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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Piloto Cigars, Inc. v. John Kelly

Case No. D2006-0492

 

1. The Parties

Complainant is Piloto Cigars, Inc., Miami, Florida, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

Respondent is John Kelly, S/M Tobacco Imports, Calumet City, Illinois, United States of America, of United States of America, represented by an internal representative.

 

2. The Domain Name and Registrar

The disputed domain name <padroncigar.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 19, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On the same date, Wild West Domains, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 2, 2006. The Center verified that the Complaint and the Amendment thereto 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), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2006. The Response was filed with the Center on May 23, 2006.

The Center appointed M. Scott Donahey as the sole panelist in this matter on June 9, 2006. 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.

On May 25, 2006, Complainant requested Leave to File a Reply. The Policy only calls for a complaint and response, but gives the panel the discretion to request additional information from the parties. As the Panel sees no need in the present case for additional information, it hereby denies the Request for Leave to File a Reply.

 

4. Factual Background

In 1964, Complainant was founded by Jose O. Padron in Miami, Florida, and began doing business as Padron Cigars and began manufacturing and selling cigars under the PADRON trademark. Since 1964, cigars that have been sold using variations of the PADRON mark include PADRON, PADRON 1926 SERIE, WHEN PADRON IS ON THE LABEL, QUALITY IS A MATTER OF FAMILY HONOR, PADRON 1964 ANNIVERSARY SERIES, PADRON FABRICA DE TABACOS FUNDAD EN 1964, and PADRON CIGARS HAND MADE MIAMI, FLA. All of the above trademarks have been registered with the United States Patent and Trademark Office (USPTO). The earliest of these registrations dates to 1993.(Complaint, Annex 3). Since 1969, articles have been published discussing Padron cigars, including in The New York Times, The Chicago Tribune, National Geographic, Life, Tobacconist Magazine, Smokeshop Magazine, cigar Aficionado, Smoke magazine, Selecta Magazine, and Robb Report Magazine.

Complainant has expended approximately $500,000 per year promoting and advertising its PADRON marks.

On January 26, 1998, Respondent registered the domain name at issue.(Complaint, Annex 1). The domain name resolves to a web site promoting Respondent’s cigar shop, Port Royal Cigars. Until recently, the web site offered for sale not only Complainant’s PADRON cigars, but also those of competitors of Complainant (Complaint, Annex 5). Respondent contends that it only sold Padron cigars on its web site and that “[a]ny links on the website are present for search engine traffic and mere illustration.” Respondent indicated that if the links were “harmful to the rights of the Complainant,” Respondent would be willing to remove such links. Respondent asserts that “the primary purpose of [the web site to which the domain name at issue resolves] is to sell Padron cigars.” Respondent asserts that it never offered to sell the web site.

Complainant did not authorize or otherwise license Respondent to use Complainant’s marks.

In September 2005, Complainant’s principal contacted Respondent’s principal demanding that Respondent cease and desist use of the domain name at issue. Respondent refused, stating that there was someone in the industry who was willing to buy the domain name at issue.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar to Complainant’s marks, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue has been registered and used in bad faith.

B. Respondent

Respondent contends that Respondent has a legitimate interest in respect of the domain name at issue in that Respondent is a legitimate reseller of Complainant’s products, and that Respondent has not registered nor is using the domain name at issue in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is confusingly similar to Complainant’s PADRON mark and to Complainant’s other marks. Respondent does not contest this.

B. Rights or Legitimate Interests

Respondent claims that as a reseller of Complainant’s trademarked products, Respondent has rights and legitimate interests in respect of the domain name at issue. The WIPO Overview of WIPO Panel Decisions on Selected UDRP Questions (“WIPO Overview”) sets out the majority view that a reseller may have rights and legitimate interests in a domain name containing the producer’s trademark, so long as the respondent’s use of the domain name meets certain requirements. These requirements include the actual offering by the reseller of the goods, and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. WIPO Overview, § 2.3.

In the present case, Complainant has introduced copies of print outs from the web site located at “www.padroncigar.com”. The print outs clearly show that Respondent is offering on certain of the web pages located at this web site cigars manufactured by competitors of Complainant. While Respondent denies that it has ever “sold any non-Padron cigars from padroncigar.com,” Respondent also states that “[a]ny links on the website are present for search engine traffic and mere illustration.” Respondent further requests “that in the event the links on the site are found to be harmful to the rights of the Complainant, that Respondent be offered the opportunity to remove the offending items. The items in question were placed only in an attempt to lure search engine traffic to the site, and no cigars from any other manufacturer were ever sold in connection with Padroncigar.com [sic].”

However, Respondent does not explain why it was necessary in order to attract search engines to list a price per box for various types of cigars of each of the competitive manufacturers, plus a space under the word “Boxes” in which a number may be inserted opposite each competitive cigar type listed. In light of these facts, the Panel finds the statement that no competitive cigars have ever been sold from the web site to be incredible. The Panel finds that the site has been used to sell products competitive to those of Complainant and that the site was not restricted to only the resale of the Complainant’s products. The Panel accordingly finds that Respondent has no rights or legitimate interest in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel finds that Respondent is using the domain name at issue to intentionally attract users to its web site by creating a likelihood of confusion with Complainant’s trademark. Once at the site, the user has been offered, in addition to Complainant’s cigars, those of competitors of Complainant, with a price per box and the ability to enter the number of boxes a user wishes to purchase. The Panel finds that this comes within the example of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy.

 

7. Decision

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, <padroncigar.com>, be transferred to the Complainant.

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M. Scott Donahey
Sole Panelist

Dated: June 21, 2006