V&S Vin & Sprit Aktiebolag v. Brantley Carroll Photography
Claim Number: FA1103001378102
Complainant is V&S Vin & Sprit Aktiebolag (“Complainant”), represented by Joanne Ludovici-Lint of McDermott Will & Emery LLP, Washington D.C., USA. Respondent is Brantley Carroll Photography (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <absolutcannabis.com>, registered with Godaddy.Com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2011; the National Arbitration Forum received payment on March 15, 2011.
On March 17, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <absolutcannabis.com> domain name is registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the name. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2011 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@absolutcannabis.com. Also on March 18, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <absolutcannabis.com> domain name is confusingly similar to Complainant’s ABSOLUT mark.
2. Respondent does not have any rights or legitimate interests in the <absolutcannabis.com> domain name.
3. Respondent registered and used the <absolutcannabis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, V&S Vin & Sprit Aktiebolag, owns numerous trademark registrations for its ABSOLUT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,302,003 issued October 23, 1984). Complainant uses its ABSOLUT mark in connection with the advertisement, distribution, and sale of its vodka and related products.
Respondent, Brantley Carroll Photography, registered the disputed domain name on October 9, 2010. The disputed domain name resolves to a website that promotes Respondent’s photography services and features an image of Complainant’s vodka bottle design that includes the words “ABSOLUT CANNABIS” in Complainant’s signature blue font. Respondent offers a poster of this “ABSOLUT CANNABIS” image for sale through a link at the bottom of the website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s longstanding registrations for its ABSOLUT mark are sufficient evidence to establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Respondent’s <absolutcannabis.com> domain name is confusingly similar to Complainant’s ABSOLUT mark. The disputed domain name incorporates the entirety of Complainant’s mark while adding the generic term “cannabis” and the generic top-level domain (“gTLD”) “.com.” The Panel finds these additions insufficient to properly distinguish the disputed domain name from Complainant’s mark. See 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, for the purposes of Policy ¶ 4(a)(i), the Panel finds that Respondent’s <absolutcannabis.com> domain name is confusingly similar to Complainant’s ABSOLUT mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Before the burden shifts to Respondent to provide evidence of its rights or legitimate interests, Complainant must first set forth a prima facie case in support of its allegations as required by Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant has satisfied its burden based on the arguments contained in the Complaint. Respondent’s failure to respond to these proceedings can be taken as evidence that Respondent does in fact lack rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel elects to examine the record in its entirety to determine whether or not Respondent has rights or legitimate interests in the disputed domain name.
Complainant asserts that there is no indication that Respondent is commonly known by the <absolutcannabis.com> domain name. The WHOIS record for the disputed domain name lists the registrant as “Brantley Carroll Photography.” Complainant argues that nothing therein suggests or implies that Respondent is commonly known by the disputed domain name or Complainant’s ABSOLUT mark. The Panel finds that, with no evidence in the record to the contrary, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant submits a screenshot of the website resolving from Respondent’s <absolutcannabis.com> domain name. The screenshot shows that Respondent is using the disputed domain name to promote its photography business and to display, and offer for sale, a poster featuring Complainant’s ABSOLUT mark, written in Complainant’s signature blue, and its well known bottle design. The Panel finds that Respondent’s use of the ABSOLUT mark to promote its own business, unrelated to Complainant, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
By offering the “ABSOLUT CANNABIS” posters for sale on its website, Respondent has used the <absolutcannabis.com> domain name to intentionally attempt to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s famous mark as to sponsorship, affiliation, or endorsement of Respondent’s website and “artwork.” Respondent creates such confusion by using Complainant’s ABSOLUT mark in the domain name, and by featuring it in the poster, along with Complainant’s signature font, font color, and trademarked bottle design. The Panel therefore finds Respondent’s registration and use of the disputed domain name to be in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <absolutcannabis.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 21, 2011
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