Skyy Spirits LLC v. Stanislaw Krzenszczynski
Claim Number: FA0903001254423
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
14, 2009, Cronon Ag Berlin, Niederlassung
Regensburg confirmed by e-mail to the National Arbitration Forum that
domain name is registered with Cronon Ag Berlin,
Niederlassung Regensburg and that Respondent is the current registrant
of the name. Cronon Ag
On April 17, 2009, a German language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 2009 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 language 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, is the owner of numerous trademarks that have been registered with the United States Patent and Trademark Office (“USPTO”), including the SKYY VODKA mark (i.e., Reg. No. 1,571,233, issued December 12, 1989). Complainant uses the SKYY VODKA mark in advertising, sales, and promotion of alcoholic beverages.
Respondent registered the <skyyvodkas.com>
Preliminary Issue: Res Judicata
Complainant previously submitted a Complaint regarding the <skyyvodkas.com> domain name, although the Complaint
was denied on the grounds that Complainant failed to allege or submit evidence
regarding the use of the disputed domain name.
Skyy Spirits LLC v.
Krzenszczynski, FA 1220829 (Nat. Arb. Forum
Typically, complaints may not be resubmitted for relief
subsequent to their denial due to res
judicata principles unless the complainant meets its high burden of
demonstrating the grounds for such additional review. See,
e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO
However, where a panel
has made clear that it is denying the original complaint without prejudice
and/or reserves the complainant’s right to refile the complaint, such refilings
have been permitted. See Cluett, Peabody & Co.
Because Complainant has now submitted evidence of the use of the disputed domain name, the Panel finds that the standard set forth in Cluett, Peabody & Co. and Jones Apparel Group Inc. has been satisfied. Accordingly, the Complaint will be considered.
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 has established rights in
the SKYY VODKA mark based on its registrations of the mark with the UPSTO under
Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum
name incorporates Complainant’s entire SKYY VODKA mark, with the addition of
the letter “s.” That change to the
Complainant’s mark is not enough to avoid a finding of confusing similarity
under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA
956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter
“s” to a registered trademark in a contested domain name is not enough to avoid
a finding of confusing similarity under Policy ¶ 4(a)(i)).
Thus, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <skyyvodkas.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).
Due to Respondent’s failure to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel finds that Complainant has presented a prima facie case; however, the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <skyyvodkas.com> domain name. Complainant asserts that Respondent has no legitimate connection or authorization to use the SKYY VODKA mark. Accodring to Respondent’s WHOIS information, Respondent is listed as “Stanislaw Krzenszczynski.” Thus, Respondent is not commonly known by the <skyyvodkas.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant has alleged that the disputed domain name resolves to a website noting that the disputed domain name is for sale. Without any other actual use or demonstrable preparations to use the disputed domain name alleged, the Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Complainant has satisfied Policy ¶ 4(a)(ii).
There is no evidence within the record to counter
Respondent’s offer to sell the disputed domain name. Because the resolving website is merely
parked, given the lack of any substantive use, the Panel finds that Respondent
has engaged in bad
faith registration and use under Policy ¶ 4(b)(i) as Respondent has primarily
intended the sale of the disputed domain name at registration and
thereafter. See Bank of Am. Corp. v.
Northwest Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed
domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also America Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skyyvodkas.com> domain name be TRANSFERRED from Respondent to Complainant.
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