Spirits Marque One, LLC v. Demand Domains, Inc.
Claim Number: FA1005001325235
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.
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.
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 firstname.lastname@example.org. 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.
Complainant requests that the disputed domain name <svedkavodka.com> be transferred from Respondent to 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
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).
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.
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.
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.
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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