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Max Rohr, Inc. v. Puros Dawa HB S.A. [2005] GENDND 1053 (22 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Max Rohr, Inc. v. Puros Dawa HB S.A.

Case No. D2005-0488

1. The Parties

Complainant is Max Rohr, Inc., Wilmington, Delaware, United States of America, represented by Virginia R. Richard of Winston & Strawn LLP, New York, New York, United States of America.

Respondent is Puros Dawa HB S.A., San José, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <romeoandjulietcigars.com> is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on May 5, 2005, and in hardcopy on May 9, 2005. On May 6, 2005, the Center acknowledged receipt of the Complaint submitted in electronic format and transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On May 6, 2005, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on May 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 31, 2005.

The Center appointed the undersigned as the Sole Panelist in this matter on June 8, 2005. 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.

The applicable language to this administrative proceeding is English.

4. Factual Background

Complainant, a Delaware corporation, is in the business of manufacturing and selling high-quality cigars to the public in the United States and around the world.

Complainant has continuously used since 1975, the “ROMEO Y JULIETA” mark, for which it owns valid and subsisting US Federal Registration No. 1,047,827 in international class 34, with respect to cigars. The said mark has also been registered and renewed in the Dominican Republic and Honduras, where Complainant’s cigars are hand made.

Moreover, Complainant markets its premier cigars under the “ROMEOS” and “JULIETAS” trademarks, which are registered before the United States Patent and Trademark Office in international class 34 with respect to tobacco products, namely cigars. These registrations are in full force and effect.

Complainant has consistently engaged in extensive promotion and advertisement of its “ROMEO Y JULIETA” cigars, whose worldwide sales amount to tens of millions of units per year. In view of this, the “ROMEO Y JULIETA” mark has achieved substantial goodwill and widespread recognition and fame among cigar aficionados all over the world.

Complainant registered through its related company, Altadis U.S.A., the following domain names which incorporate the “ROMEO Y JULIETA” mark: <romeo-y-julietta.com>, <romeo-y-julieta.net>, <romeo-y-julietta.net>, <romeoyjulietacigars.net>, <romeo-y-julieta.com>, <romeoyjulietareservemaduro.com>, >romeoyjulietareservemaduro.net>, <romeoyjulietaroyalreserve.com>, <romeoyjulietaroyalreserve.net>, <romeoyjulietareservareal.com>, <romeoyjulietareservareal.net>, <romeoyjulietaaniversario.com>, and <romeoyjulieta1875.com>, all of which display Complainant’s authorized web page.

For its part, Respondent, a Costa Rican public limited company also in the business as Complainant, registered the domain name that is the subject of this dispute on January 26, 2000.

Currently, the disputed domain name resolves to an advertising site for GoDaddy.com indicating that the portal is “coming soon” and that the site has been “parked free”.

Having found out about the contested domain name’s registration and noting that Respondent’s company was making unauthorized use of its client’s mark “ROMEO Y JULIETA”, on April 13, 2005, counsel for Complainant wrote Respondent demanding that the latter cease and desist from using the mark in question and ultimately transfer the domain name that is the subject of this dispute. In view of Respondent’s lack of response to counsel for Complainant’s Notice of Infringement, Complainant moved to commence the present proceeding.

5. Parties’ Contentions

A. Complainant

Complainant’s legal submissions can be summarized as follows:

(i) Respondent’s right to use in commerce the “ROMEO Y JULIETA” trademark in connection with cigars is incontestable in the United States pursuant to 15 U.S.C. §§ 1065 and 1115(b).

(ii) The disputed domain name is confusingly similar to Complainant’s registered trademarks for the following considerations: the contested domain name is a mere translation of the mark “ROMEO Y JULIETA”; the word “and” and the name “JULIET” are easily recognizable and understandable by the public as being the English translations of the Spanish word “y” and the name “JULIETA”, respectively; and lastly, the mark “ROMEO” and “JULIET” are the dominant portions of Complainant’s mark and the disputed domain name.

(iii) Respondent’s addition of the generic term “cigars” to the term “Romeo and Juliet” does not distinguish Respondent’s domain name from Complainant’s marks, nor does it reduce the likelihood of confusion. To the contrary, Respondent’s inclusion of a generic word which is descriptive of Complainant’s goods actually enhances likelihood of confusion and at the same time supports a finding of bad faith, as it demonstrates that Respondent registered the disputed domain name with knowledge that Complainant’s marks are used for cigars, which is also Respondent’s business area.

(iv) Respondent can make no claim that it enjoys any rights or legitimate interests in respect of the disputed domain name given Complainant’s senior trademark rights and Respondent’s lack of license, permission, affiliation or authorization granted by Complainant to obtain a domain name incorporating Complainant’s marks.

(v) Respondent has not registered or used the name “Romeo and Juliet” for cigars as a trademark, nor has it ever been known by this name.

(vi) As the disputed domain name, from the time of its registration, has been pointed to a parked website, it can be averred that Respondent is not making any fair or non-commercial use of the domain name at issue, nor has it used it in any distinctive or legitimate way.

(vii) The worldwide fame of Complainant’s “ROMEO Y JULIETA” mark compels the finding that Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website and/or the goods which are intended to be offered on that website.

(viii) Because Respondent is in the cigar business, it is inconceivable that it was ignorant of Complainant’s famous marks prior to adopting the contested domain name and therefore a finding of bad faith is warranted in the present case for it can be presumed that Respondent was on notice of Complainant’s rights when it registered the disputed domain name.

(ix) It is relatively easy to find bad faith registration in the instant case, if only because the disputed domain name is composed of Complainant’s mark plus the generic term “cigars”, which is in turn descriptive of Complainant’s core business.

(x) According to long established and consistent panel decisions, Respondent’s passive holding of the disputed domain name, in itself, constitutes bad faith use under the Policy.

(xi) Respondent’s utter indifference to counsel for Complainant’s notice of infringement weighs in favor of a finding of bad faith use.

(xii) In the alternative, Respondent’s registration and prospective use of the disputed domain name fall within the bad faith scenario laid down by Policy paragraph 4(b)(iv), as Internet user could be easily confused into thinking that Respondent’s website, once operative, is sponsored or endorsed by Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Preliminary

It is worth noting that even though Respondent’s failure to submit a Response does not automatically result in a decision in favor of Complainant (as reflected in the recently published WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 4.6), it is well established that the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No.95095 (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:

(i) The 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 Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

First of all, the Panel notes that, even though Complainant’s marks, standing alone, are admittedly suggestive or evocative of William Shakespeare’s famous play, when used in connection with Complainant’s products they become inherently distinctive, as opposed to ‘merely descriptive’ of: the intended purpose, function or use of the products; the provider of the products; the class of users of the products; the nature of the products; or the end effect upon the user [McCarthy on Trademarks and Unfair Competition, Fourth Edition, Thomson/West, § 11:16] for it cannot be said that no imagination is required to associate the terms “ROMEO Y JULIETA”, “ROMEOS” or “JULIETAS” with Complainant’s products.

Consequently, in view of the marks’ inherent distinctiveness and Complainant’s continuous use for more than five years of the trademarks upon which the Complaint is based, it is considered that no allegation or proof of secondary meaning is required in the instant case.

More importantly, as held in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, a trademark’s registration “is prima facie evidence of the validity of Complainant’s registration”, and creates a rebuttable presumption that Complainant’s marks are inherently distinctive. Respondent has not submitted any evidence that would refute this assumption.

In this vein, the uncontested fact that all of Complainant’s registered trademarks have subsisted up to this day without any of them being invalidated on any grounds is telling, which in the Panel’s view reinforces the above-stated presumption.

Turning to the relevant question of this part of the decision, as a result of a global appreciation of the conflicting signs, plainly, there exists strong visual, aural and conceptual similarity between the disputed domain name and Complainant’s marks to justify a finding of confusing similarity because Respondent’s domain name’s dominant components, namely “Romeo and Juliet”, exactly correspond (and are easily recognizable and understandable by a significant portion of the public at large) to Complainant’s entire marks in the Spanish language and, on its face, those very same domain name’s prominent constituents closely resemble the “ROMEO Y JULIETA” trademark, if only for a de minimis difference. See Comitato per l’Organizzazione dei XX Giochi Olimpici Invernali – Torino 2006 v. gate 24, WIPO Case No. D2003-0411 (finding <torino2006.net> and TURIN 2006 confusingly similar and ordering transfer, as TURIN is the English, French, German and Spanish translation of the Italian word TORINO); Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048 (finding <crystal-baccarat.com> and BACCARAT confusingly similar and ordering transfer as “crystal” was the English translation of the French word “cristal”); and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328 (finding confusing similarity and ordering transfer of a number of domain names, considering for instance that the addition of “le” in a domain name does not suppress a strong similarity with complainant’s trademark, as it is the French translation of “the”, and with respect to another domain name, that the use of the term “gambling” instead of the term “casino” does not suppress a strong similarity between the conflicting signs).

Likewise, it is held that the domain name at issue is confusingly similar to Complainant’s “ROMEO Y JULIETA” mark, for the latter, as translated into English, is wholly included in the disputed domain name and notwithstanding the addition of the plural noun “cigars”, because the mere incorporation of a generic term which is at the same time descriptive of Complainant’s products is too tenuous and insubstantial to detract from this conclusion.

In effect, case law has consistently confirmed that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words, including generic or descriptive terms, or words designating goods or services with which the mark is used. See Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to mark “EXPERIAN”); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903 (“parts” added to mark OKIDATA); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, (“buildingsociety” added to trademark “BRITANNIA”); Chanel Inc., v Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” were found to be confusingly similar to the “CHANEL” mark); Brambles Industries Limited v. Geelong Car Company Pty Ltd, WIPO Case No. D2000-1153 (<bramblesequipment.com> found to be confusingly similar to complainants’ “BRAMBLES” mark because the differentiating word ‘equipment’ is descriptive only and the combination of the two words ‘brambles’ and ‘equipment’ in the domain name implies that there is an association with Complainant’s business).

The finding of confusion in this case is strengthened by the fact that the term “cigars” is inextricably linked to Complainant’s products, and as such it constitutes a generic word in the cigars’ business, in itself unregisterable or disclaimable in any given trademark application in the class concerned, under most, if not all, trademark registration systems. See Grupo Financiero Inbursa v. Verónica Aquino Cruz, WIPO Case No. D2004-0724 (finding confusing similarity between <bancoinbursa.com> and “INBURSA”, noting that the term “banco” is generic in Complainant’s banking business and as such it can not be part of Complainant’s distinctive service mark); and Thomas Cook Holdings Limited v. Sezgin Aydin, WIPO Case No. D2000-0676 (noting that the entry of the disclaimer should be regarded as an admission by the proprietor that, -in any proceedings based upon the registration with the disclaimer- , the disclaimed matter is not to be regarded as in itself distinctive of the trade origin of the proprietor’s goods or services).

Accordingly, this Panel finds that Complainant has proven the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In view of Complainant’s senior trademark rights and Respondent’s lack of license, permission, affiliation or authorization granted by Complainant to obtain a domain name incorporating any of Complainant’s marks, it is submitted that Respondent can make no claim that it enjoys any rights or legitimate interests in respect of the disputed domain name.

Upon information and belief, it is also averred that Respondent has not registered or used the name “Romeo and Juliet” for cigars as a trademark, nor has it ever been known by this name.

Lastly, Complainant alleges that Respondent is not making any fair or non-commercial use of the disputed domain name given that the latter, since its registration, has been pointed to a parked web page.

In light of the foregoing and in concert with prior UDRP decisions, the Panel is satisfied that Complainant has shown prima facie evidence with respect to this element of the Policy, thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

As a result, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

In sum, on the basis of the evidence and legal argument submitted, it is not apparent to this Panel that any of the defenses set forth in paragraph 4(c) of the Policy is available to Respondent.

Accordingly, Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant has produced uncontested evidence showing that Respondent is in the same business as Complainant itself and that the disputed domain name has resolved, since its registration, to a “parked free” web page displaying an advertising site for GoDaddy.com.

In this vein, the Panel accepts Complainant’s contention that Respondent was on notice of Complainant’s trademark rights when it registered the disputed domain name and therefore it is inconceivable that the latter would have been registered and used if it were not for exploiting the fame and goodwill of Complainant’s marks by diverting Internet traffic intended for Complainant’s portal to its own website, by creating a likelihood of confusion with Complainant’s well-known “ROMEO Y JULIETA” trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the goods which are intended to be offered on that website, thus falling under the bad faith example laid down by Policy, paragraph 4(b)(iv). See Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070.

In addition, the Panel determines that Respondent’s actions also amount to bad faith use and registration of the contested domain name pursuant to Policy, paragraph 4(b)(iii), as “the Respondent is competing with Complainant for the attention of internet users which it hopes to attract to its site”. See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406.

Finally, for completeness, it is acknowledged that the authority is legion under the Policy that, under certain circumstances, the passive holding of a domain name is indicative of its bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003, and also the panels’ consensus view on this point as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” (cited above) at paragraph 3.2.

Thus, on the facts of this case, the Panel finds that pointing the disputed domain name to a “parked free” website, along with the following factors, justifies a finding of bad faith use on the part of Respondent, within the meaning of Policy, paragraph 4(a)(iii):

(i) Complainant’s “ROMEO Y JULIETA” trademark has a strong reputation and is widely known among the cigars’ aficionados’ community in the United States and in other countries;

(ii) Respondent did not reply to counsel for Complainant’s notice of trademark infringement, nor did it submit a Response to the Complaint;

(iii) There is no doubt that Respondent knew Complainant’s business and the products marketed under the “ROMEO Y JULIETA” mark;

(iv) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as being a passing off, or an infringement of Complainant’s rights under trademark law.

The finding of bad faith is further reinforced in the instant case since all the evidence and legal argument tendered, when taken as a whole, leads the Panel to conclude that Respondent registered and has been using the contested domain name “for the (express) purpose of causing confusion with the Complainant and for the purpose of benefiting from that confusion”. Sydney Markets Limited v. Nick Rakis, trading as Shell Information Systems, WIPO Case No. D2001-0932.

Based on the above, the Panel holds that Policy, paragraph 4(a)(iii) has been satisfied.

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 <romeoandjulietcigars.com> be transferred to Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: June 22, 2005