WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Japan Tobacco Inc. v. Niche Advertising Limited
Case No. D2014-0283
1. The Parties
The Complainant is Japan Tobacco Inc. of Tokyo, Japan, represented by Ploum Lodder Princen advocaten en notarissen, Netherlands.
The Respondent is Niche Advertising Limited of Virgin Islands, overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("UK"), represented internally.
2. The Domain Name and Registrar
The disputed domain name <mevius.com> (the "Domain Name") is registered with 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 25, 2014. On February 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 3, 2014, the Center transmitted the Request to Amend the Complaint by email to the Complainant.
On March 3, 2014, the Complainant submitted the amended Complaint by email to the Center.
The Center verified that the Complaint together with the amended 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 March 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2014. The Response was filed with the Center on March 23, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 7, 2014. 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 is a publicly owned Japanese business corporation that produces and distributes tobacco products, beverages, and pharmaceuticals. Through its Swiss subsidiary JT International S.A., the Complainant's group employs more than 49,000 persons in its overseas tobacco business, making it one of the largest cigarette manufacturers in the world, using brands including CAMEL and WINSTON (licensed for sales outside the United States of America). Retailers in at least 17 countries, in addition to online cigarette retailers, distributed the Complainant's MILD SEVEN cigarettes, the best-selling charcoal filtered cigarette brand worldwide from 1978 through 2012.
In August 2012, the Complainant announced that it would switch from the MILD SEVEN mark to a new, invented MEVIUS mark. This branding change was the subject of international media attention as well as extensive advertising campaigns. An August 2012 article in the Wall Street Journal, for example, discussed the Complainant's rebranding and its effort to unseat MARLBORO as the world's most popular brand of cigarettes.
The Complainant holds numerous MEVIUS trademark registrations, including Japanese trademark registration number 5417994 (registered June 10, 2011), Benelux trademark registration numbers 0898943 (registered April 18, 2011) and 0905633 (registered August 23, 2011), and UK trademark registration numbers 2578439 (registered July 8, 2011) and 2588765 (registered October 28, 2011).
In December 2012, the Domain Name was registered to the Respondent, a company in the British Virgin Islands. The website using a domain name corresponding to the Respondent's name has little content other than an email contact address, the same one used in the Registrar's WhoIs listing for the Domain Name. The Response submitted in the current proceeding describes the Respondent's business as follows:
"The Respondent Niche Advertising Limited is a website development company and its main business is to collect expired domain names and use their remaining website traffic to build revenue stream through Internet advertising system, mainly pay-per-click program."
The Respondent acquired the Domain Name at auction in December 2012 when the registration expired. According to the Response, and as indicated by screenshots stored by the Internet Archive's Wayback Machine at "www.archive.org", the Domain Name was formerly registered to an unrelated Japanese company, Mevius Company, Ltd, an exporter of used cars, which is apparently no longer in business. The Respondent demonstrates that "Mevius" is a family name, which also appears in songs and fiction.
The Domain Name does not currently resolve to an active website, but a screenshot attached to the Complaint shows that in February 2014 the Domain Name was associated with a pay-per-click ("PPC") advertising landing page featuring advertising links for a variety of apparently unrelated products and services, labelled in English or Dutch. The site also advertised the Domain Name for sale in Dutch, and for a time the Domain Name was listed for sale on the SEDO domain name auction website.
The Complaint attaches the findings of an investigation conducted on its behalf by Thomson Reuters, which found that the Respondent has registered over 1,000 domain names, mostly in Chinese characters. These include domain names comprised of the Chinese characters for well-known trademarks such as CHANEL, LAMBORGHINI, CLARINS, TOKYO DISNEYLAND, and REGAINE.
The Complainant contacted the Respondent in early 2014 about purchasing the Domain Name, but the parties reportedly did not agree on a price. This proceeding followed.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to its MEVIUS mark and that the Respondent has no rights or legitimate interests in using the mark as a Domain Name.
The Complainant argues that the Respondent must have been aware of the Complainant's well-known MEVIUS mark, registering the Domain Name during the Complainant's highly publicized brand change in 2012 from MILD SEVEN to MEVIUS, which is an invented name not a dictionary word. The Complainant infers that the Domain Name was selected in an effort to capitalize on the fame of the Complainant's mark for commercial gain through PPC advertising and to offer the Domain Name for sale, in circumstances that must be considered bad faith for Policy purposes.
The Respondent argues that "Mevius" is a family name to which the Complainant does not have exclusive rights. The Respondent observes that the former owner of the Domain Name, Mevius Company, Ltd, used it properly for a website associated with its automobile export business in Japan. The Respondent claims the right to "recycle" the Domain Name for PPC advertising, "providing visitors automotive related links", effectively trading on the residual goodwill associated with the former owner's automotive business.
The Respondent denies prior knowledge of the Complainant's MEVIUS mark and points out that the Respondent did not approach the Complainant about selling the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall 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."
A. Identical or Confusingly Similar
The Complainant holds registered MEVIUS trademarks, to which the Domain Name is identical (disregarding the non-distinctive ".com" extension). UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. This test is satisfied here, regardless of whether the family and company name "Mevius" also has other, non-trademark, signification. Accordingly, the Panel concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, 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; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Respondent's use of the Domain Name is commercial, and there is no assertion that the Respondent or its business has been known by a corresponding name. Rather, the Respondent implicitly relies on Policy paragraph 4(c)(i), claiming a use in connection with a bona fide offering of goods or services: PPC advertising. The Respondent claims a legitimate interest in acquiring the expired Domain Name, formerly used in connection with an automotive business named "Mevius Company, Ltd", and employing it for PPC advertising, "providing visitors automotive related links".
This claim is not persuasive. There is only one screenshot in the record (furnished by the Complainant) of the PPC landing page associated with the Domain Name after the Respondent acquired it. That page had nothing to do with the automobile export business of Mevius Company, Ltd. in Japan, which was apparently defunct by that time, and it does not appear to have been presented in a manner designed to attract follow-on business from customers familiar with that former enterprise. Only one of more than a dozen PPC advertising links found on the page (labelled "Auto Man") seems possibly to refer to an automotive business. The record does not support a conclusion that the Respondent itself was engaged in an automotive business or designed the landing page as a portal for "providing visitors automotive related links", as claimed in the Response. The Respondent does not establish that the Domain Name is based on a generic word or phrase in any language, and the PPC advertising was not focused on a relevant generic meaning. See WIPO Overview 2.0, paragraph 2.6. Thus, the Respondent's use of the Domain Name for PPC advertising does not reflect rights or legitimate interests within the meaning of the Policy, paragraph 4(c).
The Panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy's non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
"(i) 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 […]
(iv) by using the domain name, 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."
It is not clear on this record that the Respondent registered the Domain Name "primarily" for the purpose of selling it to the Complainant or a competitor, although the Domain Name was listed on an auction website and offered for sale on the landing page to which the Domain Name resolved. The Respondent is in the business of both buying and selling domain names and also deriving PPC advertising revenues from them if they attract sufficient traffic. The Respondent did not approach the Complainant about selling the Domain Name, and any other prospective purchaser might or might not be a competitor of the Complainant.
However, there would be bad faith within the meaning of the Policy if the Respondent selected the Domain Name either for its trademark value, to present PPC advertising to Internet users familiar with the Complainant's well-known MEVIUS cigarette brand, or to advertise the Domain Name for sale to third parties that presumably would be interested in the Domain Name for precisely the same trademark value reason. The Respondent's own PPC use of the Domain Name would in that case squarely fit the circumstances described in the Policy, paragraph 4(b)(iv), and the attempt to sell the Domain Name would also indicate bad faith, where there is little reason to believe that any purchaser would be interested in the Domain Name other than for its trademark value.
Thus, a finding of bad faith in this proceeding depends on the likelihood that the Respondent (despite its denials) was aware of the Complainant's mark and selected the Domain Name for its trademark value, to attract Internet users interested in the Complainant's products and then present them with PPC advertising links. The Panel finds on the available record that this is more likely than not.
The Domain Name is not a dictionary word in Japanese, English, or Dutch, and the Respondent has not demonstrated that it has a generic sense. The Respondent observes that it is a family name, but the landing page associated with the Domain Name and the PPC advertising links it displayed had nothing to do with "Mevius" as a family name and simply advertised a variety of commercial products. The Respondent also claims that its intent was to attract visitors interested in the former owner of the Domain Name, offering automotive-related advertising links. But the Respondent has not demonstrated any such use of the Domain Name. The landing page was not focused on automobile exports, as was the case for the website previously associated with the Domain Name, and it did not even predominantly feature links to automotive products (which might or might not have been probative on the issue of bad faith). In any event, the Respondent's explanation for selecting the Domain Name is not convincing, because it is not consistent with the Respondent's conduct in using the Domain Name.
On the other hand, there is ample evidence of the value of MEVIUS as a trademark. The record demonstrates that MEVIUS is one of the bestselling cigarette brands in the world. The leading results for "mevius" as a query on popular Internet search engines concern the Complainant's MEVIUS cigarettes. The 2012 branding change from MILD SEVEN to MEVIUS focused international advertising and media attention on the new brand name as it was introduced in some 17 countries (as well as online) where the MILD SEVEN brand was already well established. The Respondent registered the Domain Name in late 2012, in the midst of the Complainant's highly publicized global rebranding from MILD SEVEN to MEVIUS.
The Respondent may be established in the British Virgin Islands, but its portfolio of domain names is global and demonstrates a particular interest in Asian markets. Many of the Respondent's domain names are in Chinese characters, for example, and some of these evince a disregard for trademark rights in that they represent Chinese versions of world-famous brands owned by European, Japanese, and American companies.
These facts, together with the Respondent's unpersuasive explanation for choosing the Domain Name, strongly suggest that the Respondent was aware of the MEVIUS mark and sought to exploit it with an identical Domain Name. The Panel concludes on the available record that the Domain Name was registered and is being used in bad faith within the meaning of the Policy. The Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <mevius.com> be transferred to the Complainant.
W. Scott Blackmer
Date: April 25, 2014