Compañía Anónima Cigarrera Bigott Sucesores v. Andy Butler

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compañía Anónima Cigarrera Bigott Sucesores v. Andy Butler

Case No: D2002-0867

1. The Parties

Complainant in this proceeding is Compañía Anónima Cigarrera Bigott Sucesores, a corporation organized and operating under the laws of the Bolivarian Republic of Venezuela, with a principal place of business in Caracas, Venezuela. Complainant is represented in this proceeding by Ricardo Antequera Hernández and Ricardo Antequera Parilli, Estudio Antequera Parilli & Rodriguez also in Caracas, Venezuela.

Respondent in this proceeding is Andy Butler of Stockport, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The domain name in dispute is <biggot.com>.

The registrar for the disputed domain name is Register.com of New York City, the United States of America.

3. Procedural History

The resolution of this case will be in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Center," and the "Supplemental Rules").

The Complaint was filed on September 16, 2002, by e-mail, and on September 20, 2002, in hard copy. On September 18, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On September 18, 2002, Registrar transmitted by email to the Center its verification response confirming the domain name is subject to the Policy and Rules, but giving a slightly different Respondent name.

On September 23, 2002, the Center sent Complainant a Complaint Deficiency Notification by e-mail. After correcting the minor name discrepancy, Complainant sent an Amended Complaint to the Center on September 25, 2002, by e-mail and on October 1, 2002, in hard copy.

On October 2, 2002, the Center forwarded a copy of the Complaint to the Respondent by courier and by e-mail and this proceeding officially began. On October 24, 2002, the Center sent a Notification of Respondent Default to Respondent by e-mail.

The Panel submitted a Declaration of Impartiality and Independence on October 31, 2002, and the Center proceeded to appoint the Panel on November 1, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

The due date of this Decision is November 15, 2002.

4. Factual Background

Complainant is a Venezuelan company that has manufactured and sold cigarettes throughout a substantial part of South America for several decades. Complainant owns Venezuelan trademark registrations for the mark, "Bigott".

Respondent is listed as the registrant of the disputed domain name, and the record of registration was created on April 27, 2002. The disputed domain name is linked to two web sites affiliated with Respondent.

5. The Parties’ Contentions (Summarized)

Complainant’s Contentions

- Complainant is a Venezuelan company, well-known in Venezuela for the production and marketing of cigarettes. It has been in operation since at least 1921, when it began distributing products throughout the entire Andean community of nations (i.e., Colombia, Bolivia, Ecuador, Peru and Venezuela). Among its portfolio of distinctive tobacco-related trademarks are "Consul" (famous on a national basis), "Belmont" (famous on a regional basis) and "Lucky Strike," "Kent" and "Kool" (famous on an international basis), the latter 3 made available through licenses granted by Complainant's parent company, British American Tobacco Company.

- Complainant owns several registered trademarks in Venezuela for the name "Bigott". As a result of its longstanding use, "Bigott" is instantly recognized within Venezuela. Complainant's trademark originated from the family name of the company founder, Mr. Luis Bigott.

- Since 1963, Complainant has also operated a Venezuelan non-profit organization, Fundación Bigott, that uses Complainant's trademark "Bigott" and carries out multiple cultural, social and scientific activities nationally and internationally.

- Respondent’s domain name is identical or confusingly similar to Complainant's trademark. The only difference between the disputed domain name and Complainant's registered trademark is one letter added ("g") and one letter ("t") subtracted, making it phonetically identical to the mark.

- Respondent has no rights or legitimate interests in respect of the domain name. Respondent has obtained no authorization from Complainant to use Complainant's trademark, and Respondent's name does not coincide with that mark.

- Respondent registered and is using the disputed domain name in bad faith. Respondent has registered the domain name for individual benefit, re-directing Internet users to Respondent’s other commercial web-sites (i.e., <onlinecasino4u.com> and <mp3gags.com>). Respondent probably intends to sell the disputed domain name to any bidder willing to pay the highest price. Respondent's registration of a domain name confusingly similar to a notoriously known and registered trademark in a specific country (Venezuela in this case), with the intention to take advantage of the prestige and reputation associated with the mark, constitutes per se bad faith behavior.

Respondent’s Contentions

- Respondent did not file a Response and so has made no contentions in this case.

Per Paragraph 14(a) of the Rules, the Panel will decide this Case based on the Complaint.

6. Discussion and Findings

Pursuant to Paragraphs 4(a)(i) through (iii) of the Policy, Complainant may prevail in this administrative proceeding and be awarded the disputed domain name, <biggot.com>, if Complainant can prove the following:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

- Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Panel finds that Complainant owns valid registrations of the trademark, "Bigott", in Venezuela (e.g., No. F-27.400, dated January 14, 1952, for tobacco products; No. F-41.449, dated May 28, 1962, for cigarettes, pipe tobacco and other tobacco products; and No. F-105.182, dated November 23, 1983, for tobacco products) (see Exhibit E to the Complaint). Complainant's rights in those trademarks arose decades prior to Respondent's registration of the disputed domain name.

The Panel notes that the disputed domain name, <biggot.com>, is not identical

to Complainant's mark, "Bigott." Of course, the Panel may summarily dismiss

as irrelevant the difference created by the addition of the gTLD, ".com"(See

for example, AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin,

WIPO Case No. D2001-1503 (April 3, 2002)

and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856

(December 18, 2000)).

Thus, the issue in this case is whether those two words are confusingly similar. Neither apparently is a common word in either English or Spanish, and their pronunciation and appearance are quite close.

In addition, Internet users not only pronounce words, they also type them in

the form of domain names to gain access to web sites. The Panel finds there

is the distinct possibility of erroneous computer entry between the two words,

and in any case search engines would pick up both words. See for example The

Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com and Nasaq.com, WIPO

Case No. D2001-1492 (February 27, 2002) and Playboy Enterprises

v. Movie Name Company, WIPO Case No. D2001-1201(February 26, 2002).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.

No Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy places on Complainant the burden to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name. However, the Panel recognizes the difficulty presented to Complainant in being required to exclude all possible rights or interests Respondent may have in the name. Thus, in a case such as this, where Complainant has established its rights in an identical or confusingly similar trademark and has asserted, without contradiction, that it has not authorized or licensed Respondent to use that trademark, the Panel concludes that the burden to produce evidence of such rights or interests shifts to Respondent.

Paragraph 4(c) of the Policy cites three ways by which a respondent may demonstrate its possession of rights or legitimate interests in a disputed domain name. In this case, however, there is no evidence before the Panel that Respondent, Andy Butler, is commonly known by the disputed domain name (Paragraph 4(c)(ii)); or that that Respondent is making a legitimate noncommercial or fair use of the disputed domain name (Paragraph 4(c)(iii)).

The Complaint refers to Respondent's having linked the disputed domain name

to two existing web sites that are connected with Respondent (see Exhibit K

to the Complaint). At first blush it appears this use could satisfy the criteria

of rights and legitimate interests cited in Paragraph 4(c)(i), i.e., "that,

before any notice to [Respondent] of the dispute, [its] use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with an bona fide offering of goods or services." However,

with no clarifying response from Respondent in this case, it is not at all clear

to the Panel that this use truly constitutes a "bona fide offering of

goods or services." Instead, the Panel is persuaded to follow the reasoning

found in Pfizer Inc. v. Phizer's Antiques and Robert Phizer, WIPO

Case No. D2002-0410 (July 3, 2002), as follows: "…the Respondents,

in choosing a domain name that at its essence is phonetically identical and

hence confusingly similar to Complainant's mark…is intentionally seeking to

opportunistically exploit user confusion by diverting, through re-direction,

Internet users away from Complainant's site to Respondents' web site for the

latter's own pecuniary benefit, i.e., increased traffic to its…web site and

correspondingly increased sales …Such parasitic use, which at its essence relies

on instigating and exacerbating user confusion, can not and does not constitute

bona fide commercial or fair use sufficient to legitimize any rights and interests

the Respondents might have in the contested domain name."

While the criteria cited in Paragraph 4(c) of the Policy are not intended to be exhaustive as to how Respondent might demonstrate his rights or legitimate interests in the disputed domain name, the lack of a Response or any other evidence before the Panel on this issue causes the Panel to find that Complainant has sustained its burden in proving that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy presents four separate circumstances, substantiated evidence of which will give rise to a finding that Respondent registered and is using the disputed domain name in bad faith. Given the Panel's analysis in the preceding section of this Decision, the most pertinent of those circumstances to consider in this case is that cited in Paragraph 4(b)(iv), i.e., "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, internet users to your 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 your web site or location or of a product or service on your web site or location."

The Panel believes the Respondent knows of the Complainant’s regionally well-known

trademark and, without the Complainant’s authorization, is attempting to cross-market

his on-line gambling and other commercial activities with Complainant’s tobacco

products. As noted above, Complainant has presented evidence that Respondent

has linked the confusingly similar disputed domain name to two other web sites

affiliated with Respondent’s gambling ventures that have no other apparent or

logical relationship to the name. Respondent has offered no other explanation

that might support a good faith reason for this linkage. Therefore, the Panel

concludes that Respondent's intent is to profit, in bad faith, from the confusion

and the resulting linkage.

Accordingly, the Panel finds Complainant has sustained its burden of proof in showing that the domain name was registered and is being used in bad faith.

7. Decision

The Panel finds that the disputed domain name, <biggot.com>, is confusingly similar to Complainant’s "Bigott" trademark. The Panel also finds that Respondent has no rights or legitimate interests in the disputed domain name. Lastly, the Panel finds Respondent registered and is using the disputed domain name in bad faith because Respondent's intention in registration and use of that name is to benefit from the likelihood of confusion between that name and Complainant's trademark.

In accordance with the foregoing discussion and Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <biggot.com>, be transferred from Respondent, Andy Butler, to Complainant, Compañía Anónima Cigarrera Bigott Sucesores.

Dennis A. Foster

Sole Panelist

Dated: November 15, 2002

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