WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Corporación Habanos S.A. v. N/A Er Bai Wu Case No. D2009-1043 1. The Parties
The Complainant is Corporación Habanos S.A., of Ciudad de la Habana, Cuba, represented by GIL-VEGA, Spain.
The Respondent is N/A Er Bai Wu, of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2009. On August 4, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 13, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 September 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on September 25, 2009. 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 Complainant is as a mixed capital Cuban company and the world leader in the marketing of premium cigars, with presence in the five continents and sales in more than 120 countries.
The Complainant owns several registrations for the trademark COHIBA, which was created in 1966 and first registered in 1969.
Particularly in China, the Complainant owns a registration for COHIBA, Reg. 4520005, registered on May 30, 1990.
The disputed domain name was registered on March 8, 2008. 5. Parties' Contentions A. Complainant
The Complainant contested that:
The Complainant is as a mixed capital Cuban company and the world leader in the marketing of premium cigars, with presence in the five continents and sales in more than 120 countries.
Moreover, the Complainant contends that among the different cigars that it sells, there is one that stands out from all the others due to its awareness and its high prestige: the COHIBA cigars.
The Complainant adds that the COHIBA trademark was created in 1966 and first registered in 1969, after which it became the best-known trademark for Havana cigars, which have been usually awarded in international competitions and are a synonym for the best Havana cigars.
Furthermore, the Complainant contends that it is the owner throughout the world of several trademark registrations for COHIBA and other trademarks comprising the term COHIBA. Particularly, the Complainant is the owner of the following Chinese registrations, which were registered before the Respondent registered the disputed domain name on March 8, 2008: COHIBA, Reg. 4520005, registered on May 30, 1990, and COHIBA ATMOSPHERE, Reg. Nos. 4092958 and 4092960, both registered on July 28, 2006.
Moreover, the Complainant contends that the disputed domain name is confusingly similar to the trademarks COHIBA in which the Complainant has rights.
In that connection, the Complainant contends that the disputed domain name is composed by three terms: the Complainant's trademark COHIBA jointly with the descriptive terms “cuban”, which identifies the place of origin of the products and “cigars”, which identifies the products themselves. The Complainant adds that neither the hyphens nor the “.com” extension should be taken into account in the comparison.
The Complainant adds that the mere addition of the descriptive terms “cuban” and “cigars” does not add any distinctiveness to the disputed domain name and, therefore, there is a risk of confusion between the Complainant's mark COHIBA and the disputed domain name .
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
In that connection, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent is using the domain name in connection with pay-per-click advertisements with the aim of obtaining revenues what cannot be considered a legitimate noncommercial or fair use of the domain name.
Moreover, the Complainant contends that the Respondent has not been commonly known by the domain name.
On the other hand, the Complainant contends that on the basis of its reputation and prestige, its presence throughout the word and advertisements of its products the Respondent knew or should have known the trademark COHIBA when it registered the disputed domain name, what evidences its bad faith registration.
Moreover, the Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the Respondent's web site and obtaining revenues through pay-per-clicks that resolves consumers to other on-line locations offering competing services to those rendered by the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant owns a Chinese registration for COHIBA, Reg. 4520005, registered on May 30, 1990.
The domain name incorporates the trademark COHIBA in its entirety. The Panel finds that the term “cohiba” is the most distinctive term in the disputed domain name (mot vedette).
The mere addition of the descriptive terms “cuban” and “cigars” does not avoid the risk of confusion with the Complainant's mark. In the context of this case, they merely evoke the origin of the goods (Cuba) and the products themselves (cigars).
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.
The Complainant has presented evidence that the website to which the disputed domain name resolves contains pay-per-click links that redirect users to other online locations offering competing or strongly related products to those offered by the Complainant.
In the terms of the Policy, such use in the present circumstances does not appear to be a fair use of the domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website and to the Complainant's competitors' websites, for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by COHIBA. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a mixed capital Cuban company and the world leader in the marketing of premium cigars, with presence in the five continents and sales in more than 120 countries.
Moreover, the Complainant has contended that, among the different cigars that it sells in the market, there is one that stands out from all the others due to its fame and its high prestige: the COHIBA cigars. The COHIBA trademark was created in 1966 and the trademark first registered in 1969.
Moreover, the Complainant has proved to the Panel's satisfaction that it owns several registrations for the trademark COHIBA. Particularly in China, where according to the Whois database the Respondent is domiciled, the Complainant owns a registration for COHIBA, Reg. 4520005, registered on May 30, 1990.
The Respondent registered the disputed domain name on March 8, 2008.
In view of the foregoing, considering that the Complainant has proved to the Panel's satisfaction the importance and worldwide recognition of its trademark COHIBA, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent in all likelihood was aware or must have been aware of the trademark COHIBA before registering the disputed domain name, which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of their case. 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 be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: October 5, 2009
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