WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Havana Club Holding S.A. v. Above.com Domain Privacy and Transure Enterprise Limited

Case No. D2012-0019

1. The Parties

The Complainant is Havana Club Holding S.A. of Luxembourg, Luxembourg represented by Dreyfus & Associés, France.

The Respondents are:

(a) Above.com Domain Privacy of Beaumaris, Victoria, Australia; and

(b) Transure Enterprise Limited of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <habana-club.com> is registered with Above.com, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2012. On January 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 12, 2012.

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 January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 3, 2012.

The Center appointed Andrew Brown QC as the sole panelist in this matter on February 9, 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.

4. Factual Background

The disputed domain name <habana-club.com> was registered on July 23, 2011.

The Complainant is the Luxembourg-based owner of the Havana Club brand of Cuban Rum which was first established in 1878 in Cuba. The Complainant is part of the Pernod Ricard Group. Havana Club is one of Pernod Ricard’s strategic premium spirit brands and one of the fastest growing spirit brands worldwide, with 3.8 million cases sold in 120 countries in 2010. The evidence shows that Havana Club is a market leader in premium rums in a number of countries.

The Complainant has promoted its brand by global campaigns which include advertising, online activity (including on its website “www.havana-club.com”) and public relations support.

The Complainant is the registered proprietor of numerous trademark registrations for HAVANA CLUB including the following word marks which it relies on:

- Community Trademark Registration No. 005414917 HAVANA CLUB filed on October 10, 2006 and registered on October 18, 2007 in class 33 for alcoholic beverages (except beers).

- French Trademark Registration No. 97663342 HAVANA CLUB registered as of February 12, 1997 (renewed) in class 33 for spiritueux, liqueurs, eaux de vie en particulier, tous ces produits étant d’origine Cubaine.

- International Trademark Registration No. 965560 HAVANA CLUB registered on June 3, 2008 and covering goods in class 33 for boissons alcooliques (à l’exception des bières) designating Albania, Botswana, China, Kenya, South Korea, Lesotho, Mongolia, Mozambique, Namibia, Oman and Swaziland.

- Australian Trademark Registration No. 906171 HAVANA CLUB registered as of 13 March 2002 and covering goods in class 33 for alcoholic beverages including spirits and liqueurs; rum and rum based products in this class.

The Complainant also has unregistered rights in the mark HAVANA CLUB, including by way of its domain registration <havana-club.com> dating from December 8, 1998, and by way of its company name Havana Club Holding SA.

The Complainant states that as at the date of the Complaint, the Respondents were using the disputed domain name in connection with a website that displayed a page of pay-per-click sponsored links, mostly in French, to commercial websites a number of which related to alcoholic beverages. Such websites included websites offering for sale goods of competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

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

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the trademark HAVANA CLUB as at the date of registration of the disputed domain name by way of its registered trademarks for HAVANA CLUB (which well predate the disputed domain name). Further, the Complainant has established unregistered rights in the trademark HAVANA CLUB including by way of its use of the trademark on its product, by advertising and marketing, and by way of its domain name <havana-club.com> registered on December 8, 1998.

The Panel considers that the disputed domain name <habana-club.com> is confusingly similar to and a typo-variant of the Complainant’s registered trademark. The addition of a hyphen is not sufficient to avoid this conclusion. The conclusion that the disputed domain name is a deliberate typo-variant supported by the following:

(a) “Habana” is the Spanish translation of the English noun Havana. Accordingly, Spanish speakers, or those familiar with Spanish, will readily draw an association between the disputed domain name and the Complainant’s registered trademark;

(b) The disputed domain name is closely similar to the Complainant’s domain name <havana-club.com>. The only difference is the substitution of the letter “v” with the letter “b”. The Panel notes in this regard that the disputed domain name contains a hyphen between its two words, in the same way as the Complainant’s mark;

(c) There is close phonetic similarity between the disputed domain name and the Complainant’s trademark. Previous panels have found that phonetic proximity is a criteria to take into account when assessing similarity of misspelled domain names (see, e.g., Intesa Sanpaola S.p.A. v. Above.com Pty Ltd./David Woo, WIPO Case No. D2010-1611);

(d) The circumstances discussed in the remaining sections of this decision.

The Panel accordingly finds that the disputed domain name is a typo-variant of, and confusingly similar to, the trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondents used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondents have been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or

(iii) that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

However the Complainant is required only to make out a prima facie case that the Respondents lack rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondents to come forward with appropriate evidence demonstrating their rights or legitimate interests in the disputed domain name.

The Complainant states and the Panel accept that it has never given the Respondents any licence or authority to use the trademark HAVANA CLUB or to seek registration of any domain name incorporating that mark, or a variation of it.

There is no evidence that the Respondents made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The disputed domain name is not similar to the Respondents’ names, and there is no evidence that the Respondents operate any business under a name that is similar or the same to the disputed domain name.

The disputed domain name was at the time of the Complaint redirecting to a website which contained sponsored pay-per-click links including to websites offering for sale goods produced and sold by competitors of the Complainant.

In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any Response from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondents have registered or have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that the Respondents have registered the disputed 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 the Respondents have engaged in a pattern of such conduct; or

(iii) that the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ 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 the Respondents’ website or location or of a product or service on the Respondents’ website or location.

The disputed domain name is a typo-variant of the Complainant’s registered trademark and of the Complainant’s registered domain name <havana-club.com>. The Respondents’ conduct accordingly amounts to typo-squatting. It is well established in prior UDRP decisions that “typo-squatting” is inherently parasitic and of itself evidence of bad faith (Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746). The Respondents have jointly been the subject of at least 40 adverse decisions of previous panels in which the relevant disputed domain name was cancelled or transferred, including decisions in which the disputed domain name consisted of a misspelling of the relevant complainant’s trademark by adding, removing or substituting one letter (see, e.g., La Touraine, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2010-1118). This indicates a pattern of conduct on the part of the Respondents of registration in bad faith.

Further, at the time of the Complaint, the disputed domain name resolved to a pay-per-click landing page displaying commercial links, including to web pages offering for sale spirits and liqueurs directly covered by the Complainant’s registered marks – in particular cognac, gin and white rum. The Panel considers that this amounts to commercial conduct so that there is an intent to attract Internet users for commercial gain.

The Panel is accordingly also satisfied on this basis that the disputed domain name was registered and is being used in bad faith, in particular for attracting Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trademark HAVANA CLUB by way of typo-squatting. Internet users searching for the Complainant’s website are likely to come across the Respondents’ website and the associated links to spirits and liqueurs could then be diverted away from the Complainant’s business.

The Panel is accordingly satisfied that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) of the Policy.

7. Decision

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 <habana-club.com> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Date: February 20, 2012