WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ron Matusalem & Matusa of Florida Inc. v. Cuba Ron SA

Case No. D2002-0962

Complainant is Ron Matusalem & Matusa of Florida Inc., Miami, Florida, United States of America (USA).

Respondent is Cuba Ron SA of Habana, Cuba.

The domain names at issue are:

<matusalemrum.com>
<matusalemrum.net>
<ronmatusalem.com>
<ronmatusalem.net>
<ronmatusalem.biz>
<ronera-matusalem.net>
<ronera-matusalem.com>
<ron-matusalem.net>
<ron-matusalem.com>
<roneramatusalem.com>
<roneramatusalem.net>
(Domain Names),

which Domain Names are registered with Melbourne IT Limited of Melbourne Australia (the Registrar).

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on October 16, 2002. The signed original with attachments was received by the Center on October 18, 2002.

On October 18, 2002, the Center transmitted to the Registrar a request for Registrar Verification in connection with this case. On October 21, 2002, the Registrar confirmed, inter alia, that: (i) the Domain Names are registered with the Registrar; (ii) the current registrant of the Domain Names is Respondent; (iii) the Domain Names will be locked pending this administrative proceeding.

On October 23, 2002, the Center completed the Formal Requirements Compliance Checklist and on the same day transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised Respondent that a response was due by November 12, 2002.

On November 12, 2002, the Center received Respondent’s Response electronically. The signed original with attachments was received by the Center on November 19, 2002.

On November 13, 2002, the Center acknowledged receipt of the Response.

On November 20, 2002, the Center received Complainant’s Supplemental Memorandum and on the following day acknowledged receipt of it.

On November 22, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist was required to send her decision to the Center by December 6, 2002.

On November 25, 2002, the Center informed the Panelist about Complainant’s supplemental filing and Respondent’s intention to reply to it. On November 29, 2002, the Panelist instructed the Center to inform the parties that the Panelist had decided to receive and consider Complainant’s Supplemental Memorandum, and that Respondent was permitted to file a reply not later than December 9, 2002. The projected decision date was consequently extended to December 16, 2002.

The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

4.1 Complainant is a US corporation producing and selling MATUSALEM rum. Attached to the Complaint are promotional materials summarizing the Complainant’s product history as well as an Affidavit by the President of Complainant (Attachments C and D). According to the above documents MATUSALEM is a famous rum nowadays produced by Complainant in the Dominican Republic. However, the production of MATUSALEM rum was started in Cuba in 1872 by the Alvarez Camp family. In 1961, shortly after the Revolution in Cuba, the Alvarez Camp family left Cuba and found refuge in the United States where in 1961 two corporations were created to carry on MATUSALEM rum making business in the US. In the following 20 years the Alvarez Cap family’s heirs brought legal actions against each other for the control of the companies, which finally ended in 1995.

4.2 Complainant owns 4 registered trademarks in the US incorporating the word MATUSALEM alone or in combination with other words (basically with the word "ron" which in English translates to "rum" - Attachment E to the Complaint), namely:

RON MATUSALEM –registered in Class 33 for "rum" on June 12, 1990 (reg. no. 1,601,273). The mark shows a date of first use of 1964;

MATUSALEM – registered in Class 32 for "non-alcoholic cocktail mixes and fruit drinks" and Class 33 for "prepared alcoholic cocktails" on September 29, 1998 (Reg. No. 2,192,783). The mark shows a date of first use of 1995;

MATUSALEM – registered in Class 33 for "rum" and Class 34 for "cigars" on March 10, 1998 (Reg. No. 2,142,393). The mark shows a date of first use of 1964 for Class 33 and 1996 for Class 34; and

ASI ES LA FIESTA CON MATUSALEM HOY ALEGRE . . . MANANA BIEN –registered in Class 33 for "distilled liquor" on January 20, 1998 (Reg. No. 2,130,534). The mark shows a date of first use of 1996.

The oldest registration dates back to 1990 but shows a date of first use in 1964. Complainant also alleges that the word MATUSALEM is subject to several trademark applications/registrations made by Complainant or by its sister company in the U.S. and in other countries but does not provide evidence thereof.

4.3 The Domain Names were registered by Respondent on May 12, 2000, with the exception of the domain <ronmatusalem.biz> which was registered on November 26, 2001. All Domain Names incorporate the word MATUSALEM and ron (or rum – the product) or ronera (which means rum producer).

4.4 On May 30, 2002, Complainant sent a letter to the original Administrative Contact for Respondent’s Domain Names and directly to Respondent informing them of the Complainant’s rights in the mark MATUSALEM and requesting the transfer of the Domain Names.

4.5 Respondent is a Cuban corporation established in 1993. Attached to the Response, is the act of nationalization of the company Ron Alvarez Camp issued in 1965 by the Cuban Government (Attachment A). According to Respondent (but the circumstance is not challenged by Complainant) the Ron Alvarez Camp company at that time was the producer of MATUSALEM rum and owner of the MATUSA and MATUSALEM marks. Attached to the Response are also copies of renewals of registrations for the trademark MATUSALEM in Cuba and in other countries (Hungary, Germany, and Poland – Attachment B).

- MATUSALEM No. 46834. (Cuba) - Renewed up to October 30, 2008 for Class 33
- MATUSALEM No. 100249 (Cuba) - Renewed up to October 6, 2009 for Class 33
- MATUSALEM No. 130 492 (Hungary) – Renewed up to June 11, 2010 for Class 33
- MATUSALEM No. 653 1678 (Germany) – Renewed up to October 31, 2010 for Class 33
- MATUSALEM No. 67707 (Poland) – Renewed up to May 18, 2010 for Class 33
- MATUSA No. 100611 (Cuba) – Renewed up to October 30, 2008 for Class 33.

The above renewals are in the name of Havana Rum and Liquors SA (which, as shown by Attachment C to the Response, is controlled by Respondent since February 1999) with the exception of renewal No. 46834 which, as shown by the certificate attached thereto, has been transferred to Respondent.

Attached (under letters B, C and D) to the Response to Complainant’s Supplemental Memorandum are various documents (copies of letters by local Patent and Trademark attorneys and by the German Patent and Trademark Office) attesting that the above mentioned Hungarian, German and Polish trademarks were actually registered – as reported and documented by Complainant in its Supplemental Memorandum - by Empresa Cubana Exportadora de Alimentos Y Productos Varios (Cubaexport) but subsequently transferred to Havana Rum and Liquors SA. According to the renewal certificates submitted by Respondent and to the search results submitted by Complainant as Attachment A to the Supplemental Memorandum, most of the above mentioned trademarks were registered early in 1990s.

4.6 Attached to the Response are also copies of invoices issued by Respondent in 1997, 2000 and 2001 in connection with the supply of MATUSALEM rum (Attachment D). In addition, Respondent has provided copy (Attachment E to the Response) of the correspondence exchanged in January 2001, with different companies, in connection with the creation of Respondent’s website.

Complainant contends that:

• Respondent’s Domain Names are identical to Complainant’s trademarks, each of them incorporating the mark MATUSALEM and the product ron (rum);

• Respondent has no rights or legitimate interests in the Domain Names. Respondent owns no trademark registrations in the name MATUSALEM and does not carry on a bona fide business under the Domain Names and/or the name MATUSALEM;

• in order to challenge the documents submitted by Respondent in support of Respondent’s title in certain trademarks for MATUSALEM (Attachments B to the Response and B, C and D to the Response to Complainant’s Supplemental Memorandum) Complainant contends that Respondent does not have any legitimate claim in the above trademarks because Respondent’s claim is based on Cuban Government’s nationalization of Complainant’s property after the Cuban Revolution, nationalization being an illegitimate and discriminatory act;

• Complainant’s trademarks are famous worldwide and there is no way that Respondent may have not been aware of them when he registered the Domain Names;

• Respondent is a competitor of Complainant and has registered and has been using the Domain Names in bad faith in order to prevent and disrupt Complainant’s business;

• a finding of bad faith is also supported by the fact that Respondent owns multiple registrations of Complainant’s trademark as well as at least 155 other domain names, many of which appear to include trademarks of other competitors.

Consequently, the Complainant requests the transfer of the Domain Names.

Respondent contends that:

• in July 1965, following the Cuban Revolution, the Cuban Government nationalized the company Ron Alvarez Camp SA which at that time was manufacturing MATUSALEM rum in Cuba;

• the above mentioned nationalization covered all tangible and intangible assets including any trademark rights in the word MATUSALEM which are now held by Respondent by virtue of a chain of transfers;

• Respondent now holds several trademarks for the word MATUSALEM in Cuba and other countries (Hungary, Germany, and Poland), directly or through its subsidiary Havana Club Rum & Liquors SA which in its turn acquired them from Cubaexport;

• Respondent’s trademarks were registered before those of Complainant, therefore Complainant cannot claim prior trademark rights in the word MATUSALEM;

• before being notified about this dispute, Respondent had been using the mark MATUSALEM in connection with a good faith offer of products (the supply of rum) and had taken steps to use the Domain Names in a corresponding website to promote, through the Internet, bona fide offering of its goods;

• Respondent therefore had a legitimate interest to register and use the Domain Names when Respondent registered the Domain Names;

• all other domain names registered by Respondent incorporating (as suggested by Complainant) third parties’ trademarks are on the contrary backed by previous trademark registrations in which Respondent has acquired rights (Attachment G to the Response);

• no bad faith registration or use of the Domain Names occurs in this case under none of the circumstances indicated in paragraph 4b of the Policy;

• Complainant has not provided evidence of being successor to the company Ron Alvarez Camp SA or heir of the former owners of Ron Alvarez Camp SA;

• Complainant brought the Complaint in bad faith thus incurring in reverse domain name hijacking.

6.1 As mentioned in paragraph 3, the Panelist decided to receive and consider the Complainant’s Supplemental Memorandum allowing Respondent to file a reply thereto. The Panelist is aware that under Paragraph 12 of the Rules further statements should be admitted only if necessary for the Panel to take a decision and, in any case, sparingly, to maintain the format and expedited nature of the proceedings. In the case in hand, however, the Panelist considers that the Response and the documents attached thereto introduced new and substantive matter particularly in that they show Respondent’s title in trademark registrations which on the contrary was firmly denied in the Complaint (see page 7).

6.2 Paragraph 15(a) of the Rules instructs the Panelist to "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Here Complainant is based in the US and Respondent in Cuba. Also considering the different legal systems which the parties belong to, in the Panelist’s view there is no sufficient connection here to justify having regard to the US case authorities and/or US and Cuban laws referred to by Complainant and Respondent, particularly in connection with the scope and legitimacy of nationalization by the Cuban government of company Ron Alvarez Camp SA. Even less room is left for political considerations. Similarly, this administrative proceeding is not the place to discuss the principles which US and Cuban trademark laws conform to and the interference between the different trademark registrations for MATUSALEM held by Complainant in the US and by Respondent in Cuba and in other countries, also considering that, as a general principle, national registrations are based on the principle of territoriality.

In deciding this case, the Panelist will therefore apply the Policy, the Rules and the Supplemental Rules, having regard to the statements and documents submitted by the parties. Under paragraph 4.a of the Policy, Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4.b of the Policy identifies in particular but without limitation four circumstances which for the purposes of paragraph 4.a shall be evidence of the registration and use of a domain name in bad faith, as follows:

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

(ii) respondent has 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 respondent has engaged in a pattern of such conduct;

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or on the on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Paragraph 4.c sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:

(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

All the Domain Names incorporate the MATUSALEM mark in combination with the word "ron", "rum" or "ronera". MATUSALEM is a registered trademark of the Complainant in the US. The Domain Names therefore consists of the Complainant’s trademark to which the general term "ron", "rum" or "ronera" is added. Numerous WIPO decisions in this connection have ruled that the fact that a trademark is incorporated in its entirety, is per se sufficient to establish that the domain name is identical or confusingly similar to the registered trademark (see amongst others Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237; Dr. Ing. H. c. F. Porsche AG v. Simon Harvey, WIPO Case No. D2002-0194).

The Panelist agrees with the above and finds that the Domain Names are identical with or confusingly similar to the registered trademarks held by the Complainant.

The burden of proof as to the lack of rights or legitimate interests on the part of Respondent lies first on Complainant that must give a prima facie evidence of this factor. The burden then shifts to Respondent which must discharge the burden with credible evidence. In the present case Complainant has had the opportunity to rebut Respondent’s allegations through the Supplemental Memorandum. In the Panelist’s view Complainant’s rebutting of Respondent's allegations and documentation on this point is not convincing. The evidence given by Respondent as to its holding of the mark MATUSALEM (Attachment C), relevant use in its activity (Attachment D) and preparation to use the Domain Names (Attachment E to the Response), is not convincingly rebutted by Complainant which in the end confines its arguments to illegitimacy of nationalization and to instrumental interpretation of certain statements by Respondent (Respondent has not actually stated that it has never used the trademark MATUSALEM in connection with a bona fide offering of goods but has merely conceded that Respondent is not commonly known by the name MATUSALEM).

On the other hand, in the Panelist’s view, Respondent has succeeded in establishing a legitimate right or interest under paragraph 4c (i) and (iii).

Respondent has provided evidence of its holding the MATUSALEM trademarks in Cuba and in other countries (Hungary, Germany, and Poland – Attachment B to the Response), directly or through its subsidiary Havana Rum and Liquors. The renewal certificates submitted show that the above trademarks are still in force.

Respondent has also succeeded in rebutting Complainant’s argument that the above mentioned trademarks are in the name of a different company, Cubaexport, by submitting evidence of the transfer of the above mentioned marks to Havana Rum and Liquors (Attachment B to the Response to Complainant’s Supplemental Memorandum).

Attached to the Response, is also a copy of the act of nationalization of the company Ron Alvarez Camp issued in 1965 by the Cuban Government (Attachment A). According to Respondent (but the circumstance is not challenged by Complainant), the Ron Alvarez Camp company at that time was the producer of MATUSALEM rum and the owner of the MATUSA and MATUSALEM marks in Cuba.

Respondent has also provided convincing evidence that before being notified about this dispute (at least from 1997 through now), it had used the MATUSALEM marks in its business in connection with the offer of products (MATUSALEM rum, indeed - Attachment D) and had taken steps to use the Domain Names in a corresponding website to promote, through the Internet, bona fide offering of its goods (Attachment E). In the Panelist’s view, the correspondence exchanged with different companies shows a positive intention by Respondent in such venture which goes beyond a mere speculative idea for a bona fide business application of a domain name (which is commonly regarded as non sufficient under paragraph 4a(i) of the Policy - in this connection see Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186; Interep National Radio Sales Inc. v. Technical Staffing Corporation, WIPO Case No. D2000-0175; Société des Hotels Meridien SA v. United States of Moronica, WIPO Case No. D2000-0405).

Respondent’s holding rights in the MATUSALEM mark, as mentioned above, convinces the Panelist that such use and preparation to use have been made in good faith. The Panelist therefore finds that Respondent has rights or legitimate interests in the Domain Name.

Since Complainant has failed to establish factor (ii) under paragraph 4 (a) of the Policy, there is no need to examine factor (iii) of the same.

Respondent has asked the Panelist to make a finding of attempted reverse domain name hijacking which under the Rules is defined as a use of the Policy "in bad faith to attempt to deprive a registered domain name holder of a domain name". To establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent’s rights or legitimate interests in the Domain Names and evidence of the harassment or similar conduct by Complainant despite such knowledge. Here, considering the history of MATUSALEM rum and its original producer as described by Complainant, Complainant should have known about, or in any case verified, Respondent’s rights in the MATUSALEM mark. On the other hand, only one of the trademark registrations claimed by Respondent (Cuban Reg. No. 46834) results to have been transferred in the name of Respondent thus making it difficult for Complainant to acquire positive knowledge of Respondent’s rights or legitimate interests in the Domain Names. In the Panelist’s view, therefore, there is not sufficient evidence here to establish that Complainant brought the Complaint in bad faith.

The Panelist decides that Complainant has failed to establish at least one of the three elements of the Policy, namely: that Respondent lacks legitimate rights or interests in the Domain Names. The Panelist therefore denies Complainant’s request that the Domain Names be transferred to Complainant.