Spirits Marque One, LLC v. Demand Domains,
Inc.
Claim Number: FA1005001325235
PARTIES
Complainant is Spirits Marque One, LLC (“Complainant”), represented by John M. Rannells, of Baker and Rannells PA,
New Jersey, USA. Respondent is Demand Domains, Inc. (“Respondent”),
represented by Christine G. Radocha, of Demand Domains,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <svedkavodka.com>,
registered with ENOM, INC.
PANEL
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 18, 2010.
On May 19, 2010, ENOM, INC. confirmed by e-mail to the National
Arbitration Forum that the <svedkavodka.com>
domain name is registered with ENOM, INC. and that the Respondent is the current
registrant of the name. ENOM, INC. has
verified that Respondent is bound by the ENOM, 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 May 24, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of June 14,
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@svedkavodka.com. Also on May 24, 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 on June 14, 2010. The Forum
found the Response to be deficient as it was received without the Annexes separated from the Response
itself. The Forum does not consider this Response to
be in compliance with Supplemental Rule 5(a).
Complainant submitted an Additional Submission on June 16, 2010 that
was received and determined to be in compliance with Forum Supplemental Rule 7.
On June 18, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed James Bridgeman as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain name <svedkavodka.com> be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In a particularly well researched and
presented Complaint, Complainant relies on its rights in the trademark SVEDKA
at common law and through the registered trademarks listed below and submits
that in particular its U.S. Reg. No. 2,126,196 for the mark SVEDKA is
incontestable pursuant to 15 U.S.C. §1065.
Complainant has furnished evidence of its
use of the mark and name SVEDKA and
submits that the SVEDKA mark has been in continuous use by Complainant (and/or
its predecessor in interest) on, and in association with, the sale of vodka since
1996 (i.e., for nearly 14 years).
Complainant submits that its
"SVEDKA" vodka is sold worldwide through all standard channels of
trade for distilled spirits. According to Impact Databank, January, 2010,
SVEDKA is the fastest growing spirits brand in the world, and according to
Impact's Annual Spirits Study of 2008, SVEDKA is the third largest imported
vodka brand in the
Complainant submits that its SVEDKA mark
and name is well-known throughout the world. Over its past three fiscal years,
Complainant has wholesale sales of SVEDKA vodka of approximately $310 million,
and over the past five years Complainant has expended more than $45 million in
advertising and promoting its "SVEDKA" vodka products.
Complainant's website to which
Complainant’s <svedka.com>
domain name resolves features Complaint's SVEDKA brand vodka and various
cocktail recipes for vodka cocktails. Pages downloaded from Complainant's
website have been submitted in an annex to the Complaint.
Complainant submits that its U.S.
trademark registration for SVEDKA for vodka is incontestable pursuant to 15
U.S.C. § 1065 and accordingly constitutes "conclusive evidence of the
validity of the registered mark and of the registration of the mark, of
[Complainant's] ownership of the mark, and of [Complainant's] exclusive right
to use the registered mark in [U.S.] commerce" in connection with the
goods recited in the registration (i.e., vodka). See 15 USC § 1115(b).
Complainant submits that its registration
of its "SVEDKA" trademark with the U.S. Patent and Trademark Office
is alone sufficient to prove Complainant’s rights in the "SVEDKA"
trademark for the purposes of this element.
Complainant submits that confusion is inevitable
as the disputed domain name <svedkavodka.com>
is literally Complainant's SVEDKA mark with the addition of the top-level
domain designation ".com" and the generic term "vodka",
which term immediately identifies with Complainant's SVEDKA product, namely vodka,
all of which creates the identical meaning and commercial impression as
Complainant's mark and name used with Complainant's goods. In that regard,
Complainant cites multiple decisions. See Nevada State Bank v.
Modern Ltd. — Cayman Web Dev., FA204063 (Nat. Arb. Forum, Dec. 6,
2003) ("It has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy"); see also Gillete Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July
28, 2005) (finding confusing similarity where the respondent's domain name
combined the complainant's mark ("Duracell") with a generic term
("batteries") that had an obvious relationship to the complainant's
business); see also Christie’s Inc. v.
Tiffany’s Jewelry Auction, Inc., D20010075 (WIPO Mar. 6, 2001) (finding
that the domain name christiesauction.com is confusingly similar to the
complainant's mark since it merely adds the word "auction" used in
its generic sense).
Complainant argues that as a result of
the similarity of the disputed domain name and Complainant’s SVEDKA trademark
consumers seeking SVEDKA vodka and/or SVEDKA vodka cocktail recipes on-line
will be diverted to Respondent's website and are likely to believe that
Respondent's site, which features links to distilled spirits including vodka
and to cocktail recipes is owned by or somehow sponsored by, licensed by, or
otherwise associated with Complainant.
Complainant submits that Respondent has no
rights or legitimate interests in the disputed domain name <svedkavodka.com>.
To Complainant’s knowledge, Respondent
does not own any registrations in any country for any trademark or service mark
containing the term "Svedka" or "Svedka Vodka", has no common
law claim to the mark "Svedka" or "Svedka Vodka", and does
not use the term "Svedka" or "Svedka Vodka" as a corporate
name or trade name.
Complainant asserts that Respondent is
not affiliated with Complainant and has not been licensed or otherwise
authorized to register or to use Complainant’s SVEDKA mark or to register or
use <svedkavodka.com>.
Further, Complainant submits that the
registration date of the disputed domain name <svedkavodka.com> is long subsequent to the registration date
Complainant’s trademark registrations and long subsequent to the registration
date of Complainant’s <svekda.com> domain name, and Complainant’s
establishment of an active website at that address.
Complainant claims superior, prior,
valid, and legitimate rights to the disputed domain name citing the decisions
of the panels in Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
Complainant further submits that
Respondent is not commonly known as "Svedka", or "Svedka
Vodka", nor is Respondent using the domain name for any bona fide offering of goods or services
or making a legitimate non-commercial or fair use of the infringing domain or
of Complainant’s mark and name. In Complainant’s submission it is evident from
Respondent's website that Respondent merely uses the <svedkavodka.com> domain name to operate a website featuring
advertisements and commercial links to third-party websites in exchange for
referral fees.
Complainant submits that Respondent is
using Complainant’s mark and name to attract and divert users to its site for
the purpose of redirecting Internet users seeking Complainant’s website to
other unrelated commercial websites. Complainant argues that such use is not a
"bona fide offering of goods or services" as contemplated by Policy ¶
4(c)(i). See Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16,
2006) (finding that respondent's use of domain names confusingly similar to the
complainant's WAL-MART mark to divert Internet users seeking the complainant's
goods and services to websites competing with the complainant did not
constitute a bona fide offering of goods or services); see also The Black & Decker Corp. v. Clinical Evaluations, FA
112629 (Nat. Arb. Forum June 24, 2002); Constellation
Wines
Complainant submits that Respondent has
registered and is using the disputed domain name in bad faith. In support of
this allegation, Complainant submits that Respondent registered the disputed
domain registration with, at the very least, constructive knowledge of
Complainant’s prior rights. See 15
U.S.C. §1072 (federal registration of a trademark constitutes constructive
notice to the world of the existence and validity of the owner/registrant's
trademark rights); see also
Complainant further argues that given the
ubiquitous presence of, advertising and promotion of, and fame of Complainant’s
mark and name, there is sufficient circumstantial evidence to charge Respondent
with actual knowledge of Complainant and its "SVEDKA" brand vodka and
the registration of the confusingly similar disputed domain name in such
circumstances constitutes bad faith. In this regard, Complainant cites Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that the respondent's registration and use of an identical
and/or confusingly similar domain name was in bad faith where the complainant's
BEANIE BABIES mark was famous and the respondent should have been aware of it).
Complainant argues that Internet users
seeking information on Complainant or vodka offered by Complainant under its
SVEDKA mark and name will likely be confused as to whether Complainant is the
source or sponsor of Respondent's website and Respondent is thereby taking
advantage of the likelihood of confusion in order to profit from the goodwill
associated with Complainant mark and name. Complainant submits that such
activity amounts to bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624
(Nat. Arb. Forum June 2, 2006).
Complainant further submits that
Respondent’s use of the confusingly similar domain name to divert Internet
users to Respondent's website for commercial gain by using Complainant’s SVEDKA
trademark and with knowledge of Complainant's rights in a mark shown by direct
or by circumstantial evidence is proof of bad faith registration and use of the
disputed domain name by Respondent. See H-D Michigan, Inc. v.
Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003).
Furthermore, Complainant argues that it
is evident from the content of Respondent's website that the sole purpose of
the website is for Respondent to receive pay-per-click fees from third parties
for website links and/or pay-per-click advertising. Complainant additionally
submits that this Panel should make a finding of bad faith registration and use
of the disputed domain name because Respondent's website contains references
and/or links to third-party websites selling vodka products of Complainant’s
competitors (e.g., Absolut, Ciroc, Ketel One, Imperia, Smirnoff, etc.) from
which Respondent receives referral fees.
See Aetna Inc. v. Compana L.L.C., FA 330494
(Nat. Arb. Forum Nov. 20, 2004); see
also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant's business).
Complainant argues that Respondent has
also created a substantial likelihood of confusion as to Complainant's source,
endorsement, affiliation, and sponsorship of the disputed domain name and
corresponding website such as to constitute bad faith registration and use. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum
Dec. 8, 2003); see also Hershey Chocolate & Confectionery Corp.
v. Jet Stream Enters. Ltd.,
FA l252241 (Nat. Arb. Forum Apr. 27, 2009).
Complainant refers to print-outs from
Respondent’s website and points out that each page (with the sole exception of
links to third-party sites) advertises that "This domain may be for sale.
Buy this Domain". Complainant submits that same is evidence that
Respondent acted intentionally in bad faith to register the disputed domain for
the purpose of reselling the same or holding the disputed domain name hostage.
Complainant submits that Respondent is a
repeat domain infringer as is evidenced by the numerous cases involving Respondent
where transfer was ordered and has furnished details of the earlier decisions
in an annex to the Amended Complaint.
In conclusion, Complainant submits that
this 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); and Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000).
B. Respondent
In a Response that has been admitted and
considered by this Panel notwithstanding that it was not in compliance with
proper procedures, Respondent states that it has a policy against assuming
registration or holding domains in derogation of legitimate rights holders.
Respondent states that it was unaware
that the disputed domain name might conflict with Complainant's alleged
trademark rights at the time Respondent assumed registration of the domain
name. Respondent asserts that it was not
aware of Complainant's alleged trademark rights until Respondent received the
current Complaint.
Respondent complains that Complainant did
not contact Respondent directly regarding its concerns with Respondent's
registration of the <svedkavodka.com>
domain but instead opted to file this Complaint. Respondent complains that had
Complainant contacted Respondent prior to initiating this Complaint Respondent
would have reviewed Complainant's allegations and responded accordingly.
Respondent states that on May 25, 2010,
after receiving and reviewing a copy of the Amended Complaint received by email
from Complainant, a representative for Respondent contacted the counsel for
Complainant by email in an effort to amicably resolve the current dispute,
offering immediate and free transfer of the disputed <svedkavodka.com> domain name.
On May 27, 2010, counsel for Complainant
replied, bluntly rejecting Respondent's good faith offer to grant Complainant's
requested relief of immediate transfer of the disputed <svedkavodka.com> domain name
On June 7, 2010, Counsel for Respondent
made another attempt to assist Complainant in amicably resolving this matter,
in an email sent to counsel for Complainant. Respondent’s counsel reiterated
the generous offer for immediate and free transfer of the disputed <svedkavodka.com> domain name in
an effort to resolve this matter without the lengthy process of an
administrative proceeding. Respondent submits that after several days with no
response, counsel for Complainant responded on June 11, 2010 rejecting and
denying Respondent’s good faith intent and refusing to cooperate in suspending
this proceeding under the Policy to allow for transfer of the disputed domain
name. Nevertheless, counsel for Complainant indicated that Complainant would
withdraw the Complaint, but only if Respondent would unlock the domain name and
successfully complete a transfer of the domain name, a process that Respondent
argues is impossible without prior suspension of this proceeding under the
Policy.
Respondent submits that on June 14, 2010,
a representative for Respondent made one final attempt to assist Complainant in
the immediate transfer of the domain, explaining that the registrar of the
disputed domain name had the registration on administrative freeze and would
not allow transfer of the domain name without the current proceeding under the
Policy first being placed in suspended status,
and providing Complainant's counsel with a signed Joint Stay Request to suspend
the proceeding, which would allow the registrar to unlock the domain for
transfer to the Complainant. Respondent complains that this latest attempt at
granting Complainant's requested remedy was ignored by Complainant and
Complainant did not responded to it.
Respondent denies that it registered the <svedkavodka.com> domain in bad
faith with prior knowledge that it might infringe Complainant's alleged
trademark rights. Respondent denies any knowledge of Complainant's alleged
trademark rights or that its use of the disputed <svedkavodka.com> domain name allegedly infringed any such
rights.
Respondent asserts that its repeated
attempts to settle this matter were made with good faith intent. Throughout
this dispute, Respondent asserts that throughout this dispute it has acted with
the utmost good faith, responding promptly upon receipt of this action and
offering immediate transfer of the <svedkavodka.com>
domain name.
Complainant's refusal to suspend this
proceeding under the Policy to allow for transfer of the disputed domain name,
while simultaneously agreeing at the 11th hour to withdraw the Complaint if
Respondent successfully transfers the domain name to Complainant firstly,
appears to reflect a misunderstanding on the part of Complainant regarding the
transfer process for a domain name that is the subject of a proceeding under
the Policy. Respondent argues that even if Respondent could unlock the disputed
domain name registration and initiate its transfer to Complainant, the transfer
process would not be complete prior to the Respondent's response deadline in this
proceeding. Furthermore, Respondent submits that the registrar of the disputed
domain name is forbidden to implement any transfer of a domain name that is the
subject of an active proceeding under the Policy; the Complaint must be
suspended before a registrar can make any changes to a domain, including
transfer.
Respondent submits that Complainant's
allegations that Respondent would take advantage of the suspension of this
proceeding under the Policy to "run off" with the domain or otherwise
neglect to complete resolution of the matter is baseless. Respondent submits
that it has attempted to negotiate resolution of this matter in good faith from
the beginning, providing names of its representatives and valid telephone and
email contact information. Respondent's only motivation throughout this matter
has been to facilitate a quick, no-cost transfer of the disputed <svedkavodka.com> domain name to
Complainant once made aware of its alleged rights.
Respondent has agreed to grant Complainant
the remedy sought through multiple offers to transfer the disputed domain name.
Respondent asserts that it would still like to reach a resolution in this
matter and once again extends its offer to Complainant for immediate transfer
of this domain.
In light of the foregoing, Respondent
respectfully requests that this Panel dismiss the Complaint inasmuch as
Respondent has acted only in good faith. Upon dismissal, Respondent agrees to
immediate transfer of the <svedkavodka.com>
domain name registration to Complainant.
In the alternative, Respondent requests
that this Panel refrain from making any formal finding that Respondent acted in
"bad faith." Rather, Respondent respectfully requests that this Panel
simply endorse Respondent's offer to transfer <svedkavodka.com> to Complainant.
C. Complainant’s Additional Submissions
In timely Additional Submissions, Complainant
argued firstly, all of the Respondent's assertions of good faith or lack of bad faith are long after the fact of registering and using
the domain comprised of Complainant's well-known registered trademark. It is
disingenuous to offer to settle after one gets caught and use that offer to
claim good faith throughout.
Secondly, and with regard to Respondent's bare claim
that it has a policy against assuming registration of domains in derogation of
legitimate rights holders: Complaint asks this Panel to note: (1) Respondent
has not provided any details as to its alleged policy; (2) Respondent has not
identified a single step it took or takes in support of this policy and/or in particular with regard to this case; and (3) if it
had a non-infringement policy and took steps in enforcing its policy, it would not have registered the domain in issue in
this proceeding and would not have used a website under the domain with
links directly related to Complainant's business
(which also makes suspect Respondent's claim that it was unaware of Complainant
or Complainant's well-known trademark).
Thirdly, this case is a mirror image of numerous
other administrative proceedings under the Policy involving the Respondent that were
referred to in the Complaint that included near verbatim assertions and
responses viz.
In
The American Automobile Association, Inc.
v. Demand Domains, Inc., FA
1241641 (Nat. Arb.
Forum Feb. 20, 2009), concerning the domain name <aaattravel.com>, the present Respondent filed a response to the complaint and a
stipulation to transfer without addressing
the three factors in Policy ¶ 4(a) except
to claim that it did not register the name or use the name in bad faith. A transfer was ordered by the Panel without
making specific findings.
In Micro
Motion Inc. v. Demand Domains, Inc., FA 1153703 (Nat. Arb. Forum, Apr. 17, 2008), concerning the domain name
<em3micromotion.com>,
the present Respondent filed a response nearly identical in nature to the
response in the present proceeding arguing: (a) that when it assumed registration of the disputed domain it had no
knowledge of complainant's trademark rights; (b) that it has a policy against registering or
holding domain names in derogation of legitimate rights holders; (c) that upon receiving the complaint, it instructed
counsel to contact complainant's counsel
and offer immediate transfer of the disputed domain, and stressed that it acted
in good faith throughout and
requested that the panel dismiss the proceeding or alternatively that it was
willing for the disputed domain to
be transferred to complainant. The
panel ordered the transfer without making
specific findings.
In Port Aventura, S.A. v. Demand Domains, Inc.,
D2008 -0176 (WIPO Apr. 1,
2008), relating to the domain name <portaventurathemepark.com>, initially the WHOIS search identified the
registrant of the disputed domain
names as Whois Privacy Protection Service, Inc. The registrar subsequently
identified the present Respondent as the registrant. The disputed domain
name resolved to landing pages containing
various categories and including links related to that complainant's
business. The response in that case also
was nearly identical in nature to the response in the present proceeding,
namely: (a) that complainant did not contact
the respondent prior to filing the complaint; (b) that upon receipt of
the complaint the respondent advised the complainant by email that it had not knowingly and intentionally registered the disputed
domain names in conflict and offered
to transfer the disputed domain names to the complainant; (c) that the
complainant rejected the respondent’s offer to settle; (d) that the respondent
sent an additional email that was not responded to; (e) that it was not using the privacy protection
service offered by the registrar to conceal its real identity; (f) that its use
of the privacy protection service was for legitimate purposes; (g) that it acted with good faith throughout the
proceedings; and (h) that it requested the Panel to dismiss the complaint or endorse its offer to
transfer without making a formal finding of bad faith against it. The Panel found that the complainant did not
accept the respondent’s offer, and so there was no settlement — instead there was a unilateral
consent to transfer by the respondent. The
panel ordered transfer without consideration of the three UDRP elements.
In Maverick
Multimedia, Inc. v. Demand Domains, Inc., FA 1112068 (Nat. Arb. Forum, Jan. 24, 2008), concerning the disputed
domain name <mavericklable.com>, the factual
background and respondent's assertions were nearly identical to those in the above
cases and a transfer was ordered by the Panel.
In AXA
SA v. Whois Privacy Protection Service, Inc. Demand Domains, Inc.,
D2007 1382 (WIPO Jan. 29,
2008), concerning the disputed domain name <axaonline.net>, a WHOIS search initially identified the
registrant of the disputed domain name as Whois Privacy Protection Service, Inc. The registrar identified the
present Respondent as the
registrant. Once again assertions
almost identical to those stated in the cases cited above, including willingness to transfer the
domain were made by the present Respondent. The panel addressed all
three elements in Policy ¶ 4(a) notwithstanding
the respondent’s unilateral offer to transfer the disputed domain name.
The Panel found all three elements in the complainant's favor and ordered a
transfer.
FINDINGS
Complainant is the owner of a number of trademark registrations for the
SVEDKA trademark including:
i.
U.S.
Reg. No. 2126196 for the mark SVEDKA for vodka, registered on December 30,
1997;
ii. CTM (i.e., European Union) Reg. No. 000277210
for the mark SVEDKA for, inter alia,
vodka, registered on June 16, 1998; and
iii. Canadian Reg. No. TMA618124 for SVEDKA for
alcoholic beverages including vodka, registered on August 30, 2004.
Complainant maintains a website promoting its
SVEDKA vodka products at the domain name address <svedka.com>, which
domain name was registered on August 28, 1997.
The disputed domain name was registered on
May 29, 2005.
The disputed domain name resolves to a
website established by Respondent.
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.
The Response was received without the Annexes separated from the Response
itself and thereby deemed by the Forum
not to be in compliance with Supplemental Rule 5(a). This Panel has nonetheless admitted and
considered the Response because, in the view of the Panel, no prejudice either
to the Policy or to Complainant by so doing. Complainant submitted timely
Additional Submissions addressing the defenses raised in the Response and to
refuse to admit the Response while admitting Complainant’s Additional
Submissions would be inappropriate and render the Additional Submissions
meaningless.
This Panel finds that Complainant has rights in the SVEDKA trademark at
common law through its extensive use of the mark on its vodka products and
through its trademark registrations, in particular U.S. Reg. No. 2126196 for
the mark SVEDKA for vodka, registered on December 30, 1997; CTM (i.e., European
Union) Reg. No. 000277210 for the mark SVEDKA for, inter alia, vodka, registered on June 16, 1998; and Canadian Reg.
No. TMA618124 for SVEDKA for alcoholic beverages including vodka, registered on
August 30, 2004.
This Panel finds that the disputed domain
name <svedkavodka.com> is
confusingly similar to Complainant’s registered trademark. The disputed domain
name consists of two elements namely the dominant element “svedka” and a descriptive element “vodka” together with the gTLD
extension ".com".
This Panel finds that the addition of the
descriptive element “vodka” to Complainant’s trademark does not serve to
distinguish the domain name from the trademark in any way. In fact, because
Complainant uses its SVEKDA trademark in relation to vodka, the addition of the
descriptive element in the domain name merely adds to the likelihood of
confusion. The Panel notes the earlier similar cases where a
such a finding was made including those cited by Complainant. See
Gillete Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July
28, 2005) (finding confusing similarity where the respondent's domain name
combined the complainant's mark ("Duracell") with a generic term
("batteries") that had an obvious relationship to the complainant's
business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction,
Inc., D20010075 (WIPO Mar. 6, 2001) (finding that the domain name
christiesauction.com is confusingly similar to the complainant's mark since it
merely adds the word "auction" used in its generic sense).
Furthermore, it is well established that the
gTLD extension ".com" may be ignored when making a comparison for the
purpose of the Policy. In this regard,
this Panel notes the decision in Nevada
State Bank v. Modern Ltd. — Cayman Web Development, FA 204063 (Nat. Arb. Forum Dec. 6, 2003) ("It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy"), cited
by Complainant.
This Panel finds that Complainant has
therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
It is well accepted by panels established
under the Policy that once a complainant has made out a prima facie case that a respondent has no rights or legitimate
interest in a disputed domain name, the onus shifts to the respondent to
establish such rights or interest. See Hanna-Barbera Prods., Inc. v.
Entm’t 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
In the present case, Complainant has made out
such a prima facie case. The SVEDKA mark
and name has been in continuous use by Complainant (and/or its predecessor in
interest) since 1996 (i.e., for nearly 14 years) and Complainant has secured
trademark registrations for the mark in a number of jurisdictions. Complainant
has not granted Respondent any licence or permission to use its SVEDKA mark.
The disputed domain name is confusingly
similar to Complainant’s registered trademark. There is no evidence that
Respondent carries on business using the SVEDKA mark or SVEDKA VODKA or is
known by either of those names.
Respondent does not make any claim to rights
or legitimate interest in its Response. The basis of its defense is that it
claims to have had no actual knowledge of Complainant’s rights when the
disputed domain name was registered and has endeavored without success to reach
an amicable agreement to transfer the disputed domain name to Respondent.
In the circumstances, this Panel finds that
Respondent has no rights or legitimate interest in the disputed domain name and
Complainant is entitled to succeed in the second element of the test in Policy
¶ 4(a)(ii).
This Panel also finds that the disputed
domain name was registered and is being used in bad faith. The disputed domain
name is being used by Respondent for commercial purposes to post links to
third-party websites. On the balance of probabilities Respondent has arranged
to receive income from click-through hits. This has been alleged by Complainant
and has not been denied by Respondent.
On its face, taken in combination the
dominant element in the disputed domain name “svedka” and the descriptive
element “vodka” points to Complainant and its business. It would be unreasonable to accept
Respondent’s submission that the disputed domain name, given the unusual
combination of the two elements, was chosen and registered without actual
knowledge of Complainant.
Since registration Respondent has used the
domain name for commercial purposes for profit and this Panel finds that
Respondent has knowingly established a website using the domain name that is
confusingly similar to Complainant’s trademark, in order to take predatory
advantage of Complainant’s goodwill in SVEDKA mark.
In reaching this conclusion, this Panel is
fortified by the methodology and reasoning of the panel in AXA SA v. Whois Privacy Protection
Service, Inc. Demand Domains, Inc., D2007-1382
(WIPO Jan. 29, 2008), cited by Complainant. While it is not identical on
its facts to the present case, there is some value in quoting from the decision
in that case in extenso. The present
Respondent was the registrant of the disputed domain name in that case also and
the panel found bad faith registration and use for the following reasons:
Firstly, the Respondent has a history of registering domain
names and then either not responding to administrative proceedings brought
against it (see e.g. Peek & Cloppenburg KG v. Whois Privacy Protection
Service, Inc./Demand Domains, WIPO Case No.
D2007-0019) or agreeing to the transfer of a disputed domain name in its
response, although not actually achieving any such voluntary transfer prior to
appointment of a panel (see e.g. Instituto del Fondo Nacional de la Vivienda
para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains,
Inc., WIPO Case No. D2007- 0917).
The Panel finds that the Respondent’s prior conduct, as well
as its conduct in this case, go toward a finding that the Respondent has
engaged in a ‘pattern’ of bad faith registration of domain names, within the
meaning of paragraph 4(b)(ii) of the Policy. As noted
above, the Respondent has previously been an unsuccessful Respondent in
proceedings under the Policy in circumstances similar to this one.
Secondly, the Respondent states that it ‘has a policy
against holding domains in derogation of legitimate rights holders’. However,
the Respondent provided no evidence of what steps it takes (if any) to give
effect to that policy. On the contrary, the Respondent’s conduct in this case,
and in previous cases, suggests that it takes few active steps to avoid
administrative proceedings brought by legitimate rights owners. (Indeed, there
may be no real incentive for the Respondent to expeditiously transfer the
disputed domain name if it continues to receive ‘click through’ revenue while
it holds that registration. This may rather be an incentive for the Respondent
to seek to frustrate or delay the resolution of proceedings against it.)
Additionally, the Respondent’s use of a privacy service, and prior failure to
transfer domain names in comparable circumstances, indicates a pattern of
putting complainants through unnecessary administrative delay and expense.
The Respondent’s contention - that it would have willingly
transferred the disputed domain name had the Complainant contacted it before
these proceedings - is disingenuous. There is no evidence that the Respondent
provided, via its Whois details or otherwise, any real contact details
for this purpose. The failure of the Respondent to transfer disputed domain
names in similar circumstances (in e.g. Instituto del
Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection
Service Inc., Demand Domains, Inc., WIPO Case No. D2007-0917) may also cast
doubt on the genuineness of this contention.
Thirdly, the Respondent denies any actual knowledge of the
Complainant and its mark when it registered the disputed domain name. The
Respondent does not explain why it did not have such knowledge. But even if it
did not have that knowledge (for example, because it automatically registered the
disputed domain name as part of a bulk registration), the Panel finds that the
Respondent should have known of the Complainant’s rights. Relevantly, a
number of prior cases under the Policy have found that a finding of bad faith
may be made where a Respondent should have been aware of a complainant, and
willfully avoided finding out. For example, as stated by the Panel in Mobile
Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304:
“respondents cannot…shield their conduct by closing their eyes
to whether domain names they are registering are identical or confusingly
similar to trademarks…[Where] a respondent registers large swaths of domain
names for resale, often through automated programs that snap up domain names as
they become available, with no attention whatsoever to whether they may be
identical to trademarks, such practices may well support a finding that
respondent is engaged in a pattern of conduct that deprives trademark owners of
the ability to register domain names reflecting their marks.”
(For similar statements, see also Media General
Communications, Inc. v. Rarenames, WebReg, WIPO
Case No. D2006-0964; HSBC Finance Corporation v. Clear Blue Sky Inc. and
Domain Manager, WIPO Case No. D2007-0062.) The Panel
finds that it is reasonable to apply this principle to the registration of
domain names in connection with directory websites, as in this case, as much as
registrations for the purposes of resale, as in the Mobile Communication
Service Inc., case cited above.
In this case, it is clear that the Respondent should have
known of the Complainant. The Complainant is well-known and, as found in prior
proceedings (noted above), its mark is distinctive. The only conceivable
purpose for the Respondent to have registered the disputed domain name was to
benefit from the reputation of the Complainant’s mark, by misdirecting Internet
traffic to the Respondent’s directory website.
Furthermore, while Respondent has argued that
it has tried to reach an amicable solution to its dispute with Complainant and
states that it has been willing to transfer the disputed domain name to
Complainant, this Panel notes that Respondent does not appear to have taken any
steps to stop the disputed domain name resolving to its website in
circumstances where it is aware that Complainant has complained that
Respondent’s use of the domain name is diverting Internet users away from
Complainant’s site.
In the circumstances, this Panel finds that
Complainant has also succeeded in the third and final element of the test in
Policy ¶ 4(a)(iii) and is entitled to succeed in this
Complaint.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <svedkavodka.com>
domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: 2 July 2010
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