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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fuente Cigar Ltd, Fuente Marketing Ltd v. Stuart Thomas

Case No. D2006-1192

 

1. The Parties

The Complainants are Fuente Cigar Ltd, a Turks/Caicos Island Corporation with a principal place of business in Santiago, Dominican Republic and Fuente Marketing Ltd, a British Virgin Islands Corporation with a principal place of business in Tortola, BVI. They are represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Atlanta, Georgia, United States of America.

The Respondent is Stuart Thomas of Alexandria, Virginia 22312, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <afuente.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2006. On September 18, 2006, the Center transmitted by email to Network Solutions LLC a request for registrar verification in connection with the domain name at issue. On September 18, 2006, Network Solutions LLC 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 contacts.

The Center 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), the Center formally notified the Respondent of the Complaint, and the proceedings formally commenced on September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was by the Respondent was October 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2006.

The Center appointed John Katz QC as the sole panelist in this matter on October 20, 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.

 

4. Factual Background

The Complainants are the registered proprietors and licensees of a number of trademarks in various jurisdictions including the United States of America. These US trademarks include ARTURO FUENTE registered with the US Patent and Trademark Office (USPTO) as of October 3, 1972, for cigars in class 34 (Nice classification) and A. FUENTE registered as of December 29, 1998 for cigars in class 34. There are related registrations for other classes.

The Complainants maintain a website “www.cigarfamily.com” which features the cigars manufactured and sold by the Fuente companies in the Dominican Republic. Side bars allow viewing of a range of cigars which include ARTURO FUENTE and A-FUENTE GRAN RESERVA, amongst others.

The Fuente companies’ website “www.cigarfamily.com” indicates that Fuente cigars are not available for purchase in the country of manufacture, the Dominican Republic, but it does offer a search facility for details of authorized retailers.

The Respondent has not responded to the Complaint. The disputed domain name appears to have been registered for just over a decade.

The evidence in the Complaint discloses that the disputed domain name defaults to another website “www.havana59.com”. Following a Complaint from the Complainants the Respondent was advised to cease use of the domain name, however, a current search in the WHOIS registration details show that <afuente.com> defaults to “www.havana59.com”. More recently the website shows how to acquire the domain name via Network Solutions Certified Make an Offer System posted on the WHOIS website.

The Complainants have put forward evidence of their sales under and by reference to their registered trademarks. Sales are said to have totaled millions of dollars over several decades. The actual use in the case of ARTURO FUENTE is said to go back to 1946 and in the case of A. FUENTE to 1960. This is consistent with the detail disclosed in the trademark registrations with the USPTO which are in evidence.

It would appear from the Respondent’s website (to which the disputed domain name still defaults) that the Respondent is in some way involved in the sale of cigars and associated accoutrements. The Respondent’s website does not appear to offer for sale Fuente cigars.

 

5. Parties’ Contentions

A. The Complainants

The Complainants, contend in essence that their registered trademarks and the use by them over very many years on and in relation to the manufacture and marketing of cigars of quality has created a goodwill and concomitant reputation such that any person becoming aware of or seeking to access on the website the name Fuente and seeing the disputed domain name would immediately associate it with the Fuente companies.

The Complainants contend that by his use of the disputed domain name and its default to “www.havana59.com”, itself a mail order website, the Respondent is making unfair use of the Fuente trademarks and reputation and is diverting custom and trade.

The case for the Complainants is expressed in a simple and straight forward manner.

B. The Respondent

Because the Respondent has defaulted, it has put no evidence before the Panel.

However, some insight into the activities of the Respondent can be gleaned by accessing the default website “www.havana59.com”.

Whilst certain assumptions have had to be made regarding the Respondent, these appear to be reasonable assumptions based on the available evidence. It is noted that given the allegations raised against it, had the Respondent wished to make out a case for retention in his own right of the disputed domain name, he would have come forward with some logical explanation for the registration and use of the disputed domain name. He has not done so.

It is also relevant to note that in the case of a respondent default such as here and in connection with a disputed domain name that appears to have no logical or reasonable connection whatsoever with the Respondent, inferences can more readily be drawn that are unfavorable to a respondent.

It is also important to note that the disputed domain name has been registered in favour of the Respondent for a decade without, apparently, prior complaint. At least none such is in evidence. That period of time is considerable and might, without more, raise concerns over delay and legitimate use or reliance by the Respondent.

However, had the Respondent wanted to raise any such matters it has had two opportunities to do so.

On August 22, 2006, the brand manager for the Complainants wrote to the addressee of the disputed domain name as given by the registrar’s WHOIS database and sent the usual cease and desist letter.

That letter was responded to by email on September 1, 2006,which email mentions a conversation with the writer of the cease and desist letter. The email states a DNS change has been requested to avoid the default to “www.havana59.com”. It also indicates the domain name may be for sale for “around US$12,000”.

A further email of September 5, 2006 indicates the default to “www.havana59.com” had ceased and that the (undisclosed) domain name owner was willing to sell the domain name for US$13,000. This email also states that the owner “has already received offers much higher, but given your relationship to the actual name he is willing to accept this amount”.

No further correspondence ensued. The Complainants then lodged this complaint. As already indicated, the Respondent has defaulted. It was however served with the Complaint and had every opportunity to read the Complaint and respond to it. If it had wanted to put forward any defence or matters that would militate in its favour given its apparent use of the disputed domain name for 10 years it could have done so. It did not.

 

6. Discussion and Findings

The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The Respondent’s domain name 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 Respondent’s domain name has been registered and is being used in bad faith.

Each of three elements must be established by a complainant to warrant relief.

A. Identical or Confusingly Similar

The disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainants have rights.

The Complainants must establish that they have such rights either to common law or registered trademarks or service marks and that those rights are being abused by the Respondent. The Complainants have registered trademarks and licence arrangements in place with respect to ARTURO FUENTE and A. FUENTE.

One of these registered trademarks is A. FUENTE and the disputed domain name is <afuente.com>. The “.com” suffix is of no relevance for present purposes as it merely denotes a website suffix and would commonly be understood as such. Thus, the comparison is between A. FUENTE and “afuente”. Nothing turns either on the use of upper or lower case especially as all domain names adopt lower case and are not case sensitive.

It is not necessary for the Complainants to establish that the disputed domain name is identical, merely that it is confusingly similar. Nevertheless, the only difference here is the use in the case of a registered trademark A. FUENTE and a full stop after the letter A and perhaps a space thereafter. However, when used as a website name and unless used for individual contact details to denote a particular person, the full stop is commonly dropped.

The Panel notes what it considers to be a useful and illustrative statement by the Court in relation to LTJ Diffusion SA v. Sardas Vertdaubet SR [2003] FSR 34 the use of an identical mark. The Court held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

The Panel considers this statement equally applicable to the facts of the present Complaint. It follows that the omission of the full stop and the addition of the “.com” suffix render this use to be use of an identical mark.

But even if that was not so, it could scarcely be denied that it is the use of a confusingly similar mark.

Such an approach is also consistent with the cases cited by the Complainants namely American Registry of Diagnostic Medical Sonographers Inc v Ardms.net NAF 0205000114279 and CBS Broadcasting Inc v: Worldwide Webs Inc, WIPO Case No. D2000-0834.

The Panel finds that Paragraph 4(a)(i) of the Policy is accordingly made out.

B. Rights or Legitimate Interests

The Respondent does not put forward in evidence any business or trading operation known as or by reference to the disputed domain name or any of the trademarks owned by the Complainant thereby justifying a proprietory right to use those marks in a domain name.

Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.

The Respondent is clearly in business selling or offering for sale cigars and related products and services. These do not include however Fuente cigars. It is therefore difficult to contemplate what legitimate use of the Fuente mark could be argued for by the Respondent.

But any doubts are resolved by two matters.

First, the evidence before the Panel indicates that the disputed domain name is for sale.

Secondly, that is reinforced by the actual offer for sale made in this case at US$13,000 in the offer made by the Respondent on behalf of the unnamed “owner” of the domain name.

Whilst the domain name in suit has existed for some 10 years it is difficult in all the circumstances and absent any response from the Respondent to imagine what rights or legitimate interests may yet be put forward by the Respondent.

The Panel finds accordingly that Paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

To succeed under the third element, this requires the Complainant to prove that the name was registered and is being used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainants.

Any person legitimately searching generally for FUENTE or Fuente cigars and wanting to find out about the Complaintants’ business and products, and upon finding the disputed domain name would in all likelihood assume there was some connection between the Complainants and the Respondent, contrary to the fact. Additionally, given that the disputed domain name defaults to the “www.havana59.com” website which deals with cigars, reasonable person would assume that again there was some connection with the Complainants, or that the Complainants’ products were available for sale on this website, again contrary to the fact.

Nothing has been put forward by the Respondent to justify either the registration or the continued use of the disputed domain name.

The most troubling aspect of this element however arises by reason of the apparent use without incident or complaint or at least existence of the disputed domain name by the Respondent for a decade and moreover without it apparently having earlier come to the attention of the Complainants. This is somewhat surprising. The Complainants’ business predates this registration and one of the registered trademarks ARTURO FUENTE does as well.

Of itself this might raise serious questions under the third element. It is therefore for this reason that the Panel has spent some time commenting on the lack of affirmative response by the Respondent and the offers for sale. More particularly, as the offer for sale to the Complainants made in response to the cease and desist letter is consistent with ageneral offer for sale and is markedly more than what might be considered the Respondent’s out of pocket expenses, it is a reasonable inference to draw that the Respondent was unable to erect any plausible argument by way of defence under this element.

Whether or not the Respondent has been fortunate to avoid coming to the attention of the Complainants over so many years would be a matter of speculation. Having been given two opportunities to put forward any defence or argument for retention of the disputed domain name, and having failed to avail itself of either of those opportunities, the Panel is compelled to find that the original registration was and the ongoing use is in bad faith.

Above all else, as the kind of activity indulged in by the Respondent which includes not only the offers for sale but also the default to a commercial website selling or offering for sale similar goods most likely provides financial gain to the Respondent through that processs, the Panel finds that these circumstances again confirm bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy – see Wal-Mart Stores Inc v. WHOIS Privacy Inc, WIPO Case No. D2005-0850.

The Panel finds that Paragraph 4(a)(iii) of the Policy is accordingly made out.

 

7. Decision

Accordingly, pursuant to paragraph 4 of the Policy and 15 of the Rules, the Panel orders that the registration of the disputed domain name <afuente.com> be transferred to the Complainant Fuente Marketing Ltd.

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John Katz QC
Sole Panelist

Dated: November 3, 2006