'Bigot.com' does not infringe BIGOTT mark, rules panel

International

In CA Cigarrera Bigott Sucesores v Ultimate Search, a three-member World Intellectual Property Organization (WIPO) panel has refused to transfer 'bigot.com' to the complainant. The panel held that, although the complainant has rights in the mark BIGOTT, the registrant has a legitimate interest in the domain name and did not register it in bad faith.

CA Cigarrera Bigott Sucesores (Bigott), a Venezuelan tobacco company trading under the name 'Bigott', is well known throughout South America and owns several Venezuelan registered trademarks for BIGOTT. Ultimate Search, a domain name developer based in Hong Kong, registered 'bigot.com' with the intention of using it as a link to various pornographic websites. Bigott filed a complaint with WIPO, arguing that pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy:

  • the domain name is confusingly similar to its BIGOTT mark

  • Ultimate Search has no legitimate interest in 'bigot.com'; and

  • Ultimate Search had registered and is using the domain in bad faith.

Ultimate Search refuted Bigott's arguments, contending that the term 'bigot' is a common English word indicating a narrow-minded and intolerant person. English speaking individuals, argued Ultimate Search, would not confuse the term with Bigott's trademark. It argued that it has a legitimate right to use the domain name because (i) it is using it to make a bona fide offer of services by linking the domain name to pornographic websites; and (ii) the term 'bigot' and pornographic material are related, since they are both inherently offensive and distasteful.

The panel rejected most of Ultimate Search's arguments as untenable but refused to order the transfer of the domain name. It reasoned that there is a likelihood of confusion because the relevant market for Bigott's tobacco products speaks Spanish and may not be familiar with the term 'bigot'. The panel rejected the assertion that the term 'bigot' and pornographic material are somehow linked. However, it held that Ultimate Search does have a legitimate interest in the domain name because the linking services it offers are bona fide. It also noted that the companies are located in different regions of the world and while Bigott is well known in South America, Ultimate Search's domain name appears to be aimed at English speakers. Therefore, it concluded that Ultimate Search had not registered or used the domain name in bad faith.

Jessica L Rothstein, Goodwin Procter LLP, New York

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