The Complainants are Reynolds Innovations Inc. and Reynolds American Inc. of Winston-Salem, North Carolina, United States of America (“U.S.”), represented by Kilpatrick Townsend & Stockton LLP, U.S..
The Respondent is PrivacyP, Domain Admin of Nobby Beach, Queensland, Australia / Juan DIego Alvarez, Santiago Holdings Ltd of Las Condes, Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 24, 2012, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On April 26, 2012, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on May 6, 2012.
The Center verified that the Complaint together with the amended 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 May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 22, 2012. 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 Reynolds Innovations Inc. and Reynolds American Inc. of Winston-Salem, North Carolina, U.S. The Complainants are the second-largest tobacco company in the U.S.
Beginning at least as early as 1913, the Complainants adopted and began using the CAMEL name and trademark in connection with tobacco products, including cigarettes. The Complainants have advertised, marketed, distributed, and sold their tobacco products in the U.S. under the CAMEL, CAMEL-formative, CAMEL & design, and CAMEL design marks (“CAMEL Marks”) for nearly 99 years.
The disputed domain name was created on September 7, 2006. 5. Parties’ Contentions A. Complainant
The Complainants state that the disputed domain name is identical and/or confusingly similar to the Complainants’ well-known CAMEL trademark, as it fully incorporates the exact CAMEL trademark in its entirety with only the addition of the word “cigarette”, a word that clearly refers to the most significant product offered by the Complainants under the CAMEL trademark.
The Complainants state that the Respondent is a known cybersquatter with a history of registering domain names based on the names and trademarks of third parties, and then using those domain names to redirect Internet traffic to websites from which, on information and belief, the Respondent derives a financial benefit. The Complainants cite as an example the case Motel 6 Operating L.P. v. Santiago Holdings Ltd / Juan DIego Alvarez, NAF Claim No. 1425891.
The Complainants argue that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name. The Complainants state that the Respondent registered the disputed domain name long after the Complainants had established rights in the CAMEL Marks through extensive use. When a complainant’s trademark is so well-known and recognized, there can be no legitimate use by a respondent.
Furthermore, the Complainants state that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name, and there is no evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainants state that the Respondent has registered and is using the disputed domain name solely for commercial gain. In this sense, the Complainants argue that when an Internet user types into a browser the address of the disputed domain name, the user is connected to a click-through linking portal. Links at the portal website located at the disputed domain name reference the Complainants’ CAMEL trademark but also provide links to sites offering and promoting products of the Complainants’ direct competitors.
The Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and reputation associated with the Complainants’ CAMEL trademark. According to the Complaint, the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name fully incorporates the Complainants’ CAMEL trademark, and the disputed domain name was acquired by the Respondent well after the Complainants’ CAMEL trademark became well-known. That the Respondent has targeted the Complainants is also clear from the notoriety of the Complainants’ CAMEL Marks. The CAMEL Marks have been used extensively for 99 years by the Complainants in connection with cigarettes and is one of the most recognized and valuable trademarks in the tobacco industry.
The Complainants argue that the Respondent is using or has allowed a click-through revenue portal to be placed at the disputed domain name, and has not made any legitimate or bona fide use of the disputed domain name.
The Complainants conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainants’ CAMEL trademark as to the source, sponsorship, or endorsement of or affiliation with the website. The CAMEL trademark is the dominant element of the disputed domain name, and use of the term “cigarette”, a word that describes products offered by the Complainants, only exacerbates the likelihood of confusion with the Complainants’ CAMEL trademark.
The Complainants request as a remedy the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have established that they have rights to the trademark CAMEL and that CAMEL is a famous trademark.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a domain name generally has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); namely, the mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive word “cigarette”, because it is descriptive of the Complainants’ products, does not serve to distinguish the disputed domain name from the relevant trademarks in any way.
For this reason, the Panel concludes that the Complainants have proven that the disputed domain name is identical or confusingly similar to the Complainants’ trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark. The Complainants have prior rights in the trademark, which precede the Respondent’s registration of the disputed domain name by nearly a century. The Complainants have therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and have thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, 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 Complainants must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainants have provided substantial evidence demonstrating that its CAMEL trademark is widely known in connection with the tobacco industry. The CAMEL trademark has been in use since for nearly 99 years. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainants and their CAMEL trademark when it selected the disputed domain name. The disputed domain name selected by the Respondent contains the Complainants’ trademark in its entirety and the addition of the term “cigarette”, being the main product of the Complainants.
The Complainants stated and the Respondent has not denied, that the disputed domain name contains pay-per-click advertising (Annex L of the Complaint). In the view of the Panel, the Respondent is clearly attempting to divert Internet traffic intended for the Complainants’ website to its own website for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
In addition, one may add also the existence of two previous cases related to the Respondent, i.e. Motel 6 Operating L.P. v. Santiago Holdings Ltd / Juan DIego Alvarez, supra. A second case is Compagnie Générale des Etablissements Michelin (Michelin), Michelin Recherche et Technique S.A. v. Santiago Holdings Ltd, PrivacyP,WIPO Case No. D2012-0635. Santiago Holdings Ltd is the alternate name provided by the registrar and found in the WhoIs registration in this case. Both cases have considered that Respondent acted in bad faith when registering those domain names. In the view of the Panel, this is further evidence of bad faith.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant Reynolds American Inc., as requested by the Complainants.
Pablo A. Palazzi
Sole Panelist
Dated: July 7, 2012
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