WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R.J. Reynolds Tobacco Company and GMB Inc. v. Traverito Traverito
Case No. D2007-0598
1. The Parties
The Complainants are R.J. Reynolds Tobacco Company and GMB, Inc. both of North Carolina, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The named Respondents are Moniker Privacy Services, Florida, United States of America and Traverito Traverito, Spain. However, as discussed below, Moniker Privacy Services appears to be merely a Privacy Service Provider.
2. The Domain Name and Registrar
The disputed domain name <reynoldstobacco.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2007. On April 20, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 24, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that Traverito Traverito is listed as the registrant and providing the contact details. In response to a notice of change in Registrant information, the Complainant filed an amendment to the Complaint on May 15, 2007. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on May 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2007.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on June 27, 2007. 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 Panel finds that it was properly constituted.
4. Factual Background
The Complainant R. J. Reynolds Tobacco Company is the second-largest tobacco company in the United States of America. It has for many years and as early as 1906 adopted and maintained a number of marks incorporating the REYNOLDS name in connection with the worldwide sale of tobacco products. Its corporate affiliate R. J. Reynolds Global Products, Inc. manufactures, sells, and distributes tobacco products worldwide under the REYNOLDS mark. Reynolds has also been used as a trade name. The Complainant GMB Inc. is an affiliate of R. J. Reynolds Tobacco Company in that both companies share the same corporate parent. Both R. J. Reynolds Tobacco Co. and GMB Inc. hold trademark rights.
The Complainants own numerous trademark registrations for the REYNOLDS mark in many countries around the world, including Canada, the European Union and its member states, as well as certain Latin American and Asian states.
R. J. Reynolds Tobacco Company has registered many domain names that include the REYNOLDS mark, such as <reynoldsamerican.biz>, <rjrtobaccocompany.info>, <reynoldsamericanincorporated.info>, <rjreynoldstobaccocompany.info> and so on.
R. J. Reynolds Tobacco Company also maintains a website at “www.rjrt.com” and the Complainants' parent company, Reynolds American, Inc., maintains a website at “www.reynoldsamerican.com”.
5. Parties' Contentions
The Complainants contend that the disputed domain name is confusingly similar to their registered REYNOLDS mark because, on a simple comparison, the disputed domain name is virtually identical to their mark. It is exactly, and in its entirety, the Complainants' registered REYNOLDS mark with the sole addition of the generic word “tobacco,” which describes and identifies the Complainants' products. It has been established in other UDRP decisions that the addition of the suffix “.com” does not distinguish the disputed domain name from a complainant's mark.
Moreover, it is likely and reasonable that anyone who is searching for Reynolds tobacco products will simply type in the name “REYNOLDS,” followed by the generic name of its product and a common top-level domain suffix such as “.com.” Such a user would assume and mistakenly believe that the website displayed at that domain name is affiliated with the Complainants. Therefore, the disputed domain name is confusingly similar to the Complainants' REYNOLDS mark.
It is contended further that the Respondents cannot demonstrate or establish any right or legitimate interest in the disputed domain name. The Complainants' first use and first registration of the REYNOLDS mark predate by nearly 100 years any use the Respondents may have made of any colorable imitation of the name REYNOLDS as a trade name, domain name, mark or common name. The disputed domain name was registered long after the Complainants commenced use of the REYNOLDS mark in worldwide commerce. Furthermore, the Respondents were undoubtedly aware of Complainants' mark and their use of that mark in connection with tobacco products, because the website at the disputed domain name features smoking and tobacco related products and services.
The disputed domain name was registered in 2005, long after the Complainants had established rights in the REYNOLDS mark through nationwide and worldwide use. Accordingly, the Respondents are charged with constructive knowledge of the trademark registrations. Moreover, given the extensive use of the mark, it is very likely that the Respondents were aware of the Complainants' mark when the disputed domain name was registered. Therefore, any use the Respondents may claim to have made was not bona fide because it was made with knowledge of the Complainants' prior rights in the mark.
Further, there is no relationship between the parties giving rise to a license, permission or other right by which the Respondents could own or use any domain name incorporating the Complainants' REYNOLDS mark.
It is contended further that the Respondents have registered and are using the disputed domain name solely for commercial gain. On information and belief, it is contended that the Respondents derive a financial benefit from the web traffic that is diverted through the disputed domain name to a linking portal where users are presented with paid advertising links and revenue-generating searches (a so-called “click farm”).
Furthermore, there is no evidence that the Respondents are utilizing the disputed domain name in connection with a bona fide offering of good services. They are attempting to profit and monetize the disputed domain name by using it to mislead and divert users seeking to find the Complainants' website. This is neither a bona fide offering of goods or services nor legitimate non-commercial use of the disputed domain name.
It is contended further that the Respondents registered and are using the domain name in bad faith. This is established because the name completely incorporates the unique and distinctive REYNOLDS mark and because the Respondents have sought to profit in bad faith from the disputed domain name. It is asserted that the Respondents, prior to their adoption and use of the name, were aware of the Complainants' use and ownership of the REYNOLDS mark because of the worldwide reach and ubiquity of the Complainants' REYNOLDS tobacco products. The Respondents were aware, or should have been aware, of the REYNOLDS mark when registering the disputed domain name.
Furthermore, because they are using the disputed domain name for commercial purposes with an intent to reap commercial gain, and misleadingly diverting those searching for the Complainants' tobacco products, the Respondents are not making a fair use of the disputed domain name. They have registered it with the intent to trade on the renown and goodwill of the REYNOLDS mark and to create a likelihood of confusion with that mark as to source, sponsorship, affiliation, or endorsement of Respondents' website.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain name, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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.
In the present case, the Panel is of the view that the record contains abundant evidence of each of the three requisite elements.
Before addressing those elements, the Panel holds that the proper Respondent in this proceeding is Traverito Traverito. Moniker Privacy Services Inc. was originally listed as the Registrant. After the filing of the original complaint, however, in communication with WIPO, it identified the Registrant as Traverito Traverito. The panel notes that Moniker Privacy Services appear to be merely a Privacy Service Provider. See, for example, Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070. Accordingly, the disposition of this Complaint applies in respect of Traverito Traverito and the following reasons refer to the Respondent in the singular.
First, the Complainants claim and the Panel has verified to its satisfaction that the Complainants are the owners of the REYNOLDS mark in the United States and in many other countries. The Panel also verified that the Complainant R.J. Reynolds Tobacco Company operates many websites which incorporate the REYNOLDS mark.
The domain name in dispute, <reynoldstobacco.com> is plainly confusingly similar to the Complainants' trade mark. It employs the mark, adding to it only the generic word “tobacco.” Given that the REYNOLDS mark is notoriously connected to tobacco products, the resulting combination of “reynolds” and “tobacco” makes the disputed domain name confusingly similar to the REYNOLDS mark.
The disputed domain name is thus confusingly similar to a mark in which the Complainants have rights. The Complainants have plainly fulfilled the requirements of paragraph 4(a)(i) of the Policy.
Second, the Complainants must prove that the Respondent has no rights or legitimate interests in respect of the domain names.
The Complainants have proven this. There is no evidence of the Respondent's 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.
The Respondent has no apparent connection with either Complainant, nor has it been licensed or authorized by either to use the disputed domain name.
The disputed domain name is evidently not the Respondent's name, nor is there any evidence that the Respondent is commonly known by that name.
Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain names.
The Panel agrees with the Complainants therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith. The Respondent's domain name serves to divert users to a website which contains sponsored links. By adding the word “tobacco” to the Complainants' mark, the Respondent has misled consumers by diverting Internet traffic away from the Complainant R.J. Reynolds Tobacco Company's websites in an attempt to generate business by luring potential customers to the Respondent's website.
In the circumstances, the Panel has no doubt in concluding that the domain name was registered and used in bad faith.
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 <reynoldstobacco.com> be transferred to the Complainants.
J. Christopher Thomas, Q.C.
Dated: July 15, 2007