National Arbitration Forum

 

DECISION

 

Tec-Mex Imports, Inc. v. Beam Global Spirits & Wine, Inc.

Claim Number: FA1001001302612

 

PARTIES

Complainant is Tec-Mex Imports, Inc. (“Complainant”), represented by Cori A. Mathis, of The Law Offices of Marc J. Lane, P.C., Illinois, USA.  Respondent is Beam Global Spirits & Wine, Inc. (“Respondent”), represented by Claudia W. Stangle, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <3gtequila.com> and <3gsociety.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned, Daniel B. Banks, Jr., as panel chair, certifies that the panel has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.

 

Daniel B. Banks, Jr., Panel Chair

Hon. Jim Carmody, Panelist

Professor David E.Sorkin, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On January 13, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <3gtequila.com> and <3gsociety.com> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@3gtequila.com and postmaster@3gsociety.com.  Also on January 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on February 9, 2010.  Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.

 

On February 22, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Hon. James A. Carmody and Professor David E. Sorkin as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant has a registered trademark for "3G" in Mexico dated February 24, 2006.  Complainant also has common-law trademark rights acquired through its continuous use of "3G" in commerce in connection with tequila in Mexico at least as early as June 2, 2004, and in the United States at least as early as December 2, 2004.  On August 6, 2007, Complainant filed a trademark application with the United States Patent and Trademark Office for "3G" for tequila and the application was allowed on April 21, 2009.

 

Respondent registered the domain name 3GTequila.com on May 17, 2007 and 3GSociety.com on September 1, 2008.  Those domain names are confusingly similar to Complainant's trademark. 

 

The 3GTequila domain automatically redirects Internet users to a website located at tresgeneraciones.com which promotes Tres Generaciones tequila products which directly compete with Complainant's "3G" tequila products.  The 3GSociety.com website offers a "members-only" online society or forum to discuss tequila and related topics and events and also promotes Tres Generaciones tequila products. 

 

Respondent has no legitimate rights or interests in the disputed domain names.  It owns no trademark registrations or pending applications.  Respondent was not using the "3G" trademark in commerce in Mexico or the United States when Complainant was using the "3G" mark in commerce in connection with tequila.  There is no legitimate use of a domain name when a respondent diverts consumers to its own website by using Complainant's trademarks.  Use of a domain name to offer goods in direct competition with the Complainant's business is not a bona fide offering of goods nor is it a legitimate noncommercial or fair use.

Respondent registered the disputed domain names in bad faith.  The domains were registered after Complainant began using the "3G" trademark in commerce in Mexico and the United States and after the Complainant obtained a registered trademark in Mexico and filed its application for registration in the United States.

 

Respondent is an operating company of Jim Beam Brands Worldwide which promotes tequila products.  Respondent must been aware of Complainant's trademark rights when it registered the disputed domain names.  Offering goods in competition at a domain name that is confusingly similar to a complainant's trademark is presumed to be for the purpose of disrupting business of a competitor, which evidences bad faith registration and use.  Respondent's use misleads consumers into believing that Complainant owns, sponsors, endorses or is otherwise affiliated with the disputed domain names and is in bad faith.

 

B. Respondent

Respondent produces and sells a super premium tequila under the mark "TRES GENERACIONES."  It is sold in the United States and other countries worldwide.  The English translation of "TRES GENERACIONES"  is "THREE GENERATIONS," which refers to the three generations of dons that formed Tequila Sauza as a company and created the branded tequila.  Tequila Sauza is now a subsidiary of Respondent. 

 

In the United States, English speaking consumers have found it difficult to pronounce the Spanish phrase "TRES GENERACIONES."  To minimize the difficulty, English speaking consumers have taken to using a nickname "3G" to refer to Respondent's product.  As a result, the "3G" mark has been associated with Respondent and its predecessors since at least as early as 2001.  In addition, Respondent and/or its predecessors have used the "3G" mark in marketing materials, goods associated with the display of the product in stores in the form of "shelf talker," and promotional materials in the United States and other jurisdictions.  As a result of this recognition and use, Respondent believes it has common law rights in "3G" and does have registered and common law rights in "TRES GENERACIONES" in the U.S. and other jurisdictions.  Subsequent to this use, Respondent registered the disputed domain names for use in connection with the sale and marketing of its branded tequila products. 

 

Complainant has been marketing and selling a tequila by the name of "LOS 3 GARCIAS."  It has only recently made some use of "3G" which began after Respondent's use and the public's recognition of the same mark. 

 

The disputed domain names are not confusingly similar to Complainant's "3G" mark.  Complainant must allege and show its rights in the "3G" mark.  It has not sufficiently established longstanding rights in the mark.   While claiming use in the U.S. since at least as early as December 2, 2004, it cites an intent-to-use application which was not filed until August 6, 2007.  It has not yet submitted an Allegation of Use in connection with that application, instead having received an extension from the Trademark Office to submit a valid statement of use.  Complainant submits no evidence showing use in commerce of the mark in the U.S. 

 

Further, Complainant alleges use in Mexico since at least as early as June 2, 2004; however, it's trademark registration in Mexico was not filed until February 24, 2006.  It's only evidence of use is what appears to be a website printout with no allegation of the date it existed.  It therefore fails to show rights to use the mark dating to 2004.  While it shows a Mexican registration from 2006, any rights in Mexico do not pertain to Respondent's rights in its "3G" mark in the U.S. 

 

Upon information and belief, Complainant was not using "3G" on the relevant tequila bottles and necks as early as 2004.  The specimen of use submitted to the U.S. Patent and Trademark Office shows the use of "LOS 3 GARCIAS" on tequila bottles, not "3G."  Use of "LOS 3 GARCIAS" does not constitute use of "3G."

 

Respondent has rights and legitimate interest in the disputed domain names. Under ICANN Policy, one can show that before notice of any dispute, respondent has used or demonstrates preparation to use, the domain in connection with a bona fide offering of goods or services.  Consumers began using the Respondent's tequila by the nickname "3G" because of the difficulty in pronouncing "TRES GENERACIONES."  Bartenders and bar owners are taught to recognize "3G" as a reference to Respondent's product.  Bartending handbooks and bar owner's manuals define the product by the shorthand "3G."  Several online reviews and blogs show consumers using the term to reference Respondent and its tequila products.  News organizations use the term to refer to Respondent and its products.  The earliest of the references is a news article from 2001.  The bartending books are from 2002 and 2005. 

 

Since as early as 2001 and consistently through use since that time, the public has recognized Respondent and/or its predecessor in interest as being the source of products sold under the mark "3G."  As a result, Respondent has a legitimate interest in the domain names.

 

Respondent registered the domain names in good faith.  In order to prove bad faith, Complainant must prove Respondent (1) intended to sell the disputed domain names for profit; (2) engaged in a pattern of registering domain names in an attempt to prevent trademark owners from obtaining domain names corresponding to their trademarks; (3) registered the domain names for the purpose of disrupting Complainant's business; or (4) intended to attract users and customers by confusingly associating itself with the Complainant.  Complainant has produced not evidence that Respondent attempted to sell the domain names at a profit or that Respondent has a pattern of registering domain names in an attempt to prevent others from registering domain names corresponding to their trademarks.  Complainant does not provide any evidence that Respondent intended to attract users and customers by confusingly associating itself with Complainant.  Respondent registered the names to match the trademark thrust upon it by the general public.  The disputed domain names connect to websites that clearly reflect Respondent and its products. 

 

FINDINGS

1- The disputed domain names are confusingly similar to a trademark in which the Complainant claims rights.

2 - The Respondent has rights or legitimate interests in respect of the disputed domain names.

3 - The disputed domain names were not registered nor are they being used in bad faith. 

 

DISCUSSION

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 presents evidence of a trademark registration with the Mexican trademark authority (Reg. No. 927,533 issued February 24, 2006).  The Panel finds that Complainant’s registration of its 3G mark with the Mexican trademark authority is sufficient to satisfy Policy ¶ 4(a)(i).  The Panel also determines that it is irrelevant for the purposes of Policy ¶ 4(a)(i) whether Complainant has registered its trademark in the country of Respondent’s residence.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The Panel finds that each of Respondent’s disputed domain names contain Complainant’s 3G mark in its entirety, add the generic term “tequila” or “society” respectively, and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

 

 

Rights or Legitimate Interests

 

             Respondent is a business offering liquor products, in particular, its “Tres Generaciones” premium tequila.  The use of the "3G" mark by Respondent stems from the public's use of that term to reference Respondent and its tequila products.  "3G" is a shorthand term used to describe "TRES GENERACIONES," a spanish phrase which translates into "THREE GENERATIONS"  in English.  Evidence in this case indicates that Respondent, before any notice of the dispute, used or demonstrated preparation to use the domain names in connection with a bona fide offering of goods or services.  See D.C.C Wine Exchange Inc. v. Giumarra Farms Inc., FA 95065 (Nat. Arb. Forum Aug. 28, 2000 denying transfer of winesdirect.com, in part, due to evidence showing respondent's intent to use the domain name in connection with a bona fide offering of goods, namely documentation that respondent is well established in the wine business and had planned to use the domain name as part of its business plan); Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO Apr. 27, 2004.)  

 

Respondent uses the disputed domain names to attract customers to its liquor business as the disputed domain names resolve to Respondent’s commercial website.  The Panel finds that Respondent has made demonstrable use of the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Safeguard Operations, LLC v. Safeguard Storage, FA 672431 (Nat. Arb. Forum June 5, 2006) (finding that the respondent’s operation of a self-storage facility and execution of a business plan demonstrate that the respondent has rights or legitimate interests under Policy ¶ 4(c)(i)); see also Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”).

 

Additionally, Respondent is commonly known by the disputed domain names mark pursuant to Policy ¶ 4(c)(ii).  Respondent sells its premium tequila under the name “Tres Generaciones.”  This tequila is commonly known in the United States by the name “3G.”  See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).

 

Registration and Use in Bad Faith

 

Complainant has not submitted any evidence to support a finding that Respondent registered and is using the disputed domain names in bad faith.  Only assertions of bad faith are presented to this panel.  Mere assertions of bad faith are insufficient for a Complainant to establish bad faith.  The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

The panel finds that Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Having established legitimate interests the Panel finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

The panel also finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

 

Respondent has demonstrated a legitimate business of producing and selling premium tequila and other liquor products.  Respondent’s registration and used of the disputed domain names was not in bad faith pursuant to Policy ¶ 4(a)(iii).  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Daniel B. Banks, Jr., Panelist

Dated: March 8, 2010

 

 

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