WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compania Colombiana de Tabaco S.A. v. MultipleNames.com
Case No. D2007-1519
1. The Parties
The Complainant is Compania Colombiana de Tabaco S.A., Antioqia, Colombia, represented by Schellenberg Wittmer, Switzerland.
The Respondent is MultipleNames.com, Miami, Florida United States of America, represented by Oscar Henao, United States of America.
2. The Domain Name and Registrar
The disputed domain name <coltabaco.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2007 by email and the hard copy was received on October 17, 2007.
On October 17, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue.
On October 17, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2007.
The Response was filed with the Center on November 1, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on November 7, 2007. 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.
4. Factual Background
The Complainant was founded in 1919 and is the largest tobacco company in Colombia and one of the largest tobacco companies in Latin America.
The Complainant is the owner of Colombian Registered Trademark COLTABACO registration number 191030 that registered in class 34 for tobacco, products for smokers, matches. The application for registration was made on May 9, 1995.
In 1974 the Complainant registered the name COLTABACO as a commercial name in Colombia.
In October 2002, the Complainant registered the domain name <coltabaco.com.co>.
The domain name was first created on August 8, 2002.
5. Parties’ Contentions
The Complainant submits that the domain name in dispute is identical to the Complainant’s registered trademark COLTABACO, its registered commercial name and the name commonly used by third parties when referring to the Complainant.
The Complainant carries on business in the tobacco industry and relies on its rights as the owner of the above referenced Colombian registered trademark COLTABACO, its registration and use of the name COLTABACO as a commercial name in Colombia.
In October 2002, the Complainant registered the domain name <coltabaco.com.co>. The Complainant submits that the website at the “www.coltabaco.com.co” address is currently under renovation and is inaccessible.
The Complainant submits that in addition to its rights in its registered trademark, it has a long established reputation in Colombia. The Complainant is the largest tobacco company in Colombia with a market share of 51.6% and is commonly referred to as “Coltabaco” in newspaper articles, press releases and other publications and has submitted examples of such use as an annex to the Complaint. As of October 15, 2007 all of the first 10 search results delivered by search engine “google.com” for the word “coltabaco” referred to the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.
There has never been any relationship between the Complainant and the Respondent. The Respondent is not a licensee of the Complainant nor has the Respondent received any permission or consent to use the COLTABACO trademark.
The Respondent is not commonly known by the disputed domain name. The Respondent appears to be known as Multipledomains.Com. There is no references to the Respondent in the results of Internet for the word “coltabaco”.
The word “coltabaco” is a coined expression, which results from a contraction of the two words “Colombiana” and “Tabaco” (“tobacco” in English) that form the Complainant’s corporate and business name. There is no evidence that the Respondent, has any connection with or dealings in Colombian tobacco.
The Complainant submits that the Respondent has not used, and there is no evidence of demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services by the Respondent before any notice of the dispute. The websites under the disputed domain name merely contain links to other websites, which offer primarily adult content as well as goods and services as diverse as penthouses in the Bahamas, human tissue research or toll free numbers in Colombia. The Complainant submits that such activities cannot possibly be considered a bona fide offering of goods or services.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant submits that the domain name in dispute was registered solely for the purposes of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name.
The Complainant refers to the content of the website to which the domain name in dispute resolves and argues that it is clear that the Respondent does not conduct any legitimate commercial or non-commercial activity in connection with Colombian tobacco. The content of the website does not indicate any other reason that might explain why the domain name was chosen.
The Respondent is offering the domain name for sale on the website to which the domain name in dispute resolves. It can be inferred from the content of the Respondent’s website that its core business is the sale, rental or other transfer of domain names. In this regard the Complainant has submitted a print-out of the Respondent’s website. The Complainant submits that therefore the conclusion must be drawn that the Respondent chose and registered this domain name and is using it in bad faith solely for the purposes of selling it to the Complainant or its competitors.
Furthermore the Complainant submits that by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s commercial name and trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location. The Complainant is the largest tobacco company in Colombia. On the website established by the Respondent at the “www.coltabaco.com” address the Respondent itself admits that the word “coltabaco” is popular in Internet searches. Thus by using the trademark and commercial name of the Complainant as a domain name, the Respondent misleads Internet users on its website in order to generate traffic.
In the Response, the Respondent states that it is a non-smoking group. The Respondent chose and registered the domain name intending to establish a website to educate the public about smoking tobacco.
The domain name is an abbreviation of the words “Colaterales del Tabaco” (Collaterals of Tobacco) and refers to sickness and the consequences of using tobacco. The Respondent states that “[s]everal tests were done for the website, but it was never put together”. The domain name has been maintained in parking mode and it has allowed the Respondent to show links referring to the theme of the Respondent’s interests in different languages.
The Respondent submits that the Complainant has acquiesced to the Respondent’s use of the domain name <coltabaco.com> for almost five years without ever objecting. By failing to act within a reasonable period of time from the date of registration, the Complainant has acquiesced to Respondent’s registration and use of the subject domain and has waived any rights, tenuous as they may have been, to request that the domain name be transferred. See XFM Limited v. Intervid Limited, WIPO Case No. D2000-1298; Jeremy Grodberg v. Rugly Enterprises LLC, NAF Case No. FA000100009275.
The Respondent further submits that the Complainant’s failure to act for nearly five years is also indicative that the great harm it claims to have suffered as a result of the Respondent’s registration of the domain name is actually non-existent.
The Respondent argues that the Complainant has failed to present evidence that:
- the Respondent is a competitor of the Complainant;
- the Respondent registered or acquired the domain name <coltabaco.com> primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant;
- the Respondent registered the domain name <coltabaco.com> in order to prevent the Complainant from registering it;
- the Respondent registered <coltabaco.com> primarily for the purpose of disrupting the business of the Complainant; or
- the Respondent is using the domain name <coltabaco.com>, intentionally or otherwise, in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent submits that since it registered the domain name in dispute, and for several years prior to receipt of the notice of this dispute, the Respondent has made continuous bona fide use of the domain name in promoting an informational website. The Respondent claims to have a legitimate interest in respect to the use of the words in its domain name.
The Respondent infers that the domain name is a generic name and argues that it is entitled to retain the domain name on the basis of the “first-come-first-served” rule regarding domain name registration of generic domain names.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Preliminary Issue on Acquiescence
As a preliminary issue the Respondent has raised the objection that the Complaint should fail because the Complainant has delayed in bringing this Complaint. The Respondent has cited two early decisions under the Policy to support this claim. Both can be distinguished from the present proceeding.
It is difficult to understand why the Respondent has cited XFM Limited v. Intervid Limited, WIPO Case No. D2000-1298 in support of its claim that the Complainant should not succeed because of delay. The ratio in that case was not based on delay. Furthermore the domain name at issue in that case was not a newly coined word and this was expressly commented upon by the Panel in the following terms: “In the present case the name XFM is used by others, it is not newly coined as such and the respondent has proffered an explanation as to why it was chosen.” In that case the panel felt that it was not in a position to reject the proffered explanation for the choice of the domain name. As will be seen infra when addressing the issues of legitimate interest and bad faith, this Panel does not accept the reasons proffered by the Respondent for the choice of the word “coltabaco”.
The facts as set out in the decision in Grodberg v. Rugly Enterprises LLC, NAF Case No. FA000100009275 are very sparse but are nonetheless very different from the present case. The domain names in dispute consisted of generic words all of which were variants and misspellings of the words “phone spell” and from the brief decision it would appear that both parties were bona fide engaged in the provision of telephone services providing vanity numbers. Furthermore it appears that they both believed that they had a bona fide claim to the domain names in dispute in that they were engaged in direct negotiations prior to the purchase of the domain names in dispute by the respondent from a third party.
Finally, the Policy is silent on the issue of acquiescence by a Complainant and this Panel remains to be convinced that a Complaint can be refused on that ground. On this point, this Panel is more convinced by the views of the learned three member panel in the more recent case Tom Cruise v. Network Operations Center / Alberta Hot Rods WIPO Case No. D2006-0560 the relevant paragraphs are worthwhile quoting in extenso:
“Respondent refers to certain decisions which it says stand for the proposition that a delay of even two years in initiating a claim under the Policy acts as a waiver of rights. The panel in Anna Nicole Smith c/o CMG Worldwide v. DNS Research, NAF Case No. FA220007, suggested that failing to act within a reasonable time constitutes a waiver. The cases cited by the panel in that case do not lend much support to that proposition. Its first citation was to XFM Limited v. Intervid Limited, WIPO Case No. D2000-1298. In that case, the panel said that the complainant’s delay in bringing a claim was one in a series of factors that tilted a delicate balance in favor of the respondent, where certain factual assertions of the respondent were difficult to disprove and the panel considered that the complainant had not generally satisfied its burden of proof. The decision does not stand for the proposition that delay in bringing a claim generally acts as a waiver of the right to do so. The reference by the panel in Anna Nicole Smith, supra, to Jeremy Grodberg v. Rugly Enterprises LLC, NAF Case No. FA092975, is mystifying. In that case, the complainant had failed to act to establish rights in a trademark or service mark “in a timely manner” so as to be able to protect his alleged (but non-existent) mark under the Policy. It is difficult to understand the reference to delay in bringing a claim. This Panel does not accept that there is meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name. The panel in The Hebrew University, supra, much relied on by Respondent here, in fact rejects the notion that there is a doctrine of laches or limitation period in the Policy.
“To the extent that it may be relevant, Respondent has made no credible argument that it has or will suffer injury because of Complainant’s delay in initiating this proceeding. While Respondent claims to have invested hundreds of thousands of dollars in its ‘Celebrity 1000’ website, it does not assert that it did so specifically based on the disputed domain name. Respondent registered a substantial number of celebrity name-based domain names, and over the past several years, it has lost a number of those as a consequence of proceedings under the Policy. There is no evidence that Respondent has altered its behavior as a result of Complainant’s delay, or that Respondent has suffered because of it.
“With that said, the Panel considers that it would be relevant to its decision if there was some firm indication, express or tacit, that Complainant had consented to Respondent’s use of its trademark in the disputed domain name (cf., 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001). In this proceeding, there is no indication of any correspondence between Complainant and/or any representative of Complainant, on one side, with Respondent, on the other, or similar evidence, to suggest or imply that Complainant may have approved of or condoned Respondent’s use. Without some substantial evidence to indicate that Complainant approved of or condoned Respondent’s use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action.”
To the extent that it may be relevant, in the present case there is no evidence of any prejudice to the Respondent by any delay on the part of the Complainant in bringing this Complaint and the Complainant has expressly stated that it has not in any way permitted the use of the trademark by the Respondent.
In the circumstances this Panel is satisfied that the Respondent’s preliminary objection must fail.
B. Identical or Confusingly Similar
The domain name in dispute is clearly identical to the Complainant’s Colombian Registered Trademark COLTABACO registration number 191030.
The Complainant therefore must succeed in the first element of the test in paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated that there has never been any commercial relationship between the Complainant and the Respondent and the Respondent has never received any permission or license from the Complainant to use the COLTABACO trademark.
The Respondent has not denied that it is not commonly known by the disputed domain name.
The Complainant submits that the word “coltabaco” is a coined expression, which results from a contraction of the two words “Colombiana” and “Tabaco” and the Respondent is not putting the domain name to any bona fide commercial or non-commercial use.
On the other hand the Respondent submits that the word has been coined from an abbreviation of the words “Colaterales del Tabaco” and that it registered the domain name to campaign against the dangers of smoking tobacco. It argues that while it has not established its website for this purpose, despite having carried out “tests”, it is now using a parking site to progress its aims.
The Complainant has provided print-outs of the Respondent’s site and while there is a number of links on the site that refer to “cancer breast”, “cancer”, “the cancer project” and “cancer information”, it is clear that most of the content consists of links to commercial and in particular adult sites.
Since the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interest in the domain name, the onus of proof shifts onto the Respondent.
In the Response, the Respondent has not provided any data to support its claim to be “a non-smoking group” and its claimed health awareness activities. It has not for example shown any evidence of its work beyond the few links on the parking site to which the domain name in dispute resolves. Overall the impression given by the site is that it is a commercial venture by the Respondent as a portal site providing links to holiday enterprises and adult content. In the circumstances on the balance of probabilities, the Respondent’s submissions lack credibility.
D. Registered and Used in Bad Faith
On the evidence, this Panel is not convinced that there are circumstances indicating that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
On the balance of probabilities however, this Panel is satisfied that the Respondent has chosen to register the domain name in dispute for the purposes of taking predatory advantage of the Complainant’s goodwill. The Respondent then proceeded to use the domain name in bad faith by establishing a portal site at the address of the domain name so as to attract Internet users to its site by taking predatory advantage of the Complainant’s goodwill and reputation.
This Panel is satisfied therefore that by using the domain name at issue, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and on that basis this Panel is satisfied that the domain name was both registered and is being 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, <coltabaco.com> be transferred to the Complainant.
Dated: November 21, 2007