WIPO Domain Name Decision: D2006-0396

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Building Trade 1868 Kft. v. RegisterFly.com

Case No. D2006-0396

1. The Parties

The Complainant is Building Trade 1868 Kft., Budapest, Hungary, represented by Danubia Patent and Trademark Attorneys Ltd., Hungary.

The Respondent is RegisterFly.com, West Orange, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cigartower.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2006. On March 31, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 1, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On April 5, 2006, the Center transmitted by e-mail to eNom a request for further information regarding the registrant of the disputed domain name in view of the Whois Privacy Services used by the holder of the domain name. On the same day, eNom advised the Center that due to the fact that the Whois Privacy Services are provided by RegisterFly.com, eNom is not able to provide further information on the domain name holder. The Center verified that 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”).

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 April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2006.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on May 11, 2006. 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 company Cigar Tower Kft., established in 1996, and named since 2003 Independent 2003 Kft., is a well-known cigar distributor on the Hungarian market since its incorporation. The principal shop of the Cigar Tower business is located in downtown Budapest, next to the famous Kempisky Hotel.

This company applied for registration of the Hungarian Trademark CIGAR TOWER on April 30, 2003, with the Hungarian Patent Office. This trademark has been registered on June 25, 2004, No. 179.066, with the list of goods comprising of tobacco and tobacco products of international class 34.

This company also registered the domain name <cigartower.hu> in December, 17, 1997.

The Complainant, established since 1994, is the principal wholesaler of the cigar distribution business run by Independent 2003 Kft.

At the end of 2005 and in February 2006, respectively, Independent 2003 Kft. transferred the domain name <cigartower.hu> and the trademark CIGAR TOWER to the Complainant.

The Complainant, as part of the Cigar Tower business, maintains extensive online presence through the website “www.cigartower.hu”.

As demonstrated by the Complainant, the disputed domain name was registered on May 20, 2003, by Mr. Talas, an individual living in Budapest. According to the Whois database excerpt produced by the Complainant, this domain name had been registered under the website title “CigarShop.hu”, and Mr. Talas remained the holder of the disputed domain name at least until December 12, 2005. But at the time of filing of the Complaint, that is during the first quarter of 2006, the Complainant discovered that the Whois database displayed the contact details of RegisterFly.com, which is an accredited ICANN registrar. The domain name holder appears to be using the Whois Privacy Services of the registrar.

The Panel notes that the Whois database excerpt regarding the disputed domain name produced by the Complainant still mention “CigarShop.hu” as website title of the disputed domain name, and that the disputed domain name redirects users to the website “www.cigarshop.hu”, which is a Hungarian website dedicated to the sale of cigars, cigarillos, pipes, tobacco, accessories, etc. The domain name <cigarshop.hu> has been registered in January 2003 by a company called Rotabak Kft, and the administrative contact is Mr. Talas.

In July 2003, one of the managers of Independent 2003 Kft. wrote an e-mail to Mr. Talas to inquire on the motivation behind registering the disputed domain name. In his July 2, 2003 e-mail, Mr. Talas, wrote:

“as you might have guessed already, our previous attempts for common business engagements fell through because – openly and honestly – I did not like the attitude that CigarTower would control the cigar market extensively, in other words that all nation-wide cigar orders would be processed through the Tower”.

By an e-mail of August 25, 2003, Mr. Talas offered to sell the disputed domain name to Independent 2003 Kft. for a net price of 500.000 Hungarian Forints, adding that “This offer is valid for 1 week, until 8.50pm on September 1, 2003. After this deadline I will offer the above domain addresses to other interested parties and the offered price increases by HUF 100.000 each week”.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s trademark since it incorporates in its entirety the CIGAR TOWER trademark, and since the top level domain “.com” is wholly generic in that it is required only for technical reasons and should thus be disregarded, as it is customary in UDRP proceedings.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The mark CIGAR TOWER was used as a company name and business identifier well before the Respondent proceeded to the registration of the disputed domain name. The filing date for the registration of CIGAR TOWER as a trademark also predates the domain name registration. The Respondent, as well as the initial registrant, have never been granted any license or any other right to use the Complainant’s trademark and none of them have ever been commonly known under the name Cigar Tower. Furthermore, according to the Complainant, the fact of using the disputed domain name as a gateway page to the trading website “www.cigarshop.hu” of a competitor of the Complainant (Rotabak Ltd.) cannot be construed as a bona fide use of <cigartower.com> and proves in any case the Respondent’s intention to misleadingly divert consumers to the website of the Complainant’s competitor.

Finally, the Complainant alleges that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the original registrant clearly knew the Complainant and its trademark at the time it proceeded to the registration of the disputed domain name. Furthermore, the original registrant offered to sell the disputed domain name for a price well in excess of out-of-pocket costs. Finally, the disputed domain name is clearly used to mislead Internet users by redirecting them to the website of the Complainant’s competitor and thus, to benefit from the goodwill associated therein.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in accordance with Paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the 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 domain name; and

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

However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate.”

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:

A. Identity of the Respondent

Before addressing the requirements of the Policy it is convenient first to comment on the identity of the Respondent in this case.

RegisterFly.com is the entity that is recorded on the Whois database as the domain name holder for the disputed domain name and the verification response from the registrar (eNom) confirms this. RegisterFly.com is therefore the formal Respondent in this case pursuant to paragraph 1 of the Rules (definition of “Respondent”) and, as such, the party against whom any complaint concerning the domain name should be initiated.

Nonetheless, the Panel also notes that the information disclosed in the Whois record produced by the Complainant is “RegisterFly.com Whois Protection Service”. According to RegisterFly.com’s website, this service consists of a masking or privacy service by which the holder of a domain name may remain anonymous and the Whois database displays RegisterFly.com as the registrant, technical contact, billing contact and administrative contact in lieu of the “true” owner of the domain name.

The Panel infers, on the basis of the Whois record, that the disputed domain name <cigartown.com> is currently held by RegisterFly.com pursuant to the privacy service offered by this registrar, for the benefit of the “true” owner of this disputed domain name.

The question at issue is now to determine whether the current “true” owner of the disputed domain name is still Mr. Talas, as alleged by the Complainant and identified as the initial registrant of the disputed domain name.

To answer this question, the following elements produced by the Complainant have to be taken into account:

- It appears that from May 20, 2003, to at least December 12, 2005, Mr. Talas was the registrant of the disputed domain name. The Complainant discovered the transfer of the disputed domain name only when it filed the Complaint, that is during the first quarter of 2006;

- During the time Mr. Talas was the registrant of the disputed domain name, the website with the domain name <cigartower.com> displayed the title “CigarShop.hu” and when typing the disputed domain name to the browser Internet users were redirected to the website “www.cigarshop.hu”;

- The domain name <cigarshop.hu> has been registered in January 2003 by a company called Rotabak Kft; its administrative contact was Mr. Talas;

- In spite of the fact that the registrant of record is now RegisterFly.com, the website title of cigartower.com is still “Cigarshop.hu”, Internet user are still redirected to the website www.cigarshop.hu/cigartower when typing the disputed domain name and dr. Christian Talas is still the administrative contact for <cigarshop.hu>.

Based on these elements demonstrated by the Complainant, the Panel infers that Mr. Talas has subscribed to the ProtectFly masking service and is the holder of the disputed domain name.

As a consequence, in the absence of any evidence to the contrary by the Respondent, the Panel considers it appropriate to treat the actions of Christian Talas as the actions of the Respondent for the purposes of Paragraph 4 of the Policy, as decided in a similar case (Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969,(December19, 2005)).

B. Identical or Confusingly Similar

The Complainant has proven that it owns the trademark CIGAR TOWER. This trademark is incorporated in its entirety in the disputed domain name <cigartower.com>. The suffix “.com” is incidental to domain names and cannot serve to distinguish them.

The Panel therefore finds that the domain name <cigartower.com> is identical to the Complainant’s trademark and as a consequence, the action brought by the Complainant meets the requirement of Paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant must demonstrate that the Respondent has no rights to, or legitimate interests in the disputed domain name.

The Panel notes, as alleged by the Complainant in its Complaint, that when typing “www.cigartower.com”, to a browser Internet users are instantly redirected to the website “www.cigarshop.hu”, which is a website run by a competitor of the Complainant on the Hungarian market. The administrative contact of the domain name <cigarshop.hu> is Mr. Talas who apparently well knows the Complainant according to the correspondence produced by the Complainant. This use of the domain name identical to the Complainant’s trademark seems to be for the purpose of diverting customers looking for the products associated with the Complainant’s trademark to the Complainant’s competitor’s website. Such use clearly does not constitute a legitimate non-commercial or fair use and is not use in connection to a bona fide offering of goods or services.

Also, it appears that neither the Respondent , nor Mr. Talas, have been licensed or otherwise granted any right to use the Complainant’s trademark CIGAR TOWER.

No Response has been submitted challenging the Complainant’s assertions or proving any rights or legitimate interests in the disputed domain name, while the Respondent had been given the opportunity to do so pursuant to Paragraph 4(c) of the Policy.

Therefore, the Panel finds based on the record that the Respondent has no rights to, or legitimate interests in, the domain name <cigartower.com>. The Panel therefore considers that the requirements of the Policy, Paragraph 4(a)(ii), are fulfilled.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name was registered in bad faith, and that it is used in bad faith by the Respondent.

Taking into account the correspondence between Independent 2003 Kft and Mr. Talas in 2003, the Panel agrees with the Complainant’s assertion that Mr. Talas clearly knew of the registration and use of the trademark CIGAR TOWER prior to registering the disputed domain name. Furthermore, Mr. Talas is engaged in the same business, that is the cigar distribution, and on the same geographical market, both the Complainant and Mr. Talas being based in Budapest.

The Panel also notes that in an email of August 25, 2003, Mr. Talas offered the disputed domain name for a price of 500.000 Hungarian Forints (about 2.000 euros) to INDEPENDENT 2003 Kft. In this email, Mr. Talas added that the offer was valid for one week, and that after this time, he would offer the domain name to other interested entities and that the sales price would increase of 100.000 Hungarian Forints each week. The Panel finds that this indicates bad faith on the part of the Respondent in accordance with Paragraph 4(b)(i) of the Policy.

Furthermore, the disputed domain name is used as a means of redirection of Internet users to the website “www.cigarshop.hu”. This use to redirect the Complainant’s potential customers to the website of a competitor clearly does not constitute a fair use of the disputed domain name but demonstrates the Respondent’s bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Panel considers that the requirements of the Policy, Paragraph 4(a)(iii), are fulfilled.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <cigartower.com>, be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist

Date: June 12, 2006