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Compañía Anónima Cigarrera Bigott Sucesores v. Wang Yi-Chi [2004] GENDND 1119 (17 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Compañía Anónima Cigarrera Bigott Sucesores v. Wang Yi-Chi

Case No. D2004-0461

1. The Parties

1.1 Complainant: Compañía Anónima Cigarrera Bigott Sucesores, with a place of business in Caracas, Venezuela.

The authorized representative for the administrative proceeding is Mr. Ricardo Antequera Hernández, with address in Caracas, Venezuela.

1.2. Respondent: Wang Yi Chi, with address in Junghe, Taiwan, Province of China.

2. The Domain Name and Registrar

2.1. The subject of the complaint is the domain name <bigott.com>.

2.2 The registrar for the domain name is 4domains.com, with its main office in California, United States of America.

3. Procedural History

3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter the “Center”) on June 25, 2004, in accordance with the “Uniform Domain Name Dispute Resolution Policy” (hereinafter the “Uniform Policy”) as adopted by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.

3.2 The Complaint was notified to Respondent on July 6, 2004

3.3 On July 28, 2004, the Center sent to Respondent a Notification of Respondent Default.

3.4 On August 3, 2004, the Center appointed Luis H. de Larramendi as Panelist and provided him with a complete copy of the documentation relating to the dispute.

4. Factual Backgroun

4.1 Compañía Anonima Cigarrera Bigott Sucesores is a major producer of tobacco in Venezuela, where it has a significant market share and carries out general interest activities via the Fundación Bigott, which it helps to fund.

It owns numerous trademark registrations in Venezuela for the term BIGOTT in connection with tobacco.

4.2. Although in the complaint the Complainant does not establish the date on which the Respondent obtained the domain name registration <bigott.com>, the information acquired by the Panel appears to suggest that it was obtained on March 20, 2004.

4.3. As soon as the “www.bigott.com” website is accessed, the lines “FOR SALE??? CONTACT US???” appear below the <bigott.com> address.

5. Parties’ Contentions

5.1. Complainant

In brief, the Complainant contends

- that it owns the BIGOTT marks in Venezuela, the oldest of which – no. 27400 – dates back to January 14, 1952;

- that the existence of the domain name <bigott.com> not only infringes the rights of the Complainant, Compañía Anonima Cigarrera Bigott Sucesores, but also those of the Fundación Bigott, which carries out charitable activities in cultural and scientific circles in Venezuela and abroad;

- that the BIGOTT mark is well known;

- that the domain name <bigott.com> is identical to the BIGOTT mark;

- that the intention of the Respondent in registering <bigott.com> was presumably to make an illegal profit, as proven by the notice that the domain name is for sale that appears when accessing the “www.bigott.com” website;

- that the reputation of the BIGOTT mark in the Venezuelan market, and its association with other national, regional and international marks such as CONSUL, BELMONT, LUCKY STRIKE, KENT, KOOL, which are famous, would make the registration of the domain name <bigott.com> an attractive proposition for a third party;

- that the mark takes its name from the founder of the Complainant, Mr. Luis Bigott, who started the company over eighty years ago;

- that the BIGOTT mark does not match the name of the Respondent, Mr. Wang Yi-Chi, who consequently cannot claim that he has a legitimate right or interest in said mark;

- that the fact that on accessing “www.bigott.com” you find the domain name for sale and that this website refers to the Pay per Click company <yoho.com> indicates not only the financial gain that Respondent will derive from a possible sale, but also the economic relationship established with <yoho.com>, which constitutes use in bad faith;

- that the fact that a decision Compañía Anónima Cigarrera Bigott Sucesores v. Alberto Pardo Pisani, WIPO Case No. D2000-0448, was previously issued, ordering transfer of the domain name <bigott.com> to the Complainant from another Respondent, gives an idea of the attractiveness of the domain name to those who attempt to register and use it in bad faith.

Complainant requests that the domain name <bigott.com > be transferred to it

5.2. Respondent

The Respondent has not submitted any response, although it may be seen from the case file that the complaint was sent to all contact addresses provided by the Respondent to the Registrar.

6. Discussion and Finding

6.1. Applicable Rules

Paragraph 15a) of the Rules instructs the Panel to render its decision on the basis of

- the statements and documents submitted by the parties;

- the provisions of the “Uniform Policy” and of the “Rules” themselves; and

- any rules and principles of law that it deems applicable

6.2. Examination of the Premises set out in Paragraph 4(a) of the Uniform Policy

Paragraph 4(a) states the following premises

- the domain name registered by the Respondent must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent must have no rights or legitimate interests in respect of the domain name; and

- the domain name must have been registered and used in bad faith

6.2.1. Domain Name identical or confusingly similar to Complainant’s Trademark

Leaving aside the generic top level designator “.com”, the domain name <bigott.com> is confusingly similar to the Complainant’s trademark BIGOTT, an element which is also part of the name of the Complainant, COMPAÑÍA ANONIMA CIGARRERA BIGOTT SUCESORES, and of its founder, Luis Bigott.

6.2.2. Rights or Legitimate Interests in the Disputed Domain Name

As the Respondent has not submitted any response, the analysis of the existence or non-existence of a right or legitimate interest in the disputed domain name can only be conducted in light of the facts provided by Complainant and of the criteria laid down in paragraph 4(c) of the Uniform Policy.

According to those criteria, the owner of the domain name in dispute would have to show that one or more of the following circumstances existed

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent can only prove that he has a legitimate interest in a domain name if he actively intervenes to prove said interest, which cannot occur if the Respondent does not participate in the proceedings and does not reply to the complaint.

In this case the Panel must consider the facts alleged by the Complainant to have been proven as long as said facts are supported.

The contents of the case file and the facts checked by the Panel all suggest that there is no basis for believing that the Respondent has been known by the name <bigott.com>, that he has not been making non-commercial or fair use of the disputed domain name, or that he is using it in good faith for the sale of goods or services.

The Panel therefore considers that it is adequately proven that the Respondent has no rights or legitimate interests in the domain name in dispute

6.2.3. Registration and Use in Bad Faith of the Disputed Domain Name

The conclusion of the Panel is that this third requirement is similarly met. This is in light of the following three factors:

- the Panel cannot consider the reputed nature of the BIGOTT mark to have been sufficiently proven, especially vis-à-vis a registrant of different nationality and residence, but the fact that a decision regarding the <bigott.com> domain name has already been issued does imply the disputed domain name has a certain degree of publicity and attractiveness;

- the Respondent’s use of the domain name can be considered in bad faith due to its very characteristics and to the fact that said domain name was offered for sale, no doubt to the highest bidder.

Although it is not possible to recognise the well-known nature of the BIGOTT mark outside of Venezuela, the fact that a decision has already been issued under the UDRP relating to the domain name <bigott.com> and that, as the Panel has ascertained, “cigarettes” are listed for sale on the “www.bigott.com” website, and that this is the area of business covered by the BIGOTT mark, leads to the conclusion that consumers may establish some sort of association between the domain name <bigott.com> and the cigarette brand BIGOTT.

In the Panel’s view the Respondent’s use of the domain name <bigott.com> has been in bad faith, which is also proven by a series of considerations and fact-checking carried out by the Panel itself.

<yoho.com>, to which the website “www.bigott.com” is linked, offers owners of domain names that are not in use the chance to use said domain names as a gateway for:

- the sale of the domain name, and

- the sale via <yoho.com> of various goods and services (which in this case includes cigarettes).

The Respondent, Wang Yi-Chi, owns at least one more domain name, <netsponder.com>, also linked to Yoho, also for sale and also offering access to the sale of goods and services via Yoho.

These facts, verified by the Panel, lead to the conclusion that the redirected use of the domain name <bigott.com> is not a legitimate use, and that the Respondent is not only preventing the owner of a mark from securing an internet presence via the corresponding address, but also putting the domain name up for sale, and probably obtaining a financial gain derived from the attractiveness of a domain name that is equivalent to the mark of a third party, without carrying out legitimate commercial activity.

The Panel therefore concludes that the third of the requirements laid down in paragraph 4(a) of the Uniform Policy is likewise met in the instant case.

7. Decision

The Panel considers that the Complainant has proved the three circumstances described in paragraphs 4(a)(i), (ii) and (iii) of the Uniform Policy and therefore decides that the domain name <bigott.com > should be transferred to the Complainant.

Luis H. de Larramendi
Sole Panelist

Dated: August 17, 2004