WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British American Tobacco (Brands) Limited v. Vitty, Inc.
Case No. DBIZ2002-00114
1. The Parties
The Complainant in this administrative proceeding is British American Tobacco (Brands) Limited, a company incorporated in the United Kingdom.
The Respondent in this administrative proceeding is Vitty, Inc., a company whose registered office address is in Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name is <bat.biz>. The Registrar of the domain name is 007 Names, Inc. of Bridgewater, NJ, United States of America.
The Registry operator has confirmed the ticket number.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules).
The Administrative Panel consisting of one member was appointed on June 20, 2002, by WIPO.
The Complainant filed its STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 26, 2002, by email and on May 3, 2002, in hard copy. On May 13, 2002, having verified that the STOP Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center formally commenced this proceeding. On June 4, 2002, Notification of Respondent Default was issued.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the STOP and STOP Rules.
4. Factual Background
The following information is derived from the Complaint.
The Complainant is in the business inter alia of cigarettes, tobacco, tobacco products, lighter, matches and smokersí articles.
The Complainant has common law rights in the mark BAT based upon use going back to 1902, when the mark first was used in England. B.A.T. are the initials of the Complainant, British American Tobacco and the name under which it has traded and has been known for the last 100 years. Further details on the companyís history and use of BAT can be found at its corporate website at http://www.bat.com.
The mark BAT first was registered by the Complainant on May 31, 1950 in Argentina, under registration number 451071. The Complainant and its affiliate members of the BAT Group of companies currently have twenty-three registrations for the word BAT in eighteen different countries dating back to 1954.
United Kingdom, October 22, 1975 -1053793 Class 3. Goods: Anti-perspirants, perfumes, non-medicated toilet preparations, cosmetic preparations, dentifrices, shampoos and soaps.
United Kingdom, June 11, 1997 Ė 2135480 Class 34. Goods: Cigarettes, tobacco, tobacco products, smokersí articles, lighters, matches. (Change of title certificate included).
Denmark, December 11, 1954 - VR 1954 01986 Class 34. Goods: Tobacco products, articles for smokers.
Additionally, the Complainant and its affiliate members of the BAT Group of companies has a further 238 trade mark registrations around the world for BAT with additional material. This additional material includes items such as the corporate logo or regional denominations (e.g. BAT CENTRAL ASIA).
The Complainant uses the mark in its business. The Complainant and its affiliate members of the BAT Group of companies do business in over 180 countries.
In 100 years of trading under the BAT name and fifty two years of internationally registering the BAT mark, the Complainant has never become aware of the Respondent or any rights that the Respondent may have in BAT. The Complainant cannot find any reference to BAT in the Respondents corporate website at http://www.vitty.com.
The Respondent filed no material in this proceeding.
5. Partiesí Contentions
The Complainant asserts a common-law right to the mark BAT and relies on many registrations around the world. Its use and registrations are long-standing. The subject domain name is identical.
The Complainant states that it has demonstrated "its rights in the trade mark BATÖ." and "[t]he Respondent has not demonstrated any rights in the trade mark". The Complainant asserts that the Respondent does not appear to have any rights in BAT and that there is not reference to BAT on the Respondentís corporate website. These facts are said to support a conclusion that the Respondent does not have a legitimate interest in the subject domain name.
It is contended that bad faith is shown by passive use and the fact that the Respondent could not have been unaware of the Complainantís rights in its mark when the subject domain name was registered. The Complainant states that if the Respondent were to activate a website using the subject domain name "Ömembers of the public would by misled into the belief that the Respondent is somehow connected to the Complainant".
The Complainant concludes stating: "In view of the short time the .biz gTLDs have been available and the bat.biz domain name has been registered the Complainant requests the Panel to conclude bad faith of the part of the Respondent based upon the facts of the case givenÖ."
The Respondent made no submission.
6. Discussion and Findings
Paragraph 4(a) of the STOP requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of Paragraph 4(a) of the STOP.
It is clear that the Complainant has rights to the mark BAT. The subject domain name differs only by the addition of .biz which is irrelevant.
The Administrative Panel is satisfied that that the Complainant has met the requirements of Paragraph 4(a)(i).
B. Respondentís Legitimate Interest
The Complainantís case on this aspect of the case is weak and pushes the boundary of required proof.
It is clear that the Complainant has a legitimate interest, but the Complainantís reliance on the fact that the Respondent has not "demonstrated any rights in the trade mark" is misplaced. A respondent does not have an obligation to do so in the absence of information from a complainant that supports a conclusion that the Respondent does not have a legitimate interest. In addition, the inquiry concerns the domain name in issue and only tangentially the related mark.
The Complainantís case rests on two prongs: the lack of any information that suggests that the Respondent has any rights to the mark BAT and the lack of any identification with it on the Respondentís website. These facts lead to an inference that the Respondent does not have a legitimate interest in the subject domain name.
Although a respondent has no obligation to participate in a STOP proceeding, a failure to do leaves it open to conclusions based on the information provided to an administrative panel and the inferences that flow from it.
The Administrative Panel is satisfied that that the Complainant has met the requirements of Paragraph 4(a)(ii).
C. Bad Faith
The Complainantís bad-faith case is equally weak.
Substantively, it rests on passive use. Passive use merely raises an inference. In the absence of a response this can be sufficient, but complainants who provide little more run a serious risk of having their claim dismissed.
The risk is compounded when, as in this case, there is no apparent attempt to dissuade a respondent from using the domain name in issue.
The findings that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not lead necessarily to a conclusion of bad faith, but the facts that support the finding may be relevant to the issue.
In this case it is clear that the Complainantís mark is long-standing and used worldwide. On the facts of this case, the Respondent does not have a legitimate interest in the subject domain name. It has been accused of bad faith and the information relied on to support the accusation is contained in the Complaint. The Respondent has decided not to answer the accusation or to respond to the basis for it.
Although, this case presses hard on the limits of required proof, the Administrative Panel is satisfied that that the Complainant has met the requirements of Paragraph 4(a)(iii).
Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has established its claim.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: July 4, 2002