Three Floyds Brewing LLC v. EKM Liquors
Claim Number: FA1204001440814
Complainant is Three Floyds Brewing LLC (“Complainant”), represented by Glenn A. Rice of Funkhouser Vegosen Liebman & Dunn Ltd., Illinois, USA. Respondent is EKM Liquors (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <darklordofthestout.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.
On April 25, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <darklordofthestout.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@darklordofthestout.com. Also on April 27, 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 May 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant owns United State Patent and Trademark Office registrations for both DARK LORD (Reg. No. 3,853,313, registered Sept. 28, 2010) and DARK LORD RUSSIAN IMPERIAL STOUT (Reg. No. 3,020,604 registered September 29, 2005). Complainant uses its trademarks in connection with the sale of stout beer.
Respondent uses the disputed domain name to resolve to a website that includes a search engine and pay-per-click links that redirect Internet users to unrelated sites.
Respondent’s <darklordofthestout.com> domain name is confusingly similar to Complainant’s trademarks.
Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and uses the disputed domain name to attract Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns valid trademark registrations issued by the U.S. Patent and Trademark Office for its DARK LORD and DARK LORD RUSSIAN IMPERIAL STOUT trademarks for beer.
Respondent registered the at-issue domain name subsequent to the time that Complainant demonstrates it acquired trademark rights in its DARK LORD RUSSIAN IMPERIAL STOUT trademark
Complainant has not authorized Respondent to use any of its trademarks.
Respondent is not commonly known by the at-issue domain name.
Respondent does not use the at-issue domain name in connection with a bona fide business.
The at-issue domain name references a website which contains links to Complainant’s competitors.
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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
As evidenced by its proffered trademark certificates, Complainant demonstrates rights in its DARK LORD mark and DARK LORD RUSSIAN IMPERIAL STOUT mark under Policy ¶ 4(a)(i) by having registered such marks with the USPTO. Either mark’s registration is sufficient evidence of Complainant’s trademark rights for the purposes of paragraph 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <darklordofthestout.com> domain name is confusingly similar to each of Complainant’s DARK LORD and DARK LORD RUSSIAN IMPERIAL STOUT trademarks. The at-issue domain name contains salient portions of Complainant’s trademarks. The domain name encompasses the entire DARK LORD trademark. With regard to the DARK LORD RUSSIAN IMPERIAL trademark, Respondent only inserts the terms “of” and “the” between “DARK LORD” and “STOUT” in place of “RUSSIAN IMPERIAL” and appends the generic top-level domain (“gTLD”) “.com.” to the second level “darklordofthstout” to create the at-issue domain name. Even when considered together, these alterations are insufficient to differentiate the <darklordofthestout.com> domain name from either Complainant’s DARK LORD mark or DARK LORD RUSSIAN IMPERIAL STOUT mark under Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); 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.”).
The Panel notes, that since Complainant’s DARK LORD RUSSIAN IMPERIAL STOUT trademark was registered prior to Respondent’s at-issue domain name, the Panel need not consider whether or not Complainant’s rights in DARK LORD were acquired prior to Respondent’s registration of <darklordofthestout.com> with regard to Policy ¶¶4(a)(ii) or 4(a)iii) as discussed below. Since trademark rights acquired after an at-issue domain name’s registration almost universally preclude a finding of bad faith, Panel’s subsequent Paragraph 4(a) analysis relies solely on Complainant’s DARK LORD RUSSIAN IMPERIAL STOUT trademark.
Respondent lacks rights or legitimate interests in respect of the <darklordofthestout.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
There is no evidence that Respondent was authorized to use Complainant’s DARK LORD IMPERIAL RUSSIAN STOUT trademark in a domain name or otherwise. Additionally, Respondent is not commonly known by the <darklordofthestout.com> domain name. WHOIS information for <darklordofthestout.com> lists “EKM Liquors” as the registrant. “EKM Liquors” is clearly not similar to the disputed domain name and there is no evidence of record supporting a finding that Respondent is otherwise commonly known by the at-issue domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Furthermore, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <darklordofthestout.com> domain name resolves to a website featuring various pay-per-click links to third-party websites, some of which compete in commercial areas that appear to be within the scope of Complainant’s DARK LORD RUSSIAN IMPERIAL STOUT mark. Respondent’s use of the at-issue domain name in this manner does not equate to a bona fide use under the Policy. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Because Respondent uses the domain name commercially as it does, it follows that there is no legitimate noncommercial or fair use of the dispute domain name under Policy ¶ 4(c)(iii).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and thereby conclusively demonstrates Respondent’s lack of rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and referenced website. A respondent’s registration and use of a domain name that is confusingly similar to the mark of another to resolve to a website containing hyperlinks to third-party sites, some of which compete directly with the complainant, such as here, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). As noted previously, it is more likely than not that hyperlinks on the <darkloardofthestout.com> referenced website are pay-per-click links. Since Respondent therefore intends to commercially benefit from the confusion created by its at-issue domain name, the Panel concludes that Respondent’s registration and use of the <darklordofthestout.com> domain name is in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complaint’s domain name is somewhat fanciful and the nature of Respondent’s business as disclosed in the WHOIS information appears to be related to liquor, just as is Complainant’s mark. From these circumstances, the Panel concludes that Respondent had knowledge of Complainant’s rights in the DARK LORD RUSSIAN IMPERIAL STOUT mark at the time the domain name was registered. This finding further indicates that Respondent registered <darklordofthestout.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <darklordofthestout.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 23, 2012
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