WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial Tobacco Canada Limited v. N. B.
Case No. DCO2010-0020
1. The Parties
The Complainant is Imperial Tobacco Canada Limited of Montreal, Quebec, Canada, represented internally by Mr. Stephen Hacikyan.
The Respondent is N. B., United States of America.
2. The Domain Name and Registrar
The disputed domain name <imperialtobacco.co> (“the Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Domain Name. On September 21, 2010, Network Solutions, LLC 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” or “UDRP”), 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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. The Response was filed with the Center on September 28, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on October 6, 2010. 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 Complainant lodged an unsolicited additional submission with the Center on October 1, 2010. On October 4, 2010 the Center received an email from a Mr. V. Verdugo commenting on this proceeding. These are discussed below.
On October 14, 2010, by Administrative Panel Order No.1, without prejudice to the Panel’s decision in this matter, the Panel requested the Complainant to provide, by October 19, 2010, a copy of the written licence agreement under which it uses the Canadian IMPERIAL TOBACCO trademark. The Order provided that the Respondent would have five (5) days thereafter within which to file submissions and supporting evidence, if any, strictly in reply thereto.
On October 14, 2010, the Complainant transmitted to the Center a redacted copy of the licence agreement and on October 20, 2010, the Respondent transmitted to the Center his comments in reply.
The language of the proceeding is English.
4. Factual Background
The Complainant is a Canadian tobacco company which traces its history back to 1908, when Imperial Tobacco Company of Canada was established in Montreal. It is a member of the British American Tobacco plc group. It is licensed by an affiliate company, Imperial Tobacco Products Limited, to use, in relation to tobacco products, Canadian registered trademark IMPERIAL TOBACCO, No. TMA329,862, registered on July 10, 1987. The Complainant also operates in the United States through an affiliate, ITL USA Limited, and claims common law rights in the IMPERIAL TOBACCO trademark in the United States. It is the registrant of numerous domain names which incorporate that mark.
The Domain Name was registered on July 20, 2010.
During the course of correspondence with a representative of the Complainant initiated by the Respondent on September 3, 2010, the Respondent stated that he had registered the Domain Name for a client who was planning to commence a business in Colombia supplying tobacco products. The Respondent expressed concern over the possibility of confusion between the Domain Name and the Complainant’s “.com” domain names and asked what issues the Complainant had as a result of this. The Complainant informed the Respondent of its trademark rights and sought transfer of the Domain Name. In response to an indication by the Complainant that, in exchange, it was willing to offer the Respondent reasonable compensation to cover certain direct expenses he had incurred, the Respondent stated that he had already incurred website development costs for his client of USD 23,250 and that his client had agreed to pay him USD 30,000 for the Domain Name and the finished project. He asked what reasonable compensation the Complainant was offering. The Complainant offered USD 800. The Respondent said he had won the Domain Name in the Dot CO Landrush auction. Without revealing the price he paid, he offered to accept USD 12,574.91 for the Domain Name. The Complainant increased its offer to USD 1,000. The Respondent sought USD 2,500. The Respondent indicated that if agreement were not reached with the Complainant, the Respondent would transfer the Domain Name to his client, who intended to supply tobacco products worldwide, including into the United States and Canada.
On September 15, 2010, the Complainant’s representative received an email from a Mr. V. Verdugo, claiming to be the Respondent’s client and to have a business plan in “Columbia” [sic] involving a partnership with Philip Morris (a competitor of the Complainant) and Altria (its parent company). The email included an exchange of emails between Mr. Verdugo and the Respondent, in which the Respondent wrote:
“Though they [the Complainant] only wish to pay me $1000, I think I should at least give them a chance to prove their rights to the domain. I will let you [Mr. Verdugo] know the outcome by Friday morning and if they have not offered to fairly reimburse me, I will transfer the domain to Philip Morris and Altria so you may continue your business ventures together” and Mr. Verdugo replied that he and his partners were ready to offer the Respondent USD 10,000 for the Domain Name. The Respondent had replied that he was still awaiting word from the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the IMPERIAL TOBACCO trademark in which it has rights and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent does not own any rights in the IMPERIAL TOBACCO mark or name; is not known to have worked in the tobacco industry; and has admitted that the Domain Name was registered to be used in a tobacco business in direct competition with the Complainant’s business and in infringement of its trademark rights.
As to bad faith, the Complainant says the Respondent registered the Domain Name knowing that its use for a tobacco related website that would compete with the Complainant’s business would cause confusion; that the Respondent threatened cyber flying in order to increase the Complainant’s settlement offer; that the Respondent threatened to transfer the Domain Name to a potential competitor of the Complainant for an amount greater than the Respondent’s out-of-pocket expenses directly related to the Domain name; and that the suggestion that the website would be associated with Philip Morris and Altria is false, because, inter alia, those companies would not lend themselves to such infringing behavior.
The Respondent says the Complainant holds an active registered trademark in Canada and an abandoned mark in the United States, which demonstrates its obvious neglect to take its trademark seriously in that geographic area. The Respondent became aware of the Canadian mark one month after registering the Domain Name. In contacting the Complainant, the Respondent sought to work out any possible issues that could arise.
The Domain Name will be used by an agricultural company called Imperial Tobacco, which will distribute tobacco plants throughout Columbia [sic] and its neighboring countries. This contrasts with the Complainant’s business of distributing cigarettes, cigars and other wrapped tobacco products in Canada and the United States under their many brands. The Respondent’s client, Mr. V. Verdugo, wishes to distribute the raw plant to various major tobacco companies in the United States and Columbia [sic]. The Complainant’s claim that Mr. Verdugo planned to distribute tobacco products in Canada is false. His business will be purely agriculture and will not and should not be confused with the various brands of cigarettes and cigars sold by the Complainant.
As to legitimacy, on March 30, 2010, Mr. Verdugo contacted the Respondent in regards to his business plan. Mr. Verdugo requested a fully functional corporate website and, in April 2010, chose as his company name “Imperial Tobacco”. After purchasing the Domain Name in July 2010 the Respondent claims he and his client remained unaware of Imperial Tobacco Canada and its trademarks in Canada as they are geographically located in different countries with the Complainant’s company residing in Canada. The Respondent and Mr. Verdugo have a legitimate interest in the Domain Name because the “.co” extension represents Columbia [sic], where Mr. Verdugo currently resides and whence he plans to continue doing the bulk of his business from his tobacco crops. Hence the Domain Name represents both the company name “Imperial Tobacco” and the country in which it is to be used, “Columbia” [sic].
The Respondent plans to implement a website for his client who wishes to “publish his Tobacco agriculture online”. Both the Respondent and his client have been in discussion and preparation for over eight months now.
The Respondent personally has no connection with the tobacco business but the initial rationale for the Domain Name registration was due to his client’s tobacco business. The Respondent has a legitimate interest in the Domain Name due to the nature of Mr. Verdugo’s business and does not intend to mislead consumers. This will be an agriculture based website, so there should be no confusion with the Complainant’s goods and services.
As to bad faith, the Domain Name was registered at the request of the Respondent’s client, Mr. V. Verdugo, in regards to a business venture that started in March 2010, approximately four months prior to registering the Domain Name. Absolute certainty was made of the company name before registering the Domain Name so this was not by mistake or to be used against the Complainant. As stated earlier, the Complainant’s trademark and company were discovered by the Respondent over a month after registering the Domain Name.
Though the Complainant’s trademark in the United States has been abandoned for nearly three years and will be discontinued in two months’ time, the Complainant still claims rights to the Respondent’s Domain Name. The Complainant registered the following domains five days after the Respondent’s initial good faith email requesting trademark clarity: <imperialtobaccofoundation.co>, <imperialtobaccocompany.co>, <imperialtobaccocanada.co>, <imperialtobaccoproductslimited.co> and <Imperialtobaccoproducts.co>.
The Respondent registered only one domain name containing the “Imperial Tobacco” name which clearly shows a specific and legitimate use for the Domain Name. The Complainant alleges many forms of bad faith towards the Respondent but the Respondent clearly contacted the Complainant in regards to the Domain Name in good faith which also prompted the Complainant to suddenly register Columbia [sic] ccTLD’s for their company.
The Domain Name was registered for the development of the Respondent’s client’s business and was never offered to the Complainant for purchase. The Complainant initially made offers to purchase the Domain Name as seen in the email communication between both parties. Any request for more fair compensation was directly related to the months of expenses in preparation to develop the Domain Name for Mr. Verdugo’s business online. The Respondent acted purely in good faith, first offering to discuss the matter with the Complainant and then even considered transferring the Domain Name to the Complainant which would have broken the Respondent’s contract with his client.
The Domain Name was registered purely for geographic and business name specific reasons.
The Complainant and the Respondent are not competitors nor are the Complainant and the Respondent’s client.
The Complainant’s products are recognized through their brands under the company name Imperial Tobacco Canada, including cigarettes and cigar products. The Respondent’s client is recognized by his agriculture product and will only be distributing the raw material that created the wrapped packaged products that are produced by the Complainant. The Complainant’s company name also reflects geographic preference as it contains “Canada” and also only has an active trademark in Canada and has allowed the United States trademark to come close to discontinuance. This neglect shows both that the Complainant’s goods and services are no longer active in the United States and that their main focus for distribution is not the United States.
The Complainant also has shown no registered domain in any other ccTLD other than the United States and Canada which states they have no legitimate use for any other ccTLD. This raises questions as to why they have suddenly registered “.co” domain names, possibly to help their stance in this case but as stated before, the “.co” domain names now owned by the Complainant were registered five days after the Respondent’s initial good faith email contact.
C. Complainant’s Additional Submission
Rules, paragraph 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802.
Ignoring elements of repetition, the Panel takes notice of the following points in the Complainant’s Additional Submission: that the rights in the trademark IMPERIAL TOBACCO in Columbia [sic] are owned by a United Kingdom company, Imperial Tobacco Limited, which is currently unrelated to the Complainant, so the Respondent and its client can have no legitimate interests in that name in that country; that Respondent’s correspondence contemplated sales of tobacco products worldwide, including in Canada and the United States, while the Response contemplates sales of tobacco plants only in the United States; that trade in raw tobacco is regulated and not conducted online; that permits are required to trade in raw tobacco; that the Respondent has provided no evidence that his client has such permits; that Philip Morris USA is separate from and no longer associated with Philip Morris International, which operates in Colombia through Compania Colombiana de Tabaco S.A., making any partnership between Philip Morris USA and Philip Morris International for sales into the United States unlikely; and that the Complainant registered its “.co” domain names so as to avoid any similar infringement of its rights.
D. Comments by Mr. Verdugo
The Panel has taken into account the email from Mr. Verdugo to the Center dated October 4, 2010, which reads in full as follows:
“My name is Victor Verdugo and this message is not mean to be part of the case but a personal viewpoint of the issues that Mr Hacikyan is having with our business. I was told by Mr B. of more evidence given to you by Mr Hacikyan and we both agree that Mr Hacikyan is misinformed of many things that are not posted on this internet. We have no intention of hurting his company business as you can see from all the evidence MR B. provided for you. I know this is Mr B. case but i must tell you that Mr Hacikyan is only trying to get evidence from the internet to hurt Mr B.'s case and this is not good evidence because MR Hacikyan does not know what plans are going on inside my company or my partners. He only try to find evidence of speculation on the internet which is not proof of anything. He see that Mr B. have all evidence that we are doing business and we have planned this many months ago and we try to be professional and ask to work things out and they offer to pay Mr B. for web address. In one email Mr. Hacikyan say they never offer to pay but they see that they have no right to the domain address legally so they offered money.MR Hacikyan also don’t seem to follow UDRP policy for filing because they see we have legitimate for domain and we only wish for peace. Please consider dis things because they try to make me and Mr B. look bad when we really good guys. Thank you kindly for reading and have nice day!”
E. Respondent’s comments on the licence agreement
Much of the Reply canvassed issues already addressed in the Response. However, the following points were made regarding the Licence Agreement:
(a) The Respondent questions the authenticity of the Licence Agreement because it has been redacted.
(b) The schedule shows currently owned registered marks in Canada but none in the United States.
The Respondent re-emphasised that Mr. Verdugo’s Colombia based company will only be providing tobacco leaf to his United States and Colombian partners; that the Domain Name was registered specifically for Mr. Verdugo's business that he wished to develop; and that the Domain Name is mainly country specific as it is a Colombian extension (".co").
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In support of its claim to common law trademark rights in the United States, the Complainant has provided copies of invoices and of the labels of packages sold in that country. The labels all prominently bear another trademark and all of the invoices and labels refer to the Complainant by its corporate name. It is unnecessary to determine whether such use of the corporate name constitutes trademark use and the Panel makes no finding as to whether the Complainant has common law rights in the United States in the IMPERIAL TOBACCO mark.
Although the Licence Agreement has been redacted, the identity of the parties, the principal provisions and the execution page are not redacted and there is no basis for questioning the authenticity of the document. Accordingly, the Panel finds that, as licensee from its affiliate of the Canadian registered trademark IMPERIAL TOBACCO, the Complainant clearly has rights in that mark. The Domain Name is identical to that mark, the suffix “.co” being inconsequential: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Complainant has established this element of its case.
B. Rights or Legitimate Interests
The Panel finds as a matter of common knowledge, and on the basis of the present record, that the IMPERIAL TOBACCO mark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy. The Respondent seeks to rely on sub-paragraph 4(c)(i), i.e. (i) before any notice to the respondent of the dispute, the use by the respondent 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.
Even perfunctory preparations have been held to suffice for this purpose: SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE v. CES MARKETING GROUP INC., eResolution Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures LTD (www. Skarbiec.com), NAF Claim No. 94375 and ROYAL BANK OF CANADA v. XROSS, eResolution Case No. AF-0133. On the other hand, use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Here, contrary to the statements by Mr. Verdugo, the Respondent has provided no evidence to support any of his assertions. It would be easy, if it were true, to show that, before any notice to him of this dispute, the Respondent had been engaged by Mr. Verdugo to create a website for the latter’s proposed business; that the Domain Name was registered by the Respondent pursuant to that contract with his client; that work on the proposed website had been done, to the tune of USD 23,250; that the company name Imperial Tobacco had been secured by Mr. Verdugo in the Republic of Colombia before the Domain Name was registered and that Mr. Verdugo had made arrangements for a partnership with two Philip Morris companies (no longer under the same ownership) for the supply of tobacco (whether raw or in finished form) into the United States. Given the Complainant’s claim of common law trademark rights in the United States, such an arrangement, if established, may not necessarily be regarded as bona fide. It is unnecessary to consider that question because the Respondent has demonstrated none of this.
Under these circumstances the Respondent has not shown that he has rights or legitimate interests in the Domain Name and the Complainant has established this element of its case.
C. Registered and Used in Bad Faith
In the absence of any evidence substantiating the Respondent’s story, his correspondence with the Complainant’s representative smacks of opportunistic bad faith. The Respondent secured the Domain Name in the “.co” Landrush auction. The Domain Name consists of a trademark that is well-known around the world, registered in different countries by various companies in the British American Tobacco plc group. Shortly thereafter, the Respondent approached the Complainant affecting concern at the likely confusion that would result, and subsequently claiming contractual arrangements with a client, to whom the Domain Name would be transferred unless a substantial amount of money were paid. His communications appear designed to solicit an offer from the Complainant so as to avoid being the first to name a price. The Respondent appeared to have no qualms about breaching the contract he said he had with his client, provided that the Complainant paid him enough money. This raises the possibility that there never was any such contract. The contribution of the Respondent’s supposed client, Mr. Verdugo, said to be resident in the Republic of Colombia but unable to spell the name of that country correctly, does nothing to support the Respondent’s case. Indeed the communications from the Respondent and from Mr. Verdugo to the Complainant appear designed solely to put pressure on the Complainant to increase its payment to the Respondent, rather than to further Mr. Verdugo’s claimed business plan.
As mentioned under the previous heading, it would have been easy to provide evidence in support of the Respondent’s story. The absence of any such evidence points towards a calculated scam, designed to extract from the Complainant as much money for the transfer of the Domain Name as possible.
Under these circumstances the Panel finds that the Respondent was aware of the IMPERIAL TOBACCO trademark before he registered the Domain Name and that he did so primarily for the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the Domain Name. Under the Policy, paragraph 4(b)(i), this constitutes evidence of both bad faith registration and bad faith use.
Accordingly the Panel finds that the Respondent registered and is using the Domain Name in bad faith. The Complainant has established this element of its case.
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 <imperialtobacco.co> be transferred to the Complainant.
Alan L. Limbury
Dated: October 21, 2010