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
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
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
Respondent registered the disputed domain names in bad faith. The domains were registered after Complainant
began using the "3G" trademark in commerce in
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
In the
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
Further, Complainant alleges use in
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.
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).
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
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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