Skyy Spirits LLC v. Stanislaw Krzenszczynski
Claim Number: FA0808001220829
Complainant is Skyy Spirits LLC (“Complainant”), represented by James
W. Kinnear, of Jeffer, Mangels, Butler & Marmaro LLP,
The domain name at issue is <skyyvodkas.com>, registered with Cronon Ag
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
13, 2008, Cronon Ag Berlin, Niederlassung
Regensburg confirmed by e-mail to the National Arbitration Forum that
domain name is registered with Cronon Ag
On October 22, 2008, a German Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 2008 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skyyvodkas.com> domain name is confusingly similar to Complainant’s SKYY VODKA mark.
2. Respondent does not have any rights or legitimate interests in the <skyyvodkas.com> domain name.
3. Respondent registered and used the <skyyvodkas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skyy Spirits LLC, sells vodka under the SKYY VODKA mark (Reg. No. 1,571,223 issued Dec. 12, 1989), which was registered with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed <skyyvodkas.com> domain name on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s registration of the SKYY
VODKA mark with the USPTO confers upon Complainant sufficient rights in the
mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum
Respondent’s disputed domain name incorporates Complainant’s entire SKYY VODKA mark, while adding an “s” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these modifications do not adequately distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Keystone Publ’g, Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant must set forth a sufficient prima facie case supporting this assertion, before Respondent receives the burden of proving its rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
A complainant must set forth evidence demonstrating that a respondent is using the disputed domain name in a way that infringes upon its rights as established in a registered trademark or through established common law rights. To prove a prima facie case indicating that a respondent lacks rights and legitimate interests, a complainant may submit evidence under Policy ¶¶ 4(c)(i) and (iii), in order to demonstrate that the respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use, respectively.
In this case, Complainant has made an allegation that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” However, Complainant has failed to offer any evidence, such as an Internet screenshot indicating where the disputed domain name leads, that would corroborate a use or non-use. Because it is Complainant’s burden to set forth its prima facie case in its submission, and because Complainant has not done do, the Panel has no choice but to find that Complainant has failed to make its prima facie case under Policy ¶ 4(a)(ii). See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”); see also Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that the complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where the complainant neglected to state how the respondent used the disputed domain name in the complaint).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
While Complainant has alleged that Respondent has registered
the disputed domain name in bad faith, there is no allegation or supplied
evidence demonstrating the use or non-use of the disputed domain name. Thus, the Panel is unable to make a finding
of bad faith on the merits of the case.
Due to this evidentiary deficiency, the Panel cannot make a finding
regarding bad faith registration and use under Policy ¶ 4(a)(iii). See Ming v. Evergreen Sports, Inc.,
FA 154140 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice to refiling the Complainant.
Bruce E. Meyerson, Panelist
Dated: November 26, 2008
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