Miller Brewing Company v. The Miller Family
Claim Number: FA0201000104177
The Complainant is Miller Brewing Company, Milwaukee, WI (“Complainant”) represented by David R. Cross, of Quarles & Brady, LLP. The Respondent is The Miller Family, San Carlos, CA (“Respondent”) represented by Stanley G. Hilton, of Law Offices of Stanley G. Hilton.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <millertime.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 30, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.
On January 31, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <millertime.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on March 18, 2002.
On April 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C., as Panelist.
Complainant filed an additional submission on March 22, 2002. It was filed in a timely manner and I have considered it. Respondent filed an additional submission on March 27, 2002. It was filed in a timely manner, and I have considered it.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant owns U.S. Trademark Registration 2,446,641 for MILLER TIME for beer. Complainant also asserts common law trademark rights in MILLER TIME for beer because of extensive use of the phrase MILLER TIME in connection with its beer since at least 1972. During that time, Complainant has owned a number of trademark registrations containing the words MILLER TIME. Complainant has pending trademark applications for at least six other trademarks containing the words MILLER TIME as part of the trademark.
Complainant says MILLER TIME is a distinct phrase that identifies the Complainant as a source for beer. The MILLER TIME element has been a constant theme in Complainant’s advertising and promotions. Complainant has spent many millions of dollars promoting its beers with the MILLER TIME trademark in point of sale, print and broadcast advertisements, along with special promotions including prominent placement of MILLER TIME on the hood or trunk panel of Complainant sponsored NASCAR racing cars for nearly twenty years.
Complainant contends that MILLER TIME is an inherently distinctive phrase when applied to beer. Although the MILLER surname is not inherently distinctive, the mark in question is MILLER TIME, a unique phrase transcending the common surname. The inherently distinctive nature of the mark is confirmed by the current federal registration for MILLER TIME noted above. Complainant is exclusive owner and licensor of the mark.
Complainant contends that the disputed domain name <millertime.com> is confusingly similar to Complainant’s established trademark.
Complaint further contends that Respondent has no rights or legitimate interests to the domain name. While Respondent’s surname is MILLER, the domain name at issue is MILLER TIME which is Respondent’s famous trademark. Respondent is not engaged in any business where the word TIME would have some relevance. Instead, Respondent has consistently used the domain name as a promotion for its educational consulting business and as a family web site featuring the accomplishments of family members in the computer field.
Complainant is not aware of any manner in which Respondent has been commonly known by the name MILLER TIME. Respondent has no commercial relationship with Complainant and has not received permission from Complainant at any time to use the MILLER TIME trademark in any way. Due to the fame of the MILLER TIME trademark, there can be no doubt that Respondent was aware of Complainant’s trademark rights at the time <millertime.com> was registered in 1995.
On the question of bad faith, Complainant asserts that although Respondent’s surname is MILLER, Respondent is not commonly known as MILLER TIME and Respondent provides no explanation as to why the addition of TIME to Respondent’s name is necessary or legitimate. In consequence, Complainant argues Respondent does not have rights or legitimate interests in the name. Complainant further contends that MILLER TIME is so famous and well-advertised that Respondents are presumed not to be commonly known by it.
Respondent has used the name to attract Internet traffic to a site promoting its own business. Complainant contends this is not a bona fide offering of goods pursuant to Policy 4(c)(i) nor a legitimate noncommercial fair use pursuant to Policy 4(c)(iii).
As early as 1997, Respondent created a web site found at www.millertime.com. This site featured pages about each family member and their accomplishments, including Chris Miller’s web site consulting business, Greg Miller’s children’s software company, and Mark Miller’s extensive professional qualifications in computers and technology. Complainant wrote to Respondent at that time to advise of Complainant’s trademark rights, but received no response.
At some time prior to October 24, 2001, visitors to http://millertime.com began arriving at the web site of the Miller Institute for Learning with Technology. This web page featured information about the Miller Institute, including the promotion of the Institute’s consulting services, employment opportunities and upcoming seminars.
Respondent made further commercial use of the <millertime.com> domain name by offering it for sale. At least as early as November 1, 2001, the <millertime.com> domain name was listed with GreatDomains.com, a popular domain name auction and resale site operated by Verisign, Inc. The listing proposes a sale of the domain name only, as Respondent had another domain name to which the content would be relocated.
Complainant responded to these commercial uses of the <millertime.com> domain name, demanding that the commercial use stop and that the domain name be transferred to Complainant.
Complainant asserts that Respondent registered and is using the domain name in bad faith. In this regard, Complainant says its MILLER TIME mark is so well known and well advertised that it can be inferred Respondent knew of the mark at the time of Registration. Furthermore, the domain name contains Complainant’s mark in its entirety, the mark is a coined word, well-known and in use before Respondent’s registration of the domain name, and Respondent has failed to allege any good faith basis for use of the domain name.
Respondent has offered the disputed domain name for sale at an auction site. Complainant asserts that this demonstrates that the name was registered in bad faith pursuant to Policy 4(b)(i).
Respondent has used the disputed domain name to advertise the businesses of family members, including a website consulting business, a children’s software company and professional qualifications in computers and technology. Complainant asserts that the use of a domain name identical to Complainant’s well-known mark to advertise Respondent’s own business suggests opportunistic bad faith pursuant to Policy 4(b)(iv).
Respondent contends that Complainant does not have exclusive rights to use MILLER because that term is a surname that clearly predates Complainant’s beer company and TIME is merely a generic word in the public domain. Therefore, Respondent asserts that Complainant does not have exclusive rights to MILLER TIME.
Respondent further contends that there is no consumer confusion between the Complainant and the disputed domain name, which is connected to a web site that does not sell beer. Therefore, Respondent should be permitted to keep the domain name.
Respondent asserts that Complainant has allowed MILLER TIME to enter into the public domain by failure to aggressively protect what it considers to be its exclusive rights to the trademark. Therefore, Complainant does not currently have exclusive rights to MILLER TIME.
Respondent contends that it does not commercially benefit from the disputed domain name, and as a result, has rights and legitimate interests in the domain name pursuant to Policy 4(c)(iii). Furthermore, Respondent contends that a family information site is a legitimate non-commercial use of the domain name.
Respondent contends that Complainant has allowed MILLER TIME to enter the public domain by failure to credibly and aggressively protect its right to use the mark. As a result, Respondent may use a domain name incorporating the MILLER TIME mark.
Respondent also contends that because Complainant did not file a claim against Respondent for almost seven years, Complainant acquiesced in Respondent’s use of the disputed domain name.
With respect to the allegation of bad faith, Respondent contends that because Complainant did not file a claim against Respondent for seven years, that indicates Complainant does not believe that Respondent intended to divert customers or Internet users by trading on Complainant’s good will.
Respondent contends that it has never sought to sell the disputed domain name, and has refused to sell it to Complainant each time it has made an offer to purchase it. Respondent further contends that its listing of the disputed domain name at an auction site was due to Respondent’s “testing of the database of the service that posted names for sale”, and that Respondent has no real intention of selling the domain name at issue.
Respondent contends that because Respondent registered the disputed domain name in 1995 and the Anti-Cybersquatting Consumer Protection Act (ACPA) was passed in 1999, the ACPA does not apply to Respondent retroactively because all ex post facto laws are unconstitutional. Furthermore, it does not apply to Respondent because it did not register the disputed domain name in bad faith.
Complainant contends that the equitable doctrines of laches, waiver and acquiescence do not apply to Complainant because Complainant acted promptly when it had verifiable proof of Respondent’s commercial use of the disputed domain name. Complainant says it could not waive remedies (i.e., under the UDRP) that were not available to it. Furthermore, Complainant never granted any rights to Respondent to use the trademark so the doctrine of acquiescence does not apply.
In Complainant’s additional submission, it contends that Respondent voluntarily subjected itself to the UDRP as a contractual obligation when it registered and maintained the disputed domain name. Because the policy was not created through federal or state action, nor is it enforced against registrants of domain names by a governmental body, it follows that this private action does not raise constitutional ex post facto concerns.
With respect to acquiescence, Respondent says Complainant knew of Respondent’s use of the domain name as early as 1997 and did nothing until 2002.
Respondent says that if it intended to sell domain names to Complainant, it would have purchased many more infringing domain names in addition to the one at issue.
I have found as follows:
1. The ACPA has no application to this case. The jurisdiction to make a decision with respect to the disputed domain name is found in the UDRP. Respondent, having registered the domain name, is bound on a contractual basis by the provisions of the ICANN Rules, including the UDRP.
2. The disputed domain name is confusingly similar to Complainant’s MILLER TIME trademark.
3. Respondent has no rights or legitimate interest in the disputed domain name.
4. Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established registered and common law rights in the trademark MILLER TIME. Complainant has a registered trade mark, has had many other registered trademarks, has at least six trademark applications pending, is the only party with applications pending for MILLER TIME, and has used MILLER TIME in connection with its beer business since at least 1972. The fact that the mark contains the surname MILLER does not preclude Complainant from asserting its trademark rights, and even though the word TIME is a generic word, the combination of the words MILLER and TIME creates the distinctive MILLER TIME mark for which Complainant can claim and has claimed rights.
Respondent’s domain name <millertime.com> is virtually identical to Complainant’s mark. The first element under the Policy is met.
Rights or Legitimate Interests
Under paragraph 4(c) if the Policy”
“…Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(1)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The interference to be drawn from all the evidence is that at the time Respondent registered the domain name, Respondent was well aware of Complainant’s MILLER TIME trademark. Respondent says that at the time he registered the domain name, Complainant did not have any web sites using the word MILLER or the word TIME. The fact Respondent knows this to have been the case, demonstrates that Respondent knew of Complainant’s trademark. The further inference to be drawn from this is that Respondent chose the disputed domain name because of Complainant’s trademark.
Respondent has used the domain name since it was registered. Respondent has used the domain name to support a web site that contains information about the Miller family. However, while Respondent is now using the web site arguably only for family information, at various times Respondent has used the domain name in connection with goods and services, specifically a website consulting business, a children’s software company and professional qualifications in computers and technology. At the time Complainant discovered the commercial use, the <millertime.com> web site was linked to the Miller Institute of Learning and Technology, a web page featuring information about the Miller Institute, including promotion of consulting services, employment opportunities and upcoming seminars. The question is whether the domain name was used in connection with a bona fide offering of goods or services. Respondent, knew of Complainant’s famous mark and has used that famous mark to attract Internet users to its web site, clearly for commercial gain. Any offering of goods and services in connection with the domain name in these circumstances is not a bona fide offering.
There is no evidence whatsoever that Respondent is or has ever been commonly known by the domain name.
Respondent contends that a family information web site is a legitimate non-commercial use. I might agree with Respondent if that was all that had occurred in this case. I cannot, however, accept Respondent’s assertion that it is a purely personal family web site. Respondent admits use of the web site for offering educational technology services and sale of computer software. Respondent has from time to time used the domain name in connection with these commercial activities as well as promotion of the business interests of family members. Furthermore, I have no doubt that Respondent used the domain name specifically so that it would attract to its site Internet traffic intended for Complainant, thereby permitting Respondent to benefit from the good will associated with Complainant’s mark.
In the circumstances, Respondent has not established rights or legitimate interest in the domain name.
Registration and Use in Bad Faith
With respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location
With respect to the four criteria enumerated therein, the Panel finds as follows:
1. On the evidence before me, I cannot conclude that Respondent acquired the domain name for purposes of selling it. Indeed, Respondent’s purpose was to use the domain name for its own purposes.
2. There is no pattern of conduct on the part of Respondent indicating an intent to prevent Complainant from reflecting its mark in a domain name.
3. It does not appear that Respondent intended to disrupt Complainant’s business.
4. Notwithstanding that Respondent now says it uses and only intends to use the domain name for a non-commercial family web site, there is no question that Respondent has attempted to attract Internet users to its site for commercial gain. Use of Complainant’s well-known trademark in the domain name does create the likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. While Respondent argues that putting up a link to Complainant’s web site alleviates the confusion, it could very well have the opposite result. In other words, Internet users visiting Respondent’s web site and seeing the link to Complainant’s site, may well conclude there is an affiliation between Respondent and Complainant. I agree with Complainant that the use of the domain name identical to Complainant’s well-known mark to advertise Respondent’s own businesses suggests opportunistic bad faith pursuant to Policy 4(b)(iv). Therefore, on this point, Complainant has established bad faith.
On our reading of the Policy, as well, the four cited examples are situations where, if the evidence exists, the Panel must find bad faith. This does not, however, preclude the Panel finding that other circumstances amount to bad faith in a particular case. The paragraph says, "in particular but without limitation". In reviewing all the evidence in this case, I find that there is additional evidence of bad faith. In this case, the domain name contains the Complainant’s mark in its entirety, the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and the Respondent has failed to allege any good faith basis for use of the domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000). Respondent’s only argument is that when the domain name was registered Complainant was not using MILLER or TIME in connection with any web site. This, of course, begs the question of Respondent’s use of Complainant’s trademark with knowledge of the mark and intent to benefit from the goodwill associated with the mark.
This leaves the question of Respondent’s having offered the domain name for sale at an auction site. While I doubt the veracity of Respondent’s claim that when he placed the domain name for sale he was merely testing out how the auction site worked, in light of my findings of bad faith set out above, I need not address this issue.
Before leaving the case, I must also deal with Respondent’s argument that Complainant acquiesced in Respondent’s use of the domain name and therefore should not be permitted to challenge Respondent’s use of the name now. Respondent registered the domain name in 1995. Complainant first became aware of Respondent’s use of the disputed domain name in 1997. On April 30, 1997, Complainant’s Assistant General Counsel wrote to Mark L. Miller objecting to the use of Complainant’s MILLER TIME trademark. Respondent continued to use the mark. Complainant’s next communications with Respondent were in November 2001, when, with knowledge of the availability of the UDRP, Complainant contacted Respondent because Complainant had just discovered that <millertime.com> displayed an advertisement for the Miller Institute of Learning and Technology and that Respondent was offering <millertime.com> for sale through the GreatDomains.com service.
While I have some reservations about whether laches or acquiescence should apply in UDRP cases, on the facts of this case I would not apply those doctrines in any event. Complainant has demonstrated that it did attempt to take steps to stop Respondent’s use of Complainant’s mark and that Complainant did not sit idly by. In 1997, when there was no remedy available, Complainant put on record its claim to its rights in the mark. When a remedy became available and Complainant discovered Respondent using the domain name for commercial purposes, Complainant acted promptly by making a demand and then followed up with these proceedings.
For the reasons set out above, I find for the Complainant, and I order that the disputed domain name <millertime.com> be transferred to the Complainant, Miller Brewing Company.
Anne M. Wallace, Q.C., Panelist
Dated: April 15, 2002
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