WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Japan Tobacco, Inc. and JT International (Philippines) Inc. v. dotPH PrivateRegistration / Harry William Acosta

Case No. DPH 2012-0001

1. The Parties

Complainants are Japan Tobacco, Inc. of Tokyo, Japan and JT International (Philippines) Inc. of Taguig City, Philippines, represented by Villaraza Cruz Marcelo & Angangco of Taguig City, Philippines.1

Respondent is dotPH PrivateRegistration / Harry William Acosta of Santa Rosa Laguna, Philippines, self-represented.

2. The Domain Names and Registrar

The disputed domain names <winston.ph> and <winston.com.ph> (the “Disputed Domain Names”) are registered with DotPH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2012. A hard copy of the Complaint was received by the Center on June 1, 2012. On May 23, 2012, the Center transmitted by email to DotPH a request for registrar verification in connection with the Disputed Domain Names. On May 25, 2012, DotPH transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. In particular, the Complaint identified Respondent as “dotPH PrivateRegistration,” but the Registrar identified Respondent as Harry William Acosta. The Center sent an email communication to Complainant on June 1, 2012, providing the registrant and contact information disclosed by DotPH, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 5, 2012.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 6, 2012. In accordance with the Rules, paragraph 5(1), the due date for Response was June 26, 2012. The Response was filed with the Center on June 26, 2012.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 2, 2012. 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.

Through emails of June 28, 2012 and July 3, 2012 respectively, Complainant and Respondent inquired about the possibility of submitting supplemental filings. The Center has forwarded those emails to the Panel, and informed the parties that the Panel would have sole discretion to determine whether to permit and/or consider any further submissions in rendering its decision, and whether to order further procedural steps, if any under the paragraphs 10 and 12 of the Rules.

4. Factual Background

Complainant states that a subsidiary of Japan Tobacco, Inc., Japan Tobacco International, was formed in 1999 when Japan Tobacco, Inc., purchased the international tobacco operations of the United States of America multinational RJR Nabisco Inc. for USD 8 billion. Complainant states that JT International (Philippines) Inc. is an affiliate of Japan Tobacco International and is “the second largest multinational cigarette company in the Philippines in terms of market share.”

Complainant further states that it owns or is licensed to use the trademark WINSTON in connection with tobacco products, which is the subject of “about 4,000” trademark registrations or applications worldwide. (These registrations are referred to collectively hereafter as the “WINSTON Trademark.”) In support thereof, Complainant provided samples of such trademark registrations in 35 jurisdictions, including in the Philippines. Complainant states that the Winston brand was launched in 1954 and “quickly became the best-selling brand of cigarettes in the United States of America in the 1960s and 1970s” and “[b]y the end of 2011, WINSTON was sold in over 107 countries around the world.” In the Philippines, Complainant states that “WINSTON products are available in approximately 700,000 retail outlets.”

Complainant states that Respondent Harry William Acosta “was a former employee of JT International Philippines,” and Respondent confirms that “[he] [is] a former employee of the company.”

Complainant states that “Respondent is using the disputed domain names to direct visitors to links sponsored by “www.domainsponsor.com”.” Screenshots provided by Complainant show websites typical of monetized parking pages, including links for various services.

Respondent Harry William Acosta states that “by January 2013” he “will be using the website for Foods Business” and that “[p]apers and permits are currently being processed for ‘Winston Processed Foods Company’” – “[a] local company that will engage in the manufacturing of local processed foods such as fish, pork[,] chicken and beef.”

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Names are identical or confusingly similar to the WINSTON Trademark because they contain “(a) an exact reproduction of the registered mark WINSTON; (b) followed either by the country code ‘.ph’, or by the ‘.com.ph’ suffix, all in one continuous domain name.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Complainants do not allow employees to register domain names incorporating Complainants’ trademarks or trade names in their own name”; “Respondent has never been commonly known by the disputed domain names”; “Complainants have never given a license nor in any way authorized the Respondent to make use of the mark WINSTON”; and “Respondent has not been using the disputed domain names in connection with the bona fide offering of goods or services.”

- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “Respondent, as a former employee of JTI Philippines, must be deemed to have acted in bad faith in registering and using the domain names in question, knowing that the mark it employs is owned by its former employer and enjoys good reputation among consumers”; and “Respondent is using the disputed domain names to direct visitors to links sponsored by ‘www.domainsponsor.com.’”

B. Respondent

Respondent Harry William Acosta contends, in relevant part, as follows:

- Local companies other than Complainant use the word “Winston” in their name, and the domain names <winston.com> and <winston.net> are registered by entities other than Complainant.

- Respondent has “legitimate interests and rights” to the Disputed Domain Names because “by January 2013” he “will be using the website for [f]oods [b]usiness” and that “[p]apers and permits are currently being processed for ‘Winston Processed Foods Company’” – “[a] local company that will engage in the manufacturing of local processed foods such as fish, pork[,] chicken and beef.”

- Respondent has not “received any single cent” from the links on the websites associated with the Disputed Domain Names, which links were “already there when [he] bought the website”; and the Disputed Domain Names were “solely registered for the purpose of promoting Winston Processed Foods Company’s products.”

6. Discussion and Findings

While noting that Complainant and Respondent indicated their willingness to file supplemental filings to refute the other party’s contention or strengthen its own contention, the Panel does not find any exceptional circumstances to justify the admission of further statements. Accordingly, under the paragraph 10 of the Rules, the Panel, in its discretion, determines not to permit either party’s request to submit supplemental filings and will decide the case on the merits based on the Complaint, the amended Complaint, and the Response timely provided by the parties.

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(1).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as the accompanying copies of trademark registration certificates, it is apparent that Complainant has rights in and to the WINSTON Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the WINSTON Trademark, the relevant comparison to be made is with the second-level and third-level portions of the domain names only (i.e., “winston”), as it is well established that the upper-level portions of the domain names (i.e., “.ph” and “.com.ph”) can be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”)2 (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”); and Google Inc. v. PD Hosting Inc., Ken Thomas, WIPO Case No. DPH2011-0005 (“the ‘.com.ph’ suffix is not taken into account in the comparison”).

Given that the relevant levels of the Disputed Domain Names are identical to the WINSTON Trademark, “it is obvious without the need for elaboration that Complainant has proven the first element of the Policy.” Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen, WIPO Case No. D2008-0386. Accordingly, the Panel finds that Complainant has proven the first element of the Policy with respect to both of the Disputed Domain Names.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Complainants do not allow employees to register domain names incorporating Complainants’ trademarks or trade names in their own name”; “Respondent has never been commonly known by the disputed domain names”; “Complainants have never given a license nor in any way authorized the Respondent to make use of the mark WINSTON”; and “Respondent has not been using the disputed domain names in connection with the bona fide offering of goods or services.”

The Policy provides that a respondent may demonstrate its rights or legitimate interests by showing one of the following:

“1. before any notice to you of the dispute, your 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; or

2. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

3. you are making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers.”

Policy, paragraph 3.

Here, Respondent has failed to demonstrate any of the foregoing. Although Respondent has said that he intends to create a website using the Disputed Domain Names, he has offered no demonstrable evidence of preparation to do so. He has not alleged that he has been commonly known by either of the Disputed Domain Names, nor is there any reason to believe this is the case. And, he has not alleged that he has made a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers, nor, given the monetized parking pages associated with the Disputed Domain Names, would such an allegation be credible.

Indeed, as WIPO Overview 2.0, paragraph 2.6, says:

Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” […] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.

Here, although the links on the parking pages do not necessarily appear to be related to the trademark value of the WINSTON Trademark, to this Panel they also do not appear to be related to any possible generic meaning of the Disputed Domain Names.

Accordingly, and noting that Respondent has not rebutted Complainant’s prima facie case, the Panel finds that Complainant has proven the second element of the Policy with respect to both of the Disputed Domain Names.

C. Registered and Used in Bad Faith

Whether a domain name has been registered and is being used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: “1. circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or 2. you have registered 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 you have engaged in a pattern of such conduct; or 3. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 4. by using the domain name in bad faith, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” Policy, paragraph 4(2).

Despite Complainant’s arguments, this does not strike the Panel as a typical case of cybersquatting, in part because the links on the monetized parking pages do not appear to be directly related to the WINSTON Trademark, so a “likelihood of confusion” under paragraph 4(2)(4) of the Policy may be at best unclear, and there appears to be no evidence that bad faith exists under any of the other three factors set forth in paragraph 4(2) of the Policy. Nevertheless, the bad faith factors are described as circumstances that “without limitation” shall be evidence of bad faith. In other words, a panel may find bad faith even in the absence of any of the four factors described in the Policy. This conclusion has been reached in many decisions, including, perhaps most notably, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding bad faith “in a situation involving a passive holding of the domain name registration”).

In Telstra, the panel considered the following factors in reaching its conclusion that the disputed domain name had been registered and was being used in bad faith:

“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) 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 the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”

Here, while all of the Telstra factors may not be present, a number of them are. In particular, it is clear that the WINSTON Trademark has a strong reputation and is widely known; Respondent’s allegation of a contemplated good faith use of the Disputed Domain Names is unsupported by any evidence; and Respondent had taken steps to conceal his true identity by using a privacy shield. Further, and significantly, it is undisputed that Respondent was an employee of Complainant, which, in the absence of any explanation as to why Respondent selected the Disputed Domain Names, creates a credible suspicion that Respondent did so primarily if not solely because they contain Complainant’s trademark; without any demonstrable evidence of preparations to use the Disputed Domain Names as claimed by Respondent, the Panel is left with the conclusion that either Respondent registered and is using the Disputed Domain Names to disrupt the business of his former employer or else hopes to illegitimately draw consumers looking for Complainant either of which would demonstrate bad faith. In this Panel’s view, all of the above constitutes bad faith registration and use under the Policy.

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy with respect to both of the Disputed Domain Names.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(9) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <winston.ph> and <winston.com.ph> be transferred to Japan Tobacco, Inc. as requested by Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: July 9, 2012


1 Unless otherwise specified or as the context makes clear or requires, references in this decision to “Complainant” refer to both Japan Tobacco, Inc. and JT International (Philippines) Inc. It is appropriate for this Complaint to be brought by both entities, given their affiliation. See, e.g., Shaw Industries Group, Inc. and Columbia Insurance Company v. Texas Best Flooring Company Inc., WIPO Case No. D2011-1676 (the complaint filed by two “related companies”).

2 Given the similarities between the phDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel finds it appropriate to cite to the WIPO Overview 2.0 and decisions under the UDRP.