WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

C. A. Cigarrera Bigott Sucesores v. Ultimate Search

Case No. D2002-0866

 

1. The Parties

Complainant is Compañía Anónima Cigarrera Bigott Sucesores, C/O Rafael Silva/Alvaro López, Caracas, Venezuela. The Complainant is represented by Ricardo Antequera Hernández of Antequera, Parilli, Rodriguez & Asociados of Caracas, Venezuela.

Respondent is Ultimate Search of Central Hong Kong, SAR of China. The Respondent is represented by John B. Berryhill, Esq., of Dann, Dorfman, Herrell & Skillman, PC, Philadelphia, Pennsylvania, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <bigot.com>, registered with Network Solutions, Inc. (NSI) of Dulles, Virginia, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2002, by e-mail and on September 20, 2002, in hardcopy. In response to a September 23, 2002, notification by the Center that the Complaint was deficient, the Complainant filed an amendment to the Complaint on September 26, 2002, by e-mail and in hardcopy on October 1, 2002, correcting the Respondentís address, the remedy requested and inaccurate references to the disputed domain name. 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"). On September 18, 2002, the Center transmitted by e-mail to the registrar NSI a request for registrar verification in connection with the domain name at issue. On September 20, 2002, NSI replied that the disputed domain name registration is subject to the Policy.

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding commenced on October 2, 2002. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for October 22, 2002. The Response was filed with the Center on that date.

The Center appointed Dennis A. Foster, Fernando Triana and R. Glen Ayers as panelists for this Case on November 12, 2002. Each member of the Panel has submitted a 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 the Center has followed the Policy and the Rules in administering this Case.

The due date of this Decision is November 26, 2002, but the Panel extended the due date to December 3, 2002.

 

4. Factual Background

Complainant is a Venezuelan company that has manufactured tobacco products throughout a substantial part of South America for several decades. Complainant owns Venezuelan trademark registrations for the mark, "Bigott."

Respondent is listed as the registrant of the disputed domain name with a record of registration created on January 16, 2002. The disputed domain name is linked to websites that market pornographic material.

 

5. The Partiesí Contentions (Summarized)

Complainantís Contentions

--Complainant is a Venezuelan company well-known in that country for the production and marketing of tobacco products. It has been in operation since at least 1921, when it began distributing tobacco products throughout the entire Andean community of nations (i.e., Colombia, Bolivia, Ecuador, Peru and Venezuela).

--Complainant owns several registered trademarks in Venezuela for the name, "Bigott". As a result of its longstanding use, "Bigott" is instantly recognized within Venezuela. Complainant's trademark originated from the family name of the company founder, Mr. Luis Bigott.

--Since 1963, Complainant has also operated a Venezuelan non-profit organization, Fundación Bigott, that uses Complainant's trademark, "Bigott", and carries out multiple cultural, social and scientific activities nationally and internationally.

--Respondentís domain name is identical or confusingly similar to Complainant's trademark. The only difference between the disputed domain name and Complainant's registered trademark is the subtraction of one letter ("t") from the end, making it phonetically identical to the mark.

--Respondent has no rights or legitimate interests in respect of the domain name. Respondent has obtained no authorization from Complainant to use Complainant's trademark, and Respondent's name does not coincide with that mark.

--Respondent registered and is using the disputed domain name in bad faith. Respondent has registered the domain name for individual benefit, re-directing Internet users to other websites (e.g., <xxxanalaction.com>, <wetnyoung.com> and <internetpornawards.com>). Since Respondent has not received a license to use the trademark, "Bigott," it may be presumed that the intention of the Respondent when registering the disputed domain name was to obtain a fraudulent benefit, especially because the contents displayed through the name clearly demonstrate that Respondent is just waiting for an opportunity to sell it, and in the meantime profit on the prestige of Complainant' mark within the Latin American Community.

Respondentís Contentions

--"Bigot" is a common English word that is a derogatory term referring to persons who are narrow-minded and intolerant of other persons or ideas based upon culture or ethnicity. The phonetic accident by which the Complainantís trademark corresponds to an offensive English word is not a fact of the Respondentís making, nor is it the Respondentís intent to tarnish the reputation that the mark may enjoy.

--The disputed domain name is not identical or confusingly similar to Complainant's trademark. Respondent concedes that "Bigott" is a valid trademark owned by Complainant which is identified with its goods but, because English speaking people can readily recognize "bigot" as a distinct word, that word is not "confusingly" similar to Complainant's mark.

--Respondent does have a legitimate interest in the disputed domain name. Respondent seeks to acquire short, generic, or otherwise useful abandoned domain names, which are initially parked to provide a page of general interest links. The Respondent then develops each domain name by matching selected search results from a third-party advertiser database with concepts expressed in the domain names. It is indisputable that Respondent has been operating a website at the disputed domain name which, based upon the offensive nature of the word "bigot", provides links to offensive and distasteful content. Respondent derives revenue from this traffic and has a legitimate interest in the continuation of this revenue.

--Complainant, as have previous complainants seeking relief from the Policy against Respondent with respect to other domain names, has neither conducted any research that would apprise it of Respondent's well-established record nor contacted Respondent in order to determine why the domain name in dispute was registered. Many prior panels operating under the Policy have found for Respondent in circumstances similar to the case at hand.

--Respondent did not register and is not using the disputed domain name in bad faith. This is a condition of specific intent, as all of the non-limiting examples of bad faith enumerated in the Policy are based upon a conscious and intentional behavior designed to capitalize upon or to disrupt Complainant's rights to the goodwill in its trademark. Respondent denies such intent, and further denies prior knowledge of Complainant or any other Venezuelan tobacco company. Moreover, it would be unreasonable to impose a burden of constructive notice upon domain registrants of generic words, under which such persons would be required to be on notice of misspellings of terms that were registered for their value as generic terms per se.

 

6. Discussion and Findings

In accordance with Paragraph 15(a) of the Rules, the Panel is instructed to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Pursuant to Paragraphs 4(a)(i) through (iii) of the Policy, the Panel may find for the Complainant and award it the disputed domain name if Complainant can prove the following:

--the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

--Respondent has no rights or legitimate interests in respect of the disputed domain name; and

--the disputed domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Panel finds that Complainant owns valid registrations of the trademark, "Bigott", in Venezuela (e.g., No. F-27.400, dated January 14, 1952, for tobacco products; No. F-41.449, dated May 28, 1962, for cigarettes, pipe tobacco and other tobacco products; and No. F-105.182, dated November 23, 1983, for tobacco products) (see Exhibit E to the Complaint). Complainant's rights in those trademarks arose decades prior to Respondent's registration of the disputed domain name.

The disputed domain name, <bigot.com>, varies from Complainant's mark, "Bigott", in the deletion of a "t" and addition of the gTLD, ".com", at the end. Per well-established practice under the Policy, the Panel dismisses the addition of that gTLD as irrelevant to these proceedings.

The lack of the ending "t" requires somewhat greater consideration. "Bigot" and "Bigott" are in appearance very similar. Respondent argues that because "bigot" is a common word in English and English speaking people would not confuse it with the name "Bigott," there is no confusing similarity in this Case. However, the Policy is intended to operate on an international basis as does the Internet, and the main language in the Complainantís tobacco markets is Spanish. To Spanish speakers unfamiliar with the word "bigot", the similarity between the disputed domain name and Complainant's mark might easily cause confusion. Many prior WIPO panels have concluded that the deletion or addition of a letter to a trademarked name does not prevent a finding of confusing similarity. See for example The Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com and Nasaq.com, WIPO Case No. D2001-1492 (February 27, 2002) and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201 (February 26, 2002).

The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.

Legitimate Rights or Interests

There is no evidence in the record to suggest that Complainant has licensed or authorized Respondent to use Complainant's trademark. Similarly, there is no evidence that Respondent is commonly known by the disputed domain name (Paragraph 4(c)(ii) of the Policy); or, since Respondent readily admits to the commercial use of the disputed domain name, that Respondent is making a legitimate noncommercial or fair use of the disputed domain name (Paragraph 4(c)(iii)).

Respondent bases its rights and legitimate interests in the disputed domain name on the contention that Respondent has satisfied the criterion cited in Paragraph 4(c)(i) of the Policy, that "before any notice [to Respondent] of the dispute, [its] 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." Respondentís contended bona fide offering of goods or services in this case is its linking of the disputed domain name, <bigot.com>, to pornographic websites.

The Respondent contends it is using the word "bigot" in its generic sense. The Response gives a number of dictionary meanings of the word "bigot" which may be summarized as a person with narrow views who is ethnically and culturally intolerant of othersí dissimilar views (Response Exhibit A). The Respondent goes on to contend that the generic sense also extends to the Respondentís use of the word to promote pornographic websites.

In further support of Respondent's argument, it cites many previous cases under the Policy where it was found to have a legitimate interest in conducting Internet business using words in their generic sense. While the Panel acknowledges there are many Policy cases supporting this practice, the Panel believes this is not accurate regarding the Respondentís business in this Case.

In the instant case, both Complainant and Respondent agree that Respondent has linked pornographic websites to <bigot.com>. Respondent argues that since the word "bigot" describes someone who is offensive, and pornographic websites also are offensive, there is a relationship between the two. This strikes the Panel as extremely tenuous. As Respondent points out, "bigot" is a derogatory term referring to persons who are narrow-minded and intolerant of other persons based upon culture or ethnicity. The Panel does not see any reasonable connection between pornography and narrow-minded people with intolerant views, or why anyone looking for the former would log on to a domain name defined as the latter.

However, even though the Panel does not find the Respondent is using the word "bigot" in its generic sense, the Respondent is nonetheless using the disputed domain, <bigot.com>, to offer goods and services in an arbitrary association with pornography. In the Panelís view, the Respondentís business is a bona fide one in that, per Paragraph 4(c)(i), the Respondent was conducting it without knowledge of the Complainantís claims before being notified of this proceeding. Therefore, the Panel finds the Respondent does have legitimate rights and interests in the disputed domain name.

Having found that the Respondent does have legitimate rights and interests in the disputed domain name, ordinarily the Panel would not need to proceed to discuss bad faith under the Policy at Paragraph 4(a)(iii) since the Complainant is required to prevail at every step of the way in order to win transfer of a disputed domain name. But the Panel believes this Case contains issues deserving discussion under Paragraphs 4(a)(i)(ii) and (iii) of the Policy.

Bad Faith

Paragraph 4(b)(iii) of the Policy provides that, to sustain a finding that Respondent registered and is using the disputed domain name in bad faith, Complainant may submit evidence of either of four separate circumstances to the Panel. In this Case, Complainant has submitted no tangible evidence that Respondent intended to sell the disputed domain name (Paragraph 4(b)(i)), prevent Complainant from reflecting its trademark in a corresponding domain name (Paragraph 4(b)(ii)) or disrupt Complainant's business (Paragraph 4(b)(iii)). Furthermore, Complainant has submitted only circumstantial evidence -- that Respondent is using a domain name confusingly similar to Complainant's mark to conduct some business -- to request a finding of bad faith under the circumstance listed in Paragraph 4(b)(iv), i.e., "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] website 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 [Respondent's] website or location or of a product or service on [Respondent's] website or location."

To rebut this circumstantial evidence, Respondent has contended that, at the time of registration and up to the time of the Complaint filing, Respondent was unaware of Complainant's existence and thus did not attempt to cause confusion with Complainant's mark in its registration of a common English word, "bigot." The Response notes that Respondent is based in Hong Kong and that Complainant is a Venezuelan company. Complainant has verified that its primary production and distribution activities are in South America, so the Panel sees no reason to doubt Respondent's contention. Complainant is well-known in parts of South America, whereas Respondentís domain name seems mainly aimed at English speakers. Thus, the Panel cannot "presume" Respondent's malign intent (as requested in the Complaint) and render that finding.

While the criteria cited in Paragraph 4(b) of the Policy are not intended to be exhaustive of all reasons upon which to base a determination of bad faith registration and use, Complainant has offered evidence of no other suitable grounds. As a result, the Panel finds Complainant has failed to sustain its burden of proof to show that the domain name was registered and is being used in bad faith.

 

7. Decision

The Panel finds that Complainant failed to show that Respondent had no legitimate rights or interests in the disputed domain name as required under the Policy at Paragraph 4(a)(ii). The Panel also finds the Complainant failed to show the Respondent registered and is using the disputed domain name, <bigot.com>, in bad faith as required under Paragraph 4(a)(iii) of the Policy. Therefore, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <bigot.com>, remain registered to Respondent, Ultimate Search.

 


 

Dennis A. Foster
Presiding Panelist

Fernando Triana
Panelist

R. Glen Ayers
Panelist

Dated: December 3, 2002