserted the following:
1. The disputed domain name <fuentefuenteopusx.com> is identical or confusingly similar to Complainants' mark because it fully incorporates the mark. The differences, if any, between the mark and the disputed domain name are so trivial as to cause them to be confusingly similar and identical to each other.
2. Complainant Fuente Cigar LTD. is one of the largest family-owned and family-run premium hand-rolled cigar companies in the world. It is internationally renowned for its cigars. Complainants' brands are the best-selling and the most sought after cigars in the American market.
3. Demand for FUENTE FUENTE OPUS X cigars exceeds supply, which is only approximately 500,000 to 700,000 cigars per year, which has lead retailers to often limit the sale of FUENTE FUENTE OPUS X cigars to two cigars per customer. Complainant Fuente Cigar LTD. has sold millions of dollars worth of FUENTE FUENTE OPUS X cigars worldwide since 1995.
4. The FUENTE FUENTE OPUS X cigars have been widely advertised and promoted in many forms of media including printed publications and the Internet by Complainants and other parties (through unsolicited media coverage).
5. As a consequence of advertisement, unsolicited media coverage, customer word-of-mouth, and sales, the FUENTE FUENTE OPUS X trademark has become famous and distinctive. Complainants has established tremendous goodwill, selling power and fame in and to the FUENTE FUENTE OPUS X trademark.
6. Complainants have registered the FUENTE FUENTE OPUS X trademark and/or variations thereof in more than thirty (30) countries around the world.
7. Complainants' trademark rights in the FUENTE FUENTE OPUS X mark long predate Respondent's registration of the disputed domain name.
A.2. Respondent's lack of rights or legitimate interests in respect of the domain name
Complainants asserted the following:
1. Respondent is not using, has not used, is not demonstrating, and has not demonstrated an intent to use the disputed domain name <fuentefuenteopusx.com> in connection with a bona fide offering of goods or services.
2. Respondent is not and has not been commonly known by the disputed domain name <fuentefuenteopusx.com>.
3. Complainants can find no evidence that Respondent actually used the disputed domain name with an existing website or made preparation to use the domain name beyond the "Coming Soon" placeholder webpage currently existing.
4. Mere registration does not establish rights or legitimate interests in a disputed domain name.
5. Complainants' mark and the branded goods sold in association therewith enjoy significant fame to consumers. Because Respondent registered the Domain Name to infringe Complainants' rights in their mark, to trade off Complainants' goodwill and to redirect Internet traffic rightly intended for Complainants, Respondent's registration of the disputed domain name and its use regarding an "under construction" website do not and cannot constitute a bona fide offering of goods or services.
6. Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to tarnish Complainants' FUENTE FUENTE OPUS X mark for commercial gain.
A.3 Bad faith registration and use
Complainants submitted the following arguments:
1. Respondent is disrupting Complainants' business. Respondent has placed a "Coming Soon" placeholder webpage at the disputed domain name, and by so doing may cause consumers to become confused and incorrectly believe that no webpage exists for FUENTE FUENTE OPUS X branded cigars.
2. Respondent uses the disputed domain name to intentionally divert Internet users to its website by creating a likelihood of confusion with Complainant and its FUENTE FUENTE OPUS X mark as to the source, sponsorship, affiliation, and endorsement of Respondent's websites. Regardless of whether or not Respondent receives commissions or reduced registration prices from GoDaddy.com for advertising GoDaddy.com's services on his website, Respondent's registration and use of the disputed domain name must be assumed to benefit Respondent, and therefore are in bad faith.
3. Respondent was on notice of Complainants' rights in its FUENTE FUENTE OPUS X mark when Respondent registered the disputed domain name. Respondent admits to knowledge of Fuente and its products in the e-mail sent by Respondent to the Center, on February 27, 2004.
4. Respondent registered the Domain Name to sell, rent, or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket expenses. Respondent has asked Complainants to make an offer to buy the disputed domain name, even though Complainants offered to give the Respondent several hundred dollars worth of cigars to settle the dispute amicably. Instead, Respondent requested that an appraisal of the domain name be conducted and that such appraisal would be used as the starting price for negotiations over the price that Complainants would have to pay to acquire the Domain Name.
Respondent did not file a Response.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that each of the following three elements are at present:
"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith. "
A. Identical or Confusingly Similar
Complainants have proved to have rights to the trademark FUENTE FUENTE OPUS X in the US and Canada.
This Panel finds that the disputed domain name <fuentefuenteopusx.com >
is identical to Complainants' trademark FUENTE FUENTE OPUS X. To carry into
effect the similarity analysis, we must not take into account the generic top-level
domain (gTLD) ".com," because such gTLD has no legal significance.
See Ahmanson Land Company v. Vince Curtis, WIPO
Case No. D2000-0859, (December 4, 2000) (citing in turn Monty
and Pat Roberts, Inc. v. J. Bartell, WIPO
Case No. D2000-0300, (June 13, 2000); J.P. Morgan v. Resource
Marketing, WIPO Case No. D2000-0035,
(March 23, 2000)). Therefore, when comparing Complainants' trademark
to the disputed domain name, it is clear that the latter incorporates the former
in its entirety, but for the addition of the gTLD.com.
Numerous Policy decisions have recognized that incorporating a trademark in
its entirety can be sufficient to establish that a domain name is identical
or confusingly similar to a registered trademark. See for example the following
decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO
Case No. D2001-1010 (September 30, 2001), (citing in turn Kabushiki Kaisha
Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics
Corp., WIPO Case No. D2000-0464 (July
27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co.,
Inc., WIPO Case No. D2000-0113 (April
13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306 (January 24,
2001); Bayerische Motoren Werke AG v. bmwcar.com, WIPO
Case No. D2002-0615 (August 27, 2002); Compagnie Générale
des Etablissement MICHELIN v. Lost in Space, SA, WIPO
Case No. D2002-0504 (August 1, 2002); Oki Data Americas, Inc. v. ASD,
Inc., WIPO Case No. D2001-0903
(November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S.
Wilson, Sr., WIPO Case No. D2000-1525
(January 29, 2001)).
Therefore, Complainants have met the first requirement of the Policy.
B. Rights or Legitimate Interests
The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, Paragraph 4(c)). "
Respondent has not submitted any evidence showing that it has used, or made demonstrable preparations to use the disputed domain name in connection to a bona fide offering of goods or services. Respondent has acknowledged to be fond of cigars, to know Complainants, the Fuente Family and the Dominican Republic; Respondent has expressly recognized to be or to have been "one of the biggest fans of the Fuentes and their Products" (e-mail dated February 27, 2004, addressed to Complainants' counsel).
However, Respondent has not provided any evidence regarding his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide informational site or fan site. When Respondent was invited to amicably resolve this controversy by a representative of Complainants, Respondent refused to do so (see the Affidavit executed by the representative of Complainants on March 12, 2004, regarding a telephone conference held between said person and Respondent, on February 10, 2004). Later on, when Respondent was addressed by Complainants' counsel on February 27, 2004, Respondent affirmatively stated that he would not be voluntarily transferring ownership of the disputed domain name, even though he admitted to have known Complainants' owners and their products.
Respondent has not provided any evidence showing that he has been commonly known by the disputed domain name.
Respondent has not submitted any evidence showing any legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish Complainants' trademark. The evidence submitted by Complainants weigh against Respondent, in that Respondent was not making any legitimate or fair use of the disputed domain name, and that Respondent refused to reach settlement with Complainants in more than one occasion.
The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.
C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. "
Complainants have argued that Respondent knew of Complainants' marks prior
to registering the disputed domain name. Respondent has offered to transfer
the said domain name for valuable consideration to be determined based on an
appraisal of Complainants' trademark, which is clearly in excess of Respondent's
documented out-of-pocket costs directly related to the domain name (see World
Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO
Case No. D2000-1306 (January 24, 2001). This conduct is sufficient
to demonstrate bad faith registration and use under Paragraph 4(b)(i) of the
Complainants have thus established that the disputed domain name <fuentefuenteopusx.com>
has been registered and is being used in bad faith. The third requirement of
the Policy has therefore been fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fuentefuenteopusx.com> be transferred to Fuente Marketing Ltd.
Kiyoshi I. Tsuru
Dated: May 10, 2004