WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fuente Cigar Ltd. and Fuente Marketing Ltd. v. Defined Benefits Group
Case No. D2007-0951
1. The Parties
The Complainants are Fuente Cigar Ltd. of Turks/Caicos Islands and Fuente Marketing Ltd., of British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Defined Benefits Group, of North Port, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2007. On June 29, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On June 29, 2007, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 13, 2007. The Center verified that the Complaint, together with the amendment to 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 commenced on July 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 24, 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
The Complainants’ original FUENTE family business was founded in 1912, and since that time they have produced and sold both in North America and internationally a variety of cigars under the trade name and trademark FUENTE CIGAR. The Complainants’ products have increased in popularity over the past 10 years, and sales have grown from 18 million cigars sold in 1992 to 33 million cigars sold in 1996, and annually thereafter. The Complainants have invested significant amounts in advertising the FUENTE brands and cigar products. The Complainants’ products and trademarks have been featured in magazines such as Forbes, Cigar Insider, Cigar Aficionado, The Wall Street Journal, The Los Angeles Times, The Washington Post and The Chicago Sun.
The Complainants own trademark registrations in the United States of America, Canada and internationally for the trademarks: FUENTE, A. FUENTE, A. FUENTE ANEJO and A. FUENTE SHORT STORY. The Complainants have used the FUENTE and A. FUENTE trademarks since 1960, the A. FUENTE ANEJO trademark since 2000, and the trademark A. FUENTE SHORT STORY since at least as early as 1992, all in association with cigar products.
The Respondent registered the domain name on March 8, 2007, on April 22, 2007, and on April 22, 2007. At the date of the Complaint, the Respondent’s domain name was under construction and the domains and linked internet users to an on-line cigar store named “”, which advertises and sells cigars of Complainants’ competitors.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainants contend that the domain name is confusingly similar to the Complainants’ registered trademark FUENTE and the Complainants’ common law trade name FUENTE CIGAR, in that it replicates the Complainants’ trademark and trade name in its entirety. The Complainants further contend that the domain names and are confusingly similar to the Complainants’ registered trademarks A. FUENTE ANEJO and A. FUENTE SHORT STORY, in that they replicate the trademarks in their entirety except for the deletion of the initial letter “A.”. The Complainants contend that this deletion does not serve to distinguish the domain names from the FUENTE trademarks.
(b) Rights or Legitimate Interests
The Complainants contend that the Respondent has no legitimate interest or rights in the domain names , and . The Complainants’ own several trademark registrations for the trademarks: FUENTE, A. FUENTE, A. FUENTE ANEJO and A. FUENTE SHORT STORY. The Complainants’ rights in the FUENTE trademarks were established long before the Respondent’s registration of the domain names. The Complainants contend that the Respondent’s use of the domain names and in connection with a website that offers and sells cigars of competitors does not establish a legitimate right or interest in the domain names. The Complainant further contends that while at the time the Complaint was filed, the Respondent’s domain name directed internet users to a website “under construction”, it was previously used to direct users to websites of Complainants’ competitors and competitive cigar products. Upon notice by the Complainants to the Respondent of their rights in the FUENTE trademarks, the Respondent changed the domain name to remove the links to websites of competitors and placed the website “under construction”. Complainants further submit that the Respondent is not commonly known by the FUENTE name and has never been authorized as a dealer, user or licensee of the Complainants.
(c) Registered or Used in Bad Faith
The Complainants contend that the domain names , and have been registered and are being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainants’ use of the FUENTE trademarks at the time of registration of the domain names; (ii) Respondent’s registration of confusingly similar domain names; and (iii) use by the Respondent of confusingly similar domain names to provide to websites of competitors of the Complainants or competitive products for the purpose of monetary gain.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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
The Panel finds that the Complainants have established their rights in the FUENTE trademarks, by virtue of the four U.S. trademark registrations, which were attached to the Complaint.
The Panel finds that the domain name is confusingly similar to the registered FUENTE trademark, as it incorporates the Complainants’ mark in its entirety. The Panel finds that the addition of the descriptive word “cigar” does not serve to distinguish the domain name from the registered trademark, and in fact, actually increases the likelihood of confusion as it is descriptive of the products sold by the Complainant. (See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Casino Domains, FA0110000101508, Nintendo of Am., Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976, Harrods Ltd. v. Vineet Singh, WIPO Case No. D2001-1162).
The Panel finds that the domain names and are confusingly similar to the registered trademarks A. FUENTE ANEJO and A. FUENTE SHORT STORY. The deletion of the initial letter “A.” does not serve to distinguish the domain names from the Complainants’ trademark in any meaningful way. The distinctive elements of each mark have been replicated in the impugned domain names.
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain names in question. The Respondent does not appear to have been known by the disputed names and is not using the domain names in connection with a bona fide offering of goods and services. The Panel finds that the Respondent’s domain names and provide links to a website called “www.”, which is an on-line cigar store advertising and selling cigars of other brands. The Respondent’s domain name is currently reverting to a site which is under construction, but originally appeared to direct internet users to products of the Complainants’ competitors. Prior panels have decided that the use of a confusingly similar domain name in connection with a site which offers services of complainant’s competitors does not serve to establish a bona fide offering of goods and services. (See The Evening Store v. Henry Chan, WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).
The Panel also accepts that the Complainants never authorized, licensed or permitted the Respondent to use its FUENTE trademarks.
The Panel is therefore satisfied that the Complainants have made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainants’ trademarks FUENTE, A. FUENTE, A. FUENTE ANEJO and A. FUENTE SHORT STORY are distinctive and have been widely used for many years. The Panel accepts that the Complainants’ trademarks are widely-known and enjoy a reputation both in the U.S. and internationally. The Complainants’ trademarks feature the dominant element “FUENTE”, which is the surname of the family which founded the Complainants’ business. In the tobacco industry, the FUENTE name has been used for more than 100 years. In light of these circumstances, and the fact that the Respondent itself carries on business as a vendor of tobacco products, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainants’ trademark rights when it registered the domain names , and .
The Panel is also prepared to find that the Respondent registered the domain names and is operating websites under those names for the purpose of monetary gain by providing links to sites of other companies which offer cigar products in competition with the Complainant or by directing internet users immediately to websites of Complainants’ competitors. The adoption of the FUENTE marks in the domain names is a deliberate attempt to trade on the goodwill and reputation of the Complainants. Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate sites, which offer products and services of complainant’s competitors, will be considered to be evidence of bad faith. (See CareerBuilder, LLC v. Names for Sale, WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765).
For these reasons, the Panel finds that the Complainants have satisfied the third requirement of paragraph 4(a) 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 names, , and be transferred to the Complainants.
Christopher J. Pibus
Sole Panelist
Dated: September 7, 2007
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