Dogfish Head Marketing, LLC v. George Washere
Claim Number: FA1203001432981
Complainant is Dogfish Head Marketing, LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogfishheadbeer.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2012; the National Arbitration Forum received payment on March 7, 2012.
On March 6, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dogfishheadbeer.com> domain name is registered with Enom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2012 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@dogfishheadbeer.com. Also on March 7, 2012, 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 April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the DOGFISH HEAD marks which it uses in connection with the brewing and sale of beer;
b) Complainant registered the DOGFISH HEAD JIN mark (Reg. No. 3,033,850 registered December 27, 2005) through the United States Patent and Trademark Office (“USPTO”);
c) Respondent registered the <dogfishheadbeer.com> domain name on October 17, 2011;
d) The <dogfishheadbeer.com> domain name is confusingly similar to the DOGFISH HEAD marks;
e) Respondent is not commonly known by the disputed domain name;
f) The <dogfishheadbeer.com> domain name resolves to a website which displays links to competing goods and services in the beer industry;
g) Respondent registered and is using the disputed domain name to commercially gain from Internet users’ mistakes as to the source, sponsorship, or affiliation of the <dogfishheadbeer.com> domain name;
h) Respondent had constructive knowledge of Complainant’s rights in the DOGFISH HEAD marks prior to its registration and use of the <dogfishheadbeer.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the DOGFISH HEAD marks.
2. Respondent’s <dogfishheadbeer.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the disputed domain name.
4. Respondent registered and used the disputed domain in bad faith.
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."
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.
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.”).
Complainant argues that it has rights in the DOGFISH HEAD marks. Complainant provides that it has registered the DOGFISH HEAD JIN mark (Reg. No. 3,133,850 registered December 27, 2005) through the USPTO. Panels have previously held that the registration of a mark, regardless of the location of the parties, is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the DOGFISH HEAD JIN mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <dogfishheadbeer.com> domain name is confusingly similar to its mark. Respondent made the following changes to Complainant’s mark in the disputed domain name: the deletion of the term “JIN,” the addition of the descriptive term “beer,” the deletion of spaces, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s deletion of one term in a domain name fails to distinguish the <dogfishheadbeer.com> domain name from the DOGFISH HEAD JIN mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel next finds that Respondent’s addition of a term which describes Complainant’s business conducted under the DOGFISH HEAD JIN mark does not differentiate the <dogfishheadbeer.com> domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Finally, the Panel finds that the deletion of spaces and the addition of a gTLD is irrelevant to a determination of confusing similarity as they are requisite changes for the creation of a domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <dogfishheadbeer.com> domain name is confusingly similar to the DOGFISH HEAD JIN mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant argues that Respondent is not commonly known by the <dogfishheadbeer.com> domain name. Complainant asserts that it has not licensed or otherwise approved Respondent’s use of the DOGFISH HEAD marks in the <dogfishheadbeer.com> domain name. Additionally, Complainant notes that the WHOIS record for the disputed domain name lists “George Washere” as the domain name registrant. Panels have previously held that the complainant’s arguments coupled with the WHOIS record often illustrates whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).Therefore, the Panel finds that Respondent is not commonly known by the <dogfishheadbeer.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the <dogfishheadbeer.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the <dogfishheadbeer.com> domain name resolves to a website which displays links such as “Imported Beer” and “Beer Specials” to goods which compete with those that Complainant offers in the beer industry. The Panels in Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), and Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005), held that the display of competing links is not a use of a disputed domain name which confers rights or legitimate interests in the disputed domain name to the respondent. As such, the Panel finds that Respondent’s use of the <dogfishheadbeer.com> domain name is neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant asserts that Respondent registered and is using the <dogfishheadbeer.com> domain name in order to create confusion regarding the disputed domain name’s source and then taking commercial advantage of Internet users’ mistakes made as a result of this confusion. Complainant argues that the Respondent intended to use Complainant’s DOGHEAD FISH JIN mark in order to cause some confusion and added the term “beer” which describes the industry that Complainant operates in to falsely imply that Complainant is in some way affiliated with the <dogfishheadbeer.com> domain name. Complainant asserts that Respondent is profiting from the display of the competing links on the disputed domain name and that Respondent receives click-through fees for those Internet users which are diverted through the displayed links. The Panel infers that Respondent is profiting from the display of links on the <dogfishheadbeer.com> domain name. The Panel finds that Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name under Policy ¶ 4(b)(iv), the Panel finds that Respondent registered and is using the disputed domain name in bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that its trademark registrations for the DOGFISH HEAD JIN mark existed before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dogfishheadbeer.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson Jr., Panelist
Dated: April 19, 2012
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