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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fuente Cigar Ltd., Fuente Marketing Ltd. v. Positive Image Corporation

Case No. D2007-0575

 

1. The Parties

Complainants are Fuente Cigar Ltd., Santiago, Dominican Republic, and Fuente Marketing Ltd., Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.

Respondent is Positive Image Corporation, Herndon, Virginia, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2007. On April 17, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2007.

The Center appointed Leon Trakman as the sole panelist in this matter on June 20, 2007. 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 is a family owned business that produces a variety of premium hand-rolled cigar brands using Dominican tobacco. It has a multimillion dollar market, selling cigars primarily in the United States of America. While formally referred to as Fuente Fuente Opusx Cigars, Complainant’s cigars are publicly known as “Opusx” Cigars. Complainant’s marketing arm, Fuente Marketing, owns all rights in the FUENTE FUENTE OPUSX trademark for cigars and the FUENTE FUENTE OPUSX CIGAR brand design trademark and is sole owner of a variety of registrations of the product in the United States of America. Complainant is also the sole licensee of the FUENTE FUENTE OPUSX trademarks. Complainant registered its FUENTE FUENTE OPUSX mark and/or variations of that mark in more than thirty (30) countries around the world, including the United States of America and Canada. Its trademark rights in the FUENTE FUENTE OPUSX trademark also well predates the date at which Respondent’s registered the disputed domain name.

The subject of extensive marketing including over the Internet, Complainant’s trademarks, FUENTE FUENTE OPUSX, including the abbreviation of that name, Opusx Cigars, are widely known in the international marketplace, notably in the United States of America. Complainant’s products are publicly associated with premium hand-rolled cigars manufactured and are also distinguished from other cigar products.

According to the WHOIS information, Respondent registered the disputed domain name, <opusxcigars.com> in April 2001, almost 6 years after Complainant began using the mark FUENTE FUENTE OPUSX. Respondent used the disputed domain name to provide a listing of and links to various websites about cigars, including several that sell cigars. Respondent also used the disputed domain name and website accessed by that domain name to advertise and sell cigars other than those produced and sold by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant adduces evidence that, through its legal counsel, it sent a letter in November 2006 to Respondent to inform Respondent of Complainant’s prior rights, requesting that Respondent cease to use the disputed domain name and requesting transfer of that name to Complainant. Complainant alleges that it received no response to this letter. On February 12, 2007, it again sent a letter to Respondent, informing Respondent of Complainants’ right, requesting that Respondent cease to use that domain name and also requesting transfer to Complainant. Complainant alleges that, again, it received no response.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name, <opusxcigars.com> is not identical to Complainant’s registered trademark, FUENTE FUENTE OPUSX. Complainant’s trademark includes two words, “Fuente Fuente”, both of which precede the use of the word “Opusx.”

Nevertheless, the Panel finds that the disputed domain name <opusxcigars.com> is confusingly similar to Complainant’s trademark. The unusual word “opusx” is included in both. As a matter of usage, Complainant’s products are widely known by the name “Opusx”. The word “opusx”, being a distinctive component of Complainant’s mark, is combined in the disputed domain name with the word “cigar”, being the product sold by Complainant.

Indeed, the inclusion of “cigars” in the disputed domain name heightens confusion with Complainant’s business which is devoted to producing and selling an identical product, namely, cigars. See American Registry of Diagnostic Medical Sonographers, Inc. v. Ardms.net, NAF Case No. 0205000114279 (finding the domain name <armds.net> to be identical to the mark ARDMS because the “domain name reflects Complainant’s mark in its entirety and is phonetically identical.)

It is well established that the “.com” in the disputed domain name relates only to technical requirements for domain names and does not serve as a basis for rendering the disputed domain name distinctive in law. See CBS Broadcasting Inc v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (finding confusing similarity between the mark I LOVE LUCY and design and the domain name <ilovelucy.com> based on syntax and punctuation differences similar to those at issue here).

The Panel finds accordingly that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied that Complainant has established a prima facie case that Respondent has no per se right to or legitimate interest in the disputed domain name, which Respondent has not rebutted. There is no evidence before the Panel that Respondent is or has been commonly known by the disputed domain name, or that Respondent is making a legitimate commercial use of that name. Nor is Respondent making a fair non-commercial use of that name pursuant to Paragraph 4(c) of the Policy.

The Panel finds accordingly that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Respondent’s registration and use of the disputed domain name to direct consumers to Respondents on-line cigar selling constitutes a bad faith offering of goods and services under Paragraph 4(c)(i) of the Policy. See e.g. Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050 (“use that intentionally trades on another can not constitute a ‘bona fide’ offering of goods or services.”); see also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”). In using a confusingly similar domain name to that of Complainant to sell products similar to those offered by Complainant, with what must have been knowledge of Complainant’s business and mark, Respondent manifested an intention to mislead consumers, to divert them away from Complainant’s business and to deceive them into believing that Respondent’s products were either the same as those of Complainant or that Complainant has implicitly authorized such redirection.

Respondent is in bad faith, in particular, for engaging in misleading and deceptive conduct for commercial gain, in intentionally or recklessly seeking to entice Complainant’s customers away from Complainant’s to Respondent’s website, for using its disputed domain name to sell “look alike” products to those of Complainant, and for actually or potentially harming Complainant’s reputation and sales as a result of such bad faith conduct.

It is also clear from evidence exhibited in this case that Respondent was put on notice of Complainant’s rights. Despite that notice, Respondent continued to act in bad faith in using the disputed domain name to attract, for commercial gain, Internet users to its on website. By virtue of that action, Respondent intended to confuse consumers in regard to the source, sponsorship, affiliation, or endorsement of Respondent’s site and the products advertised and sold there.

The Panel notes with approval the decision of prior Panels holding that registration of a domain name constitutes bad faith when the registrant is on notice of the trademark owner’s rights in the disputed domain name and acts in disregard of that notice. See, e.g., Yahoo! Inc. v. Kelvin Pham, NAF Case No. FA0204000109699 (finding the respondent registered the domain name in bad faith because it was on notice of the complainant’s rights); Compaq Information Technologies Group, L.P. v. Express Technology, Inc., NAF Case No. FA0201000104186 (same).

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, <opusxcigars.com>, be transferred to Complainant.

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Leon Trakman
Sole Panelist

Dated: July 4, 2007