World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Havanna S.A. v. Brendhan Hight, Mdnh Inc

Case No. D2010-1652

1. The Parties

Complainant is Havanna S.A. of Acasusso, Province of Buenos Aires, Argentina, represented by M. & M. Bomchil, Argentina.

Respondent is Brendhan Hight, Mdnh Inc of Las Vegas, Nevada, United States of America, represented by John Berryhill, United States of America (hereinafter “Respondent” except where expressly indicated).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On September 30, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 30, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 6, 2010. 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” 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 Respondent of the Complaint, and the proceedings commenced October 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2010. The Response was filed with the Center October 28, 2010.

The Center appointed Ross Carson, Pablo A. Palazzi and Wolter Wefers Bettink as panelists in this matter on November 12, 2010. The Panel finds that it was properly constituted. Each member of 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

Complainant’s predecessor began baking and selling confections in Argentina over 70 years ago and Complainant carries on the business today. Complainant sells its confections in countries in South America as well as Spain and France. Complainant commenced the operation of cafes where it offers its HAVANNA confections in 1995. Currently there are 178 such cafes in Argentina and 68 cafes located in other countries including Chile, Brazil, Paraguay, Bolivia, Costa Rica, the Bolivarian Republic of Venezuela, Peru, Mexico and Spain. Complainant is the owner of the trademark HAVANNA registered in the United States Patent and Trademarks Office on the Principal register on December 7, 1982 as U.S. trademark registration no. 1219322 in relation to biscuits. Complainant is also the owner of numerous trademark applications filed throughout South America.

Respondent, MDNH Inc. (Marchex Domain Name Holdings) is a wholly owned subsidiary of Marchex Inc., a publicly traded U.S. corporation (NASDAQ: MCHX) with a market capitalization of over USD 200 million. Marchex Inc., is identified in the contact data available through the link placed at the bottom of thousands of web pages operated by Respondent for the purpose of monetization of common generic terms and short phrases. The registration data provided for the domain name identifies a technical employee – Respondent Brendan Hight – above the line identifying MDNH Inc. (which is an acronym for Marchex Domain Name Holding).

The disputed domain name <havanna.com> was registered on September 26, 2000 and acquired by Complainant some time in 2005.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant submits that the disputed domain name was registered by Respondent well after the registration of the HAVANNA trademark in Argentina in 1997. The disputed domain name was registered on September 26, 2000, about three years later.

Complainant further submits that the disputed domain name <havanna.com> is either identical or confusingly similar to Complainant’s trademark, HAVANNA, as it incorporates the mark in its entirety. As numerous panels have held, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy, Magnum Piering, Inc. v. The Mudjackers and Gardwood S. Wilson, Sr., WIPO Case No. D2000-1525.

Complainant states that the Policy establishes that the question of identity and confusing similarity is evaluated solely on a comparison between a complainant’s word mark and the alphanumeric string constituting the disputed domain name. The whole incorporation of a mark in a domain name has been previously recognized as a sufficient basis for a finding of confusing similarity under the Policy, Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

Complainant states that there are only two minor differences between Complainant’s trademarks and the disputed domain name: (i) the domain name adds the generic top-level domain name “.com”; and (ii) the domain name employs lower case letters while the trademark is generally used with an initial capital letter or with capital letters. Previous panel decisions sustain that the addition of a top-level domain or the use of lower case letters do not take away the fact that they are identical or confusingly similar, and fail to sufficiently distinguish a domain name from a trademark, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Moreover, the term “Havanna” has no meaning either in Spanish or in English other than identifying Complainant’s products for over seventy years, and it sounds identical when pronounced. It should be also noted that it is not a generic, descriptive or geographical term, since even La Habana, Cuba, is not spelled in the same way. This last point must stand clear: Havanna is not a geographical term, and neither the trademark nor its products can at all be related to the Cuban capital.

Complainant further submits that the fact of Havanna being a fanciful term is an indicator of its strength as a trademark. Its registration in numerous trademark offices around the world is conclusive proof of its validity and strength as it was scrutinized and finally registered by many different trademark examiners. Previous panels have held that the first element of the Policy is satisfied where domain name wholly incorporates complainant’s marks, and this has been thoroughly proved as mentioned above, Formula One Licensing B.V. v. N/A., WIPO Case No. D2009-0217.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that as mentioned above, Complainant had secured trademark registrations for the HAVANNA mark long before Respondent registered the disputed domain name. As a result, Respondent has absolutely no rights to the contested domain name in view of Complainant’s prior statutory and common law rights on the Havanna trademark.

Complainant submits that Respondent’s use of the disputed domain name prior to the dispute cannot be connected to a bona fide offering of goods or services. A bona fide offer is a latin term which means an “offer made in good faith, authentic, sincere, honest, legitimate”. As further stated in the Complaint, Respondent’s use of the disputed domain name is absolutely not connected to a bona fide offering of goods or services.

Complainant states that when an Internet user visits the website of Respondent, it is directed to a link farm showing advertising of different products and services (a printout of havanna.com’s website is provided. This is a definite diversion of potential Complainant’s consumers and it cannot be considered a bona fide offering of goods and services.

Previous UDRP panels have held that respondent’s use of a domain name, which incorporates a third party’s trademark in connection with an Internet web site that merely lists links to third party web sites, including those offering goods and services in direct competition with a complainant’s products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name, E.J. McKernan Co. v. Texas International Property Associates, WIPO Case No. D2007-1499.

Complainant further submits that it must be considered that many consumers do not use a search engine when they look for a website on the Internet, especially when looking for famous trademarks such as Havanna. They prefer to type directly on their browser the company’s name or trademark that they are seeking.

Every time Complainant’s potential customers seek its webpage by directly typing its trademark on their browser, they are instead directed to a different Internet location showing advertisings of different issues and displaying a search engine at the bottom. Moreover, potential Complainant’s customers looking for Havanna’s “alfajor” and chocolate related products will probably use the search engine on the ”www.havanna.com” website to type those words. Not so surprisingly when “alfajor”, or “chocolate” is typed on the “www.havanna.com” search engine, the webpage shows many hyperlinks pointing to other related websites offering chocolate related products. This is not only sufficient evidence of Respondent’s lack of legitimate interest over the disputed domain name, but also evidence of bad faith in registration and use, since Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

Complainant further submits that even though Havanna has no generic meaning, Respondent’s website creates the false impression that <havanna.com> is being used in connection with a bona fide offering of goods and services because it displays some sponsored links related to hotels and flights to Cuba or to the city of La Habana. However, that is just an appearance of good faith, since the website has no specific content related to Cuba or La Habana whatsoever other than the abovementioned sponsored links.

This means that Respondent is using the disputed domain name for a pay-per-click parking page, attracting as many Internet users as possible to its website, a mere door to other websites which have paid for advertisement and which in many cases are not connected in any manner either to Cuba or La Habana.

Complainant submits that consistent with this reasoning, a panel held in Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523 that: “... when, as here, the stated purpose of a “[r]espondent is to attract as many Internet users as possible to its websites, which act as mere doors to other sites, but for which the [r]espondent is compensated the [r]espondent’s actions can not constitute a bona fide offering of goods or services.... Also, a National Arbitration Forum panel has held that “...[r]espondent is using the confusingly similar <6abc.com> domain name to operate a website that features links to various commercial websites from which [r]espondent presumably receives referral fees. Such diversion of Internet users to [r]espondent’s website in which is the sole beneficiary is neither a use that comports with a bona fide offering of goods and services...”, American Broadcasting Companies, Inc. v. Domain Administrator, NAF Claim No. 492946.

To sum up, Respondent’s use of the domain, as a generic holding page, is in no way a bona fide offering of goods and services and this only emphasizes the fact that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Complainant submits that Respondent is not commonly known by the disputed domain name.

Complainant further states that there is no relation between Respondent and Complainant. Complainant has absolutely no connection to Respondent and in no way has authorized, licensed or otherwise allowed them to use its trademark or to apply for any domain name incorporating its trademark under any circumstances.

Complainant states Respondent is not an authorized agent or licensee of Complainant, this establishes prima facie evidence that he has neither rights nor legitimate interests in the disputed domain name, Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191. Such was the panel’s assertion in Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) info@fashionid.com, WIPO Case No. D2006-0478, where the panel stated that “the [r]espondents have also never been authorized by the [c]omplainants to use the [c]omplainants’ marks, in any way, shape or form, ... which gives rise to a presumption that the [r]espondents cannot establish that they have rights or any legitimate interest in the domain names”.

Complainant submits that it is acknowledged that Respondent bought the disputed domain name <havanna.com> from a different Registrar with almost 100,000 other domains. The fact that <havanna.com> was previously registered by a different registrar and that was bought by Respondent from the previous owner as a whole with other domains proves that Respondent is in no way commonly known by the disputed domain name.

In addition, it must be emphasized that the website “www.havanna.com” has never had specific content, not even when first registered by it previous owner.

Complainant further submits that Respondent is not 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.

Complainant states that Respondent generates revenue through sponsored link advertising by using Havanna’s trademarks. By diverting traffic to third parties using other third-party link advertisings, Respondent is using Complainant’s trademarks and renowned prestige for its own commercial purposes, as Respondent is receiving some pecuniary benefit in consideration of directing traffic to that site.

It is extremely confusing for a consumer who is searching for a website owned by Complainant, to arrive at Respondent’s site with advertising for various and diverse services and goods. This shows that Respondent is “piggybacking” on Complainant’s goodwill and recognition, and it will undoubtedly mislead consumers in general and customers seeking Complainant in particular, ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. D2008-1049. That by itself is sufficient prima facie evidence that the disputed domain name is not being used for 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.

Complainant further states that Respondent’s only use of the disputed domain name is for commercial purposes as an advertising platform for automated commercial links. This use excludes the possibility of the domain being used as a legitimate noncommercial or fair purpose, and is completely disruptive of Complainant’s business as it misleadingly diverts Internet users and potential customers that are looking for the Havanna website. It is clear that Respondent is using the disputed domain name against the reputation of Complainant and profiting from the disputed domain name.

Moreover, Respondent did not develop the website after registering it as the owner, other than maintaining it as a link farm, and it has never been used for any other legitimate purpose.

Complainant states that regarding “link farms,” a previous UDRP panel in MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550 held that: “The fact that the [r]espondent uses the contested domain name to advertise links relating to complainant’s business], indicates that the [r]espondent was in all probability not only aware of the inherent likelihood that the domain name attract individuals seeking information on the Complainant or its products, but sought to capitalize on the expectations of those Internet users by directing them to other commercial sites offering similar products. [...] [T]he [r]espondent’s use of its site as a “link farm” of this nature is a commercial enterprise designed to create revenue for the [r]espondent...”; “... Other panels have reached similar conclusions concerning such commercial link farm services...”

Regarding this issue, a National Arbitration Forum panel has held that diversion to competing websites, advertising, or pornography is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain name, American Express Company v. american express pay, NAF Claim No. 196044.

Complainant further submits that since it is well known that the link farm website operation generates a small profit to Respondent for each click made by an Internet user, this indicates Respondent’s intent of making a commercial use of the disputed domain name.

A.3. Registration in Bad Faith

Complainant submits that as already mentioned, Complainant’s trademarks are widely known worldwide. Therefore, there is no doubt that Respondent knew or should have known that HAVANNA was a well-known trademark. As a previous UDRP panel held: “[c]omplainant’s worldwide reputation, and presence on the Internet, indicates that [r]espondent was or should have been aware of the marks prior to registering the disputed [d]omain [n]ame.”, Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

Complainant states that there were absolutely no reasonable efforts made by Respondent in order to find out about third party rights in the disputed domain name, as it only needed, as was explained before, to type the word “Havanna”, or even “Havana”, on a search engine to realize that the first link refers to Complainant’s trademark and domain name in Argentina.

Complainant further states that as indicated above, the trademark HAVANNA is known all over the world and the disputed domain name at the time of registration had a great value. Even though the trademark HAVANNA has not yet landed in the U.S. with local franchisees, Complainant has plans to do so in the short term and it is already selling its products through distributors in the State of Florida. Proof of that is that the trademark HAVANNA was first registered in the U.S. in 2003, six years before Respondent registered the domain name. In the last five years, HAVANNA products have been sold in the U.S. for an amount of approximately USD 350,000.

In light of the foregoing, there is enough evidence to assume that Respondent, knew or should have known that he was registering a domain name that was confusingly similar to Complainant’s trademarks.

Complainant submits that the very use of a well-known trademark by someone with no connection with the products suggests opportunistic bad faith since Respondent knew or should have known of Complainant’s trademark and services at the time Respondent registered the disputed domain name (given the widespread use and fame of Complainant’s trademark). By analogy, it is important to point out that this holding is consistent with Argentine Trademark Law No. 22,362 § 4, 24 and 35. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Complainant states it is interesting to point out that in the case Sociedad Administradora de Fondos de Pensiones y Cesantías PORVERNIR S.A. v. Brendhan Hight, WIPO Case No. D2009-1240, the panel held that Marchex is a company specialized in the registration of large amounts of domain names based on dictionary words and generic phrases. They denied the transfer of the disputed domain solely on the basis that it was unlikely that he tried to take advantage on other’s trademark as “Porvenir” was a generic term. However, the holding is immaterial in this case, since the disputed domain name Havanna is not a generic term and does not have any meaning other than Complainant’s trademark.

Complainant submits that if a domain name registrant regularly buys and sells large numbers of domain names for advertising or resale, as Respondent does, willful blindness may be a basis for finding registration in bad faith. Sprunk-Jansen A/S v. Chesterton Holdings, WIPO Case No. D2006-1080; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.

Complainant states that in several UDRP decisions, such as Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216, the panel decided that those who register domain names in large numbers for targeted advertising through the use of automated programs and processes, such as Respondent, cannot be willfully blind to the possibility that the names that they are registering will infringe or violate third-party trademark rights. Furthermore, many trademark offices around the world run simple free online trademark databases that can be accessed by anybody at any time. WIPO has developed a portal with information regarding these databases (“www.wipo.int/amc/en/trademark/output.html”).

Complainant submits that any reasonable person could have checked out these databases before registering a domain name. Thus it is possible to conclude that Respondent must have found out that HAVANNA was a recognized trademark. Even if things were not clear to Respondent he could have corroborated this information using the USPTO or OHIM trademark databases (see “www.uspto.gov”).

Complainant submits that UDRP panels have found that there is a developing consensus that domainers who purchase large numbers of domain names for use for pay-per-click advertising or sale must make reasonable good faith efforts to avoid registering domain names that are identical or confusingly similar to third party trademarks in conformity with registrants obligations under paragraph 2 of the Policy. The panel in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 concluded that earlier panels “... have now addressed the application of Paragraph 2 in the context of professional domainers registering large numbers of domain names for the purposes of sale or pay-per-click advertising. It seems to the [p]anel that the developing consensus is that the domainer must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others”. In Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304, the panel found that the respondent was not entitled to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party’s trade marks. If such a domainer paid no attention whatsoever to whether its registrations might be identical to third party trade marks, the domainer’s practice might well support a finding that it has been engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

A.4. Use in Bad Faith

Complainant submits that there are many circumstances from which bad faith by Respondent may be found. The overriding goal of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.

Complainant further submits that there is also enough prima facie evidence that Respondent has registered and it is using the disputed domain name in bad faith. Respondent is intentionally attempting to attract Internet users to <havanna.com> by creating a likelihood of confusion with Complainant’s trademark HAVANNA as to the source, sponsorship, affiliation or endorsement; thus disrupting Complainant’s business. Respondent is also preventing Complainant from reflecting its mark as a domain name and there is some evidence showing that it may be engaged in a pattern of such conduct. Finally, there are some circumstances indicating that Respondent may have registered the domain name with the intention of selling it for valuable consideration.

Complainant submits that a prima facie case that Respondent acquired the disputed domain name with the intention of selling it for valuable consideration can be established.

Complainant states that given the reputation of Complainant’s HAVANNA trademark it’s easy to see that the primary purpose for Respondent registering the disputed domain name was selling, renting or otherwise transferring the disputed domain name to Complainant or to a competitor. When the term “Havanna” is written on the Google search engine, the results turned out add up to 18,700,000. Most importantly, the results shown in the first pages of the conducted search refer exclusively to Complainant and its products as shown in an attached exhibit to the Complaint. Respondent should have indeed explored the possibility of third–party rights in some way before registering the disputed domain name. Effectively, paragraph 2 of the Policy, suggests the registrant act in good faith and make reasonable efforts to avoid the registration of trademarks that are identical or confusingly similar to others. Needless to say, it is likely possible that Respondent must have conducted a Google search and found out about the distinctiveness of the term and its referral to Complainant and its products, before it bought the domain name in the first place. Complainant further states that Respondent registered the disputed domain name <havanna.com> with the intention of selling it later, since, as has been said and proved, the term is not generic; it is rather a fanciful term. By registering the disputed domain name, Respondent has taken into account the added value the term “Havanna” has and the interest involved in the disputed domain name. From this, we can infer that Respondent was and is aware of the value of Complainant’s trademarks and is wishing to take a “piece of the cake”, ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. D2008-1049.

Complainant further contends that there is also enough evidence to demonstrate that Respondent profits from Internet users’ confusion between the disputed domain name and Complainant’s trademark HAVANNA.

Complainant submits that Respondent registered the disputed domain name that is not a generic term, but a unique term invented by the hard work of Complainant to create a world renowned trademark, degraded to be used only to show hyperlinks which point to a wide variety of services and products. This clearly shows Respondent’s intentional registration of a domain name identical to Complainant’s trademark to profit from goodwill associated with Complainant’s HAVANNA trademark.

Complainant states that as held in a similar case by an earlier UDRP panel: “[w]here, [...] they are trademarks, even though they may also be generic in a different context from that for which they are registered and/or used (for example the term ‘apple’ should it be used in <apple.com> with respect to a web site offering fruit, namely apples, is in all likelihood, generic), nevertheless, given the reputation of those marks in another field with which the mark is associated... the intentional registration [...] clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zucarinni, WIPO Case No. D2002-1011. In a similar case a panel held that: “[u]sing a confusingly similar domain name to direct users to unrelated advertisements is classic bad faith.” Humana Inc. v. Domains Ventures, WIPO Case No. D2006-0263.

Complainant states that there are many UDRP panels which have held that, like in this case, to use a domain name with the goodwill associated with a trademark to divert Internet users to various non-competing websites for commercial gain is sufficient evidence of bad faith in registration and use.

For example, in Seiko Epson Corporation and Epson America, Inc. v. Elisabeth Owen, NAF Claim No. 796386, a panel has held that: “... [r]espondent has registered and is using the <ixiaepson.com> domain name, which is confusingly similar to [c]omplainant’s mark, to maintain a web page that displays [c]omplainant’s [...] mark but contains content wholly unrelated to [c]omplainant, including links to third-party websites selling domain names and web hosting services. The [p]anel finds that [r]espondent is taking advantage of the confusing similarity between the disputed domain name and [c]omplainant’s mark in order to profit from the goodwill associated with the mark, and that such registration and use constitutes bad faith...”

Complainant contends that there is sufficient prima facie evidence showing that Respondent is attempting to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trademarks according to Policy, paragraph 4(b)(iv). Respondent’s conduct is also disrupting Complainant’s business since Internet users are attracted to a different Internet location, when they search for Complainant’s website by typing its trademark or name directly on their browser, as established before. As a previous panel found: “Considering the link farm in the website under the domain name in dispute, and the commercial gain for the [r]espondent, and the choice of a domain name substantially similar to the [t]rademark of the [c]omplainant, which similarity would likely create confusion, according to the [c]omplainant’s representation, it may be inferred that [r]espondent has intentionally attempted to attract for commercial gain Internet users to the website of the [r]espondent by the creation of a likelihood of confusion and that the [r]espondent is intentionally attempting to divert Internet users away from [c]omplainant’s website to the link farm of the [r]espondent and these activities constitute evidence of the use of the domain name in dispute in bad faith”. See, Forever 21 v. Matthias Moench, WIPO Case No. D2008-0258. Another panel expressed itself in the same sense. See, Aspen Holdings Inc. v. Christian P. Vandendorpe, WIPO Case No. D2009-1160.

Complainant further contends that there are circumstances indicating that Respondent registered the disputed domain name to prevent Complainant from reflecting its mark in a corresponding domain name. There is also some evidence indicating that Respondent has been engaged in a pattern of such conduct. Policy, paragraph 4(b)(ii). As shown in Exhibit V to the Complaint, Respondent has engaged in a pattern of registering domain names that bear striking resemblance to famous marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy.

As several panels have recognized, it is an often impossible task to prove a negative fact. However, there are circumstances indicating that Respondent may have registered the disputed domain name <havanna.com> within the purposes indicated in Policy, paragraph 4(b)(ii). This is because there are many signs showing that Respondent is engaged in the business of registering trademarks as domain names to exploit “link farms”. A similar decision is found in Humana Inc. v. Domains Ventures, WIPO Case No. D2006-0263.

Complainant states that it is important to bear in mind the holding in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584. In which case the panel found that respondents carrying on an operation of plundering the reputation of well-known marks in the same way as here, constituted “...an egregious abuse of their rights...” that may “...create a likelihood of confusion as to source, sponsorship, affiliation or association, and hence may be specifically covered by the fourth example of bad faith identified in paragraph 4 of the Policy.”

B. Respondent

Respondent submits this dispute relates to the correctly-spelled name of the capital of Cuba in a number of European languages, and a near-mistype of the name of the city of Havana, Cuba in English. As Complainant itself describes, absent Complainant’s intentional manipulation of a search feature on the site, Respondent’s registration and use of the disputed domain name has nothing whatsoever to do with Complainant’s mark or any related goods or services of Complainant. Complainant’s approach here - to “force” certain search results to be displayed, instead of the Cuba related links displayed by Respondent, has been rejected by UDRP panels as probative evidence of intent.

B.1. Identical or Confusingly Similar

Respondent states that Complainant has demonstrated that it owns trademark rights in HAVANNA in Argentina and elsewhere in connection with confectionary products and related goods. Complainant apparently has future plans to expand into other businesses, as described in the Complaint. Complainant’s future aspirations are irrelevant to this Proceeding.

Respondent submits that Complainant takes great pains in the Complaint to emphasize that the term “Havanna” has no meaning other than as a reference to Complainant’s trademark. Respondent states that it is demonstrably untrue that the term “Havanna” has no meaning other than as a reference to Complainant’s trademark.

Respondent states that the term “Havanna” is the proper and correct spelling of the name of the Cuban capital in German, Dutch, Swedish, Norwegian, Danish, Finnish, and Estonian, as well as other languages. Included as an Exhibit to the Response are Google translations of “Havanna” to English from each of these languages, as well as online dictionary entries and native Wikipedia pages in these languages, for the entry “Havanna” – all of which relate to the capital of Cuba.

Respondent further states that the term “Havanna” is also a close typographical variant of the English spelling – “Havana” – and Complainant appears not to understand that while the Spanish spelling uses a “b” instead of a “v”, all of these “Germanic family” languages employ a “v”, and a double “n”. Respondent contends there is no escaping the fact that 82 million Germans, 5 million Danes, 5 million Finns, 9 million Swedes, 4 million Norwegians, along with tens of millions of lazy English keyboard users most definitely and certainly refer to the capital city of Cuba as “Havanna”.

Respondent further states that the landing page associated with the disputed domain name prior to filing the Complaint, as shown in one of Complainant’s exhibit, specifically targeted subject matter relating to Cuba, which Complainant itself admits.

Respondent concludes that Complainant has shown that in Argentina, the trademark HAVANNA relates to certain confectionary products and related goods. Complainant’s efforts to suggest that the term “havanna” is not otherwise a geographic term are contrary to the understanding of more than 100 million Europeans. Complainant’s suggestion that the term “havanna” is “fanciful” is simply and flatly not true in the context of a global Internet and on balance it is probably a safe assumption that more Europeans know basic geography than have ever heard of Complainant’s confectionary and bakery products.

B.2. No Rights or Legitimate Interests in respect of the Domain Name

Respondent, MDNH Inc. (Marchex Domain Name Holdings) is a wholly owned subsidiary of Marchex Inc., a publicly traded U.S. corporation (NASDAQ: MCHX) with a market capitalization of over USD 200 million. Marchex Inc., is identified in the contact data available through the link placed at the bottom of thousands of web pages operated by Respondent for the purpose of monetization of common generic terms and short phrases. The registration data provided for the disputed domain name identifies a technical employee – Respondent Brendan Hight – above the line identifying MDNH Inc. (which is an acronym for Marchex Domain Name Holding). MDNH Inc.’s status as a registrant of many descriptive words and common phrases is extremely well documented in such cases as the following where the Complaint was denied: Multicast Media Networks, LLC v. MDNH, Inc., NAF Claim No. 434268, <multicast.com>; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438,<ifranchise.com>; Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 567039,<teensmart.com>; Advanced Education Systems LLC v. Jay Bean c/o MDNH, Inc., NAF Claim No. 948593,<trainingpros.com>; Modern Beauty Supplies Inc. v. MDNH, Inc. c/o Jay Bean, NAF Claim No. 975334, <modernbeauty.com>; National Patent Services Inc. v. Jay Bean c/o MDNH, Inc., NAF Claim No. 1071869, <nationalpatent.com>; David Robinson v. Brendan, Hight / MDNH Inc., WIPO Case No. D2008-1313, <my-life.com>; Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc ., WIPO Case No. D2008-1946, <frontrunners.com>; Warendorfer Küchen GmbH v. MDNH Inc., WIPO Case No. D2009-1067, <warendorf.com>; Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight, WIPO Case No. D2009-1240, <porvenir.com>; Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580, <clara.com>; Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, WIPO Case No. D2010-0329, <radioitalia.com>.

Respondent submits that as discussed above the term “Havanna” is the proper and correct spelling of the capital of Cuba to over 100 million people in Europe. In the U.S. and United Kingdom of Great Britain and Northern Ireland, it is a common typographical variant. Concerning the use of typographical variants in connection with subject matter relating to the properly spelled term, UDRP panels have found that such use is legitimate, so long as a particular trade or service mark is not targeted by the subject matter intended by the domain registrant, e.g.: Dial-A-Mattress Operating Corp. v Ultimate Search, WIPO Case No. D2001-0764, <matress.com>, where the panel stated “[w]e accept that a consumer who is either correctly or wrongly spelling the word “mattress“ is most likely and obviously looking for a mattress and that [r]espondent should not be unfairly hindered from running a website directed to the sale of mattresses or the supply of information relating thereto. That is under, the [d]omain [n]ame”. See also, Tokheim Sofitam Applications S.A. v. Name Administration Inc. (BVI), WIPO Case No. D2007-1530, <satam.com>, in which the panel found : “ 2) [r]espondent has provided unchallenged evidence that it has engaged in the practice of registering a large number of descriptive religious terms, along with common typographical variations, such as <christianty.com>; 3) The domain name in question can be viewed as a misspelling of the religious term ‘satan’, substituting ‘N’ for ‘M’ as they are adjacent letters on the keyboard; 4) There are no advertising or promotions on the [r]espondent’s existing website that betray any connection to [c]omplainant’s business or products. In these circumstances, the fact that many of the website links appear to be of a commercial nature unrelated to the asserted religious connection does not alter the [p]anel’s above conclusion. … Finally, the [p]anel notes that the [r]espondent has apparently been using the domain name for more than five years without any objection from the [c]omplainant. As such, it is difficult to attribute any weight to [c]omplainant’s allegations that its business has been disrupted by the [r]espondent’s registration and use of the domain name.”

Respondent states as noted in the Warendorfer Küchen, supra, Respondent does indeed maintain and utilize a portfolio of geographically relevant domain names for advertising subject matter relating to such geographic locations, typically travel related. While the disputed domain name in this case is the correct spelling of the capital in Cuba in a range of languages, Respondent also maintains common spelling variations of descriptive terms, such as <kuba.com> which is the German word for “Cuba”, used in association with a website operated by Respondent in the same manner as the “www.havanna.com” website which provides advertising links relevant to Cuba and travel and lodging subject matter.

Respondent agrees with Complainant’s statement that Respondent acquired the disputed domain name upon Respondent’s acquisition of Ultimate Search Inc., and has been using the disputed domain name, as shown in Complainant’s exhibit of the unaltered web page to provide sponsored links relating to Cuba in connection with the properly-spelled name of that city in a vast swath of languages, and a close variant spelling in English.

Respondent submits that the term “havanna” is indeed non-distinctive or generic to over more than 100 million Europeans and is being used for its descriptive character as a domain name linked to a home page displaying sponsored links related to travel to Cuba including flight and hotel links in Cuba and the capital city Havana. See, Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 567039, <teensmart.com>, where the panel found: “[t]he concept of hosting a web site with paid links to relevant sites can be a legitimate interest, and the teen-oriented nature of at least the majority of the links on the site supports [r]espondent’s assertion that its site is a ‘mart’ for teen users. It is irrelevant that the site consists largely of paid advertising rather than original content … Because there is some reasonable connection between [r]espondent’s use and the [d]omain [n]ame and for the other reasons set out above, [c]omplainant has not succeeded in proving that [r]espondent lacks any rights or legitimate interests in the [d]omain [n]ame.”

Respondent vigorously denies Complainant’s allegation that the travel links to Cuba and Havana on the landing page associated with the disputed domain name are there to create a false impression. Respondent states there is nothing false about it. Respondent is well known for registration and use of non-distinctive, generic, and descriptive terms as domain names, which are used in connection with a paid advertising search system. Respondent states that Complainant’s allegation here is in flat contradiction to the repeated findings which have been made under the Policy, in relation to Respondent’s use of non-distinctive or generic terms in a descriptive manner in numerous cases listed above. Respondent’s well-established practice has repeatedly been found legitimate and otherwise bona fide.

Respondent states that Complainant’s evidence of web pages generated by searching for the words “alfajor” or “chocolate” on the website “www.havanna.com” which disclose other hyperlinks pointing to other websites offering chocolate related products have no probative value. Respondent submits that search engines are programmed to respond to the subject matter of the search request. Respondent states that previous UDRP panels have found such evidence to be of limited or no evidential value in assessing respondent’s motivation and intent in its use of the disputed domain name. See A. D. Banker & Company v. Domain Invest, WIPO Case No. D2010-1044, <adbankers.com>, where the panel stated: “[t]he [p]anel accepts the [r]espondent’s contention that the pages brought forward to support these contentions are not pages that are taken from the landing page operating for the [d]omain [n]ame, but instead appear to be pages generated as a result of specific searches undertaken from that page. The link displayed may well link to competitors to the [c]omplainant’s business. However, if these links were generated not because of any association with the [d]omain [n]ame, but simply because of the nature of the search request that the [c]omplainant has independently chosen, then that is of limited or no evidential value when it comes to assessing the [r]espondent motivations for registration.

B.3. Registration in Bad Faith

Respondent states that prior to receipt of the Complaint in this Proceeding, Respondent had never heard of Complainant. However, Complainant’s claim in connection with confectionary products would not have deterred Respondent from using this geographic term in connection with the targeted subject matter, even if Respondent had known, because what Respondent is doing with the domain name is utterly lawful and does not infringe Complainant’s trade or service marks in any jurisdiction whatsoever.

Respondent states that the “bad faith” criterion is an element of specific intent directed toward Complainant and its trademark rights, at the time the disputed domain name was registered. The “bad faith” inquiry is an element of intent, and is directed at the question of “Why did Respondent register the domain name?” and whether that motivation arose from a willful intent to exploit trademark rights known to belong to Complainant at the date of registration of the disputed domain name.

Respondent further submits that the bad faith allegation of the Complaint essentially repeats the demonstrably false statement that “Havanna” is not a geographic term. It is a geographic term in several major languages, and Complainant cannot seriously deny that fact. Complainant also cannot deny that absent Complainant’s own manipulations, Respondent has targeted the disputed domain name to goods and services which relate to travel, Cuba, and occasionally products associated with Cuba. This is precisely why the generic spelling of “Havanna” in several European languages is significant and valuable to Respondent’s use of the domain name. In recent years, more than 114,000 Germans have visited Cuba annually.

Respondent states that Complainant suggests that a Google search would have shown Complainant to be the “first link” in a search on “Havanna”. Complainant provides utterly no evidence this was true in 2005. Moreover, Google searches themselves are localized. Attached as an Exhibit to the Response is a print-out of a present Google search, as conducted from Germany. The “first link” is to a map of “Havanna, Kuba”. Complainant appears nowhere in the first page of search results, and Google further serves up travel advertisements. As noted, in addition to “www.havanna.com”, the Respondent further maintains “www.kuba.com”.

B.4. Use in Bad Faith

Respondent states that the bad faith allegation of Complainant fails as Respondent intended to use and uses the term “havanna” which is a generic term in good faith in a descriptive manner in association with a landing page having links relating to travel to Havana and Cuba, as more fully described in the immediately preceding paragraphs.

Respondent denies that it obtained the disputed domain name “primarily for the purpose” of selling the disputed domain name to Complainant or a competitor for valuable consideration. Complainant relies on a link which states that Respondent would consider selling the disputed domain name to a willing purchaser. Respondent states there is no question that the disputed domain name has value as a commodity for reasons entirely unrelated to Complainant’s mark, or any purpose competitive with Complainant. The domain name is a revenue-earning asset, and it may well be that, for example, a German travel agency would value it more highly than Respondent for the exclusive use of such a travel agency. If such a business desires to make an offer to purchase the domain name, they may do so, and such a transaction would be entirely lawful, and not to the detriment of any legal interest of Complainant. Respondent asks why would it not consider selling the domain name for a price in excess of Respondent’s projected earnings of the domain name, and the inherent value of the name as the generic indication of the capital of Cuba in a variety of languages? Preferably, it would be sold as a set along with <kuba.com>, which would be highly valuable in connection with German travel booking.

Respondent states Complainant’s premise that such a sale or general offer is evidence of bad faith rests entirely on Complainant’s unsupportable foundation that the word is not a geographic term. Should travel and trade between the U.S. and Cuba be renewed Cuba will be positioned for tourist development on a much greater scale due to its proximity to the U.S. and re-investment by the influential Cuban community in the U.S., which will attract yet further international tourism. This is a domain name which legitimately holds substantial commercial potential having nothing whatsoever to do with Complainant’s business at all. Respondent is certainly not alone in this belief, as evidenced by the use of “www.havanna.nl” in the Dutch ccTLD by an unrelated registrant for the same purpose – i.e. the advertisement of travel related commercial links and general offer for sale of the domain name.

Respondent states that the general offer for sale of a domain name having a generic, “dictionary word” meaning, is not probative of a “primary purpose” to sell the disputed domain name to a claimant having an incidentally corresponding trade or service mark for a secondary meaning in the underlying word. It is long established that, absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark, the general offer to sell commercially valuable “dictionary word” names is a legitimate business practice. See, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, <allocation.com>:

“Respondent has registered over 400 domain names, all of which contain or are composed of common words or short phrases from the English language or misspellings of such words. In trademark terms, many of these domain names would be considered descriptive of certain goods or services, or generic. Registration of descriptive or generic terms as a domain name is possible under the .com TLD. As the commercial value of such domain names has increased, brokers like [r]espondent have seized the opportunity to sell such domain names to the highest bidder. In principle, such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself).

The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while ‘Allocation’ may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany.

Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.”

Respondent submits that its willingness to receive offers to sell a name of a popular European travel destination does not demonstrate a “primary purpose” for Respondent having held registration of the disputed domain name for several years. If so, Respondent is a remarkably slow salesman.

In the Complaint, Complainant alleged that Respondent registered the disputed domain name to prevent it from reflecting it’s trademark HAVANNA in a corresponding domain name, and submitted that there is some evidence that Respondent has been engaged in a pattern of such conduct and refers to other domain names registered to Respondent. Respondent states that it is true that Respondent occasionally purchases bulk portfolios of domain names, and then must manually screen such purchases to identify potential issues, and this is a continuous process. Respondent states that this dispute, however, relates to Respondent’s registration and use of the disputed domain name <havanna.com> at issue in this Proceeding. In support of its position Respondent cites a UDRP case in which the panel stated that even if it were a pattern, and even if Respondent was found to be a cybersquatter in another case, the question in this case is whether Respondent has cybersquatted the domain name in issue. See, Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445, <displaydepot.com>: “[a]lthough some of the domain names registered by [r]espondent do raise questions, a bare list of domain names without evidence of how they are being used and whether they reflect bad faith, and a single adverse decision, do not make a pattern. Moreover, even if it were a pattern, and even if [r]espondent was found to have been a cybersquatter in another case, the question in this case is whether [r]espondent has cybersquatted this [d]omain [n]ame. See e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369, concurring opinion (February 5, 2001) (decisions against same respondent in other actions is not necessarily relevant because ‘[e]ven a blind pig finds an acorn sometimes’). Again, Respondent’s credible assertion that it lacked any knowledge of Complainant and its mark at the time of registration is fatal to this claim.

Respondent states that Complainant has failed to demonstrate that Respondent’s registration and use of the disputed domain name in association with topics relating to Cuba, travel, and related goods and services, infringes or violates any lawful right which may be legitimately claimed by Complainant under the rights conferred by its various trade and service marks. Complainant does not own rights in the term “Havanna” used by millions in Europe, and mis-typed as such in the English speaking world, as a reference to the capital of that island nation and emerging travel destination.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel 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.”

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of the trademark HAVANNA registered in the United States Patent and Trademarks Office on the Principal register on December 7, 1982 as U.S. trademark registration no. 1219322 in relation to biscuits. The application for the trademark HAVANNA in the U.S. was filed on March 26, 1976 based on Argentine Registration No. 669,995 registered February 27, 1970. There is no first use date in the U.S. or first use date in commerce in the U.S. associated with U.S. trademark Registration No. 1219322.

The disputed domain name <havanna.com> was created on September 26, 2000. The disputed domain name was acquired by Marchex, Inc. the parent of Respondent Mdnh Inc sometime in 2005. Respondent Brendhan Hight is an information technology employee of Mdnh Inc. Complainant’s United States Trademark Registration No. 1219322 for the trademark HAVANNA was registered in the U.S. decades before Respondent acquired the disputed domain name in 2005.

Respondent states that the word “havanna” is the name of the capital city of Cuba in German, Dutch, Swedish, Norwegian, and other European Languages and is therefore presumably not entitled to protection. The Panel has no authority to question the validity of the registration granted by the United States Patent and Trademarks Office following examination and publication for opposition and accepts Complainant’s U.S. trademark registration for HAVANNA.

The disputed domain name <havanna.com> incorporates the entirety of Complainant’s HAVANNA trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates complainant’s trademark in its entirety. See, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068, finding that the domain name <gayebay.com> incorporated complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. Previous UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to complainant’s trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to complainant’s trademark.

The Panel finds that Complainant has proven that the disputed domain name <havanna.com> comprised of the term “havanna” and the top level domain descriptor “.com” is confusingly similar to Complainant’s registered trademark HAVANNA .

B. Rights or Legitimate Interests

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

Complainant argues that it is the owner of the trademark HAVANNA which is known all over the world in relation to confections. Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods and services, but is using it to trade on Complainant’s goodwill associated with its trademark HAVANNA.

Respondent argues that the term “havanna” in the disputed domain name <havanna.com> is a generic or descriptive word for the name of the capital of Cuba in the languages of Germany, the Netherlands, Sweden, Norway, etc. The landing page associated with the disputed domain name is an advertising page composed of links to travel, hotel and related links of interest to persons who are considering or planning to visit the city of Havana or Cuba. Respondent argues that the generic use of the term “havanna” in association with links to the City of Havana and Cuba is a legitimate use of the term in good faith to attract Europeans considering a trip to Havana or Cuba who conduct an Internet search for “havanna”. In recent years over 114,000 Germans visited Cuba annually.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at paragraph 2.2., states “[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.” (referring to Allocation Network GmBH v. Steve Gregory, WIPO Case No. D2000-0016; Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-0270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005; and Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744).

There is no evidence on the landing page associated with the disputed domain name to support a finding that Respondent is attempting to trade on Complainant’s goodwill associated with its trademark HAVANNA which are used in association with confections and cafes. The Panel notes that it has to base this conclusion on the evidence provided by Complainant in the form of a print out of the landing page, since (i) the current website as of the date of this decision under the disputed domain name has no links at all; (ii) there is no history of the website under archive.org, because it was blocked by robots.txt and (iii) there is no history of the website under Domain Tools. The Panel does find this complete ‘cleaning’ of the history of the disputed domain name troublesome, but finds that under the circumstances of this case and in view of the evidence before it, this is in itself insufficient as a basis for finding that Respondent has no right or legitimate interest, or that such ‘cleaning’ was necessarily undertaken here with bad faith intent.

The evidence submitted by Complainant in this case does not support a finding that Complainant’s HAVANNA trademark was a well-known trademark outside Argentina. Complainant and its predecessor have been in the business of baking and selling confections in Argentina for over 70 years. Over the years sales extended to other South American countries. Complainant did not file evidence of annual corporate or national sales figures of HAVANNA confections either before or after 2005. No proof showing annual advertising budgets associated with it’s trademark HAVANNA were submitted. No brand survey evidence was submitted to the Panel. Complainant submitted proof that it commenced using the trademark HAVANNA in association with cafes offering it’s HAVANNA products in 1995. Currently there are 178 such cafes in Argentina and 68 cafes located in other countries including Chile, Brazil, Paraguay, Bolivia, Costa Rica, the Bolivarian Republic of Venezuela, Peru, Mexico and Spain. There is no evidence showing how many HAVANNA cafes were in operation prior to 2005.

Complainant has not established any sales of HAVANNA confections in the United States of America where Respondent is located prior to 2005 when Respondent acquired the disputed domain name. Respondent registered the trademark HAVANNA for “biscuits” well prior to 2005. However, the U.S. trademark application was not based on use or proposed use in the U.S. and there is no evidence that Complainant ever used the trademark in the U.S. Complainant filed three applications for or including HAVANNA in the United States in 2005. One application for HAVANNA in relation to Cafes, cafeterias, restaurants was filed on the basis of a registration in Argentina while the two other applications filed in the United States in 2005 were filed on the basis of proposed use in United States. Complainant states that in the last five years HAVANNA products have been sold in the U.S. for an amount of approximately USD 350,000, but provides no evidence thereof, nor of the amount of sales conducted prior to Respondent’s acquisition of the disputed domain name.

Complainant argues that Respondent’s use of the disputed domain name prior to the dispute is not connected to a bona fide offering of goods or services since (i) Havanna has no generic meaning and (ii) the website has no specific content related to Cuba or the city of Havana. However, Complainant does not dispute (and Respondent has provided evidence) that the word “havanna” is a generic word for the name of the capital of Cuba in the languages of, inter alia, Germany, Sweden and Norway. Furthermore, Complainant recognizes that the parking page under the disputed domain name merely displays sponsored links related to flights to Cuba, hotels in Cuba, vacations in Cuba and links relating to the City of Havana, the capital city of Cuba. The fact that this is merely a parking page that does not contain specific content (other than the links) to Cuba and the city of Havana makes this no different. Previous UDRP panels have found that a landing page associated with a generic domain name incorporating advertising links relating to the generic subject matter can be a legitimate interest. See, Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 567039, <teensmart.com>, where the panel found: “[t]he concept of hosting a web site with paid links to relevant sites can be a legitimate interest, and the teen-oriented nature of at least the majority of the links on the site supports [r]espondent’s assertion that its site is a ‘mart’ for teen users. It is irrelevant that the site consists largely of paid advertising rather than original content … Because there is some reasonable connection between [r]espondent’s use and the [d]omain [n]ame and for the other reasons set out above, [c]omplainant has not succeeded in proving that [r]espondent lacks any rights or legitimate interests in the [d]omain [n]ame.”

The Panel finds that generic use of the disputed domain name in association with links to the City of Havana and Cuba is a legitimate interest.

Complainant argues that a domainer operating a domain name linked to a link farm parking page to generate income through PPC advertisements can per se not have a right or legitimate interest in the domain name. Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill. See, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 “[a]lthough PPC landing pages appear to provide little societal benefit, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, that does not mean that they automatically violate the Policy… when the links on the PPC landing page ‘are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. V. In Knot we Trust Ltd, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same)’”

However, that is not the case here, since the web page under <havanna.com> does not on the present record appear to have links based on the value of Complainant’s trademark, but only on the generic meaning of Havana as the capital of Cuba.

On the basis of the evidence submitted by the parties and based on a balance of probabilities the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel having concluded that Complainant did not prove that Respondent has no rights or legitimate interests in respect of the disputed domain name, it will not proceed with findings under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Ross Carson
Presiding Panelist

Pablo A. Palazzi
Panelist

Wolter Wefers Bettink
Panelist

Dated: November 26, 2010

 

Explore WIPO