national arbitration forum

 

DECISION

 

Dogfish Head Marketing LLC v. ICS inc.

Claim Number: FA1305001498990

PARTIES

Complainant is Dogfish Head Marketing LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington D.C., USA.  Respondent is ICS inc. (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dogfishbrewery.com>, registered with Tucows, 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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2013; the National Arbitration Forum received payment on May 14, 2013.

 

On May 9, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <dogfishbrewery.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2013 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@dogfishbrewery.com.  Also on May 15, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

    1. Complainant, Dogfish Head Marketing LLC, is among the premier brewers in the United States and the world. Complainant has sold beer and rendered bar and restaurant services under the mark DOGFISH HEAD.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DOGFISH HEAD CRAFT BREWED ALES mark (e.g., Reg. No. 3,622,500, registered May 19, 2009); for the DOGFISH HEAD BREWINGS & EATS mark (Reg. No. 3,622,505, registered May 19, 2009); for the DOGFISH HEAD ALEHOUSE mark (Reg. No. 3,336,614, registered November 13, 2007); for the DOGFISH HEAD JIN mark (Reg. No. 3,033,850, registered December 27, 2005); and for the DOGFISH HEAD TA-KEELA mark (Reg. No. 3,033,849, registered December 27, 2005).
    3. Respondent’s domain name is confusingly similar to Complainant’s DOGFISH HEAD marks because it incorporates the first and most distinctive term in Complainant’s mark and adds a generic term that obviously refers to Complainant’s goods and services, “brewery.” The addition of a generic top-level domain (“gTLD”) to a mark, such as Respondent’s addition of “.com” to Complainant’s DOGFISH HEAD mark, does nothing to alleviate the identity between the parties’ marks.
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    Nothing in the record suggests that Respondent is commonly known by <dogfishbrewery.com>.

                                         ii.    Respondent is using the domain name <dogfishbrewery.com> for a generic parked website that offers sponsored click-through links to websites advertising alcoholic beverages and beer memorabilia, many of which compete with Complainant’s DOGFISH HEAD-branded alcohol products and services.

                                        iii.    Respondent’s website also offers to sell the disputed domain name by inviting Internet users to “inquire about this domain.” The corresponding link directs users to the website for domain name broker <pubman.domainsponsor.com>.

    1. Respondent’s domain name was registered and is being used in bad faith.

                                          i.    Respondent is using the domain name for a website offering click-through links to third-party commercial websites that compete with Complainant’s DOGFISH HEAD-branded products and services.

                                         ii.    Complainant’s ownership of U.S. registrations for DOGFISH HEAD-formative marks on the Principal Register charged Respondent with constructive notice of those marks.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1.Complainant is a United States company that is a pre-eminent brewing company that has sold beer and rendered bar and restaurant services under the mark DOGFISH HEAD.

 

2.Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DOGFISH HEAD CRAFT BREWED ALES mark (e.g., Reg. No. 3,622,500, registered May 19, 2009); for the DOGFISH HEAD BREWINGS & EATS mark (Reg. No. 3,622,505, registered May 19, 2009); for the DOGFISH HEAD ALEHOUSE mark (Reg. No. 3,336,614, registered November 13, 2007); for the DOGFISH HEAD JIN mark (Reg. No. 3,033,850, registered December 27, 2005); and for the DOGFISH HEAD TA-KEELA mark (Reg. No. 3,033,849, registered December 27, 2005).

 

3. Respondent registered the <dogfishbrewery.com> domain name on April 11, 2013.

 

4.Respondent is using the domain name <dogfishbrewery.com> for a generic parked website that offers sponsored click-through links to websites advertising alcoholic beverages and beer memorabilia, many of which compete with Complainant’s DOGFISH HEAD-branded alcohol products and services. Respondent’s website also offers to sell the disputed domain name.

 

DISCUSSION

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.).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant argues that it is among the premier brewers in the United States and the world. Complainant contends that it has sold beer and rendered bar and restaurant services under the mark DOGFISH HEAD. Complainant asserts that it is the owner of trademark registrations with the USPTO for the DOGFISH HEAD CRAFT BREWED ALES mark (e.g., Reg. No. 3,622,500, registered May 19, 2009); for the DOGFISH HEAD BREWINGS & EATS mark (Reg. No. 3,622,505, registered May 19, 2009); for the DOGFISH HEAD ALEHOUSE mark (Reg. No. 3,336,614, registered November 13, 2007); for the DOGFISH HEAD JIN mark (Reg. No. 3,033,850, registered December 27, 2005); and for the DOGFISH HEAD TA-KEELA mark (Reg. No. 3,033,849, registered December 27, 2005). See Annex E. The Panel notes that Complainant refers to its collective marks as the “DOGFISH HEAD” marks, as opposed to referring to its own marks individually. The Panel notes that Respondent appears to reside in the Cayman Islands. However, the Panel finds that Complainant is not required to register a mark in the country of Respondent’s residence, so long as it registers the mark in some jurisdiction pursuant to Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the DOGFISH HEAD marks with the USPTO sufficiently establishes its rights in the marks under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to any of the Complainant’s marks referred to above. Complainant submits that the domain name is substantially identical to the trademarks it refers to collectively as its DOGFISH HEAD marks. The Panel finds that the domain name is confusingly similar to those marks. In particular, the Panel also finds that the disputed  <dogfishbrewery.com> domain name is confusingly similar to Complainant’s DOGFISH HEAD CRAFT BREWED ALES mark because it contains the dominant part of the trademark, namely DOGFISH   and also the generic word “brewery”, thus giving the impression that it refers to the Complainant and its brewery. The Panel notes that Respondent’s use of a generic term in association with Complainant’s DOGFISH HEAD CRAFT BREWED ALES  mark does not differentiate Respondent’s <dogfishbrewery.com> domain name from the mark under Policy 4(a)(i) but emphasizes the similarity between the two. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also holds that the <dogfishbrewery.com> domain name is confusingly similar to Complainant’s DOGFISH HEAD BREWINGS & EATS mark as it also contains the dominant part of that trademark, namely DOGFISH and also the generic word “brewings”, thus giving the impression that it refers to the Complainant and its brewing activity.  For the same reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s DOGFISH HEAD ALEHOUSE trademark. Complainant contends that the addition of a gTLD to a mark, such as Respondent’s addition of “.com” to Complainant’s DOGFISH HEAD marks, does nothing to alleviate the confusing similarity between Complainant’s marks and the disputed domain name. The Panel holds that Respondent’s addition of a gTLD to the domain name does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel notes that Respondent deletes the term “head,” from all of Complainant’s marks, while individually deleting the terms “craft brewed ales,” “brewing & eats,” “alehouse,” “jin,” and “ta-keela” from each respective mark. The Panel determines that Respondent’s omission of words from Complainant’s marks does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). For the reasons given, the Panel finds that Respondent’s <dogfishbrewery.com> domain name is confusingly similar to Complainant’s DOGFISH HEAD marks under Policy ¶ 4(a)(i) in the manner specified.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s DOGFISH HEAD  trademarks and used them in its domain name in the manner described , thus giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant; 

 

(b) Respondent has then used the domain name for a generic parked website that offers sponsored click-through links to websites advertising alcoholic beverages and beer memorabilia, many of which compete with Complainant’s DOGFISH HEAD-branded alcohol products and services. Respondent’s website also offers to sell the disputed domain name.

 

(c) Respondent has engaged in these activities without the consent or approval

of Complainant;

 

(d) Complainant claims that nothing in the record suggests that Respondent is commonly known by <dogfishbrewery.com>. Complainant asserts that Respondent is listed in the domain name’s WHOIS information as “ICS Inc.” See Annex B. Complainant asserts that Respondent’s website located at <dogfishbrewery.com> and the websites linked to the domain name are not owned, licensed, or approved by or affiliated with Complainant. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <dogfishbrewery.com> domain name under Policy ¶ 4(c)(ii);

(e) Complainant asserts that Respondent is using the domain name <dogfishbrewery.com> for a generic parked website that offers sponsored click-through links to websites advertising alcoholic beverages and beer memorabilia, many of which compete with Complainant’s DOGFISH HEAD-branded alcohol products and services. Complainant also contends that Respondent’s website features references and links to “buy beer online,” “Internet beer sales,” and “beer glasses with logos.” Id. The Panel determines that Respondent’s use of the disputed domain name to run a competing hyperlink directory is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);

 

(f) Complainant submits that Respondent uses the <dogfishbrewery.com> domain name for the purpose of selling the domain name by inviting website visitors to inquire about it, and when upon clicking the associated link, the visitor is redirected to a domain name broker’s website. The Panel determines for that reason that Respondent fails to demonstrate that it has rights or legitimate interests in the <dogfishbrewery.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant makes the allegation in its Policy ¶ 4(a)(ii) section that Respondent attempts to sell the <dogfishbrewery.com> domain name by offering a hyperlink for Internet users to click on if they are interested in purchasing the domain name. Complainant claims the hyperlink leads to a domain name broker. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), stated that the respondent’s offer to sell the domain name establishes the respondent’s bad faith registration and use. The Panel similarly concludes that Respondent registered and uses the <dogfishbrewery.com> domain name in bad faith under Policy ¶ 4(b)(i) by making a general offer to sell the domain name at the resolving website.

 

Secondly, Complainant claims that Respondent is using the domain name for a website offering click-through links to third-party commercial websites that compete with Complainant’s DOGFISH HEAD-branded products and services. The Panel notes that Respondent’s <dogfishbrewery.com> domain name links to a hyperlink directory containing links to websites directly competing with Complainant, such as “Beer Drinking Glasses,” “Beer Tours,” “Beer Online,” and others. See Annex F. As the Panel finds that Respondent is using the <dogfishbrewery.com> domain name to attract consumers away from Complainant’s website and to Respondent’s own website, for which Respondent presumably commercially profits through click-through fees, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). 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).

 

Thirdly, Complainant asserts that its ownership of registrations with the USPTO for DOGFISH HEAD-formative marks charged Respondent with constructive notice of those marks at the time Respondent registered the <dogfishbrewery.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to provide hyperlinks directly competing with Complainant, 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 The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept 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).

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s DOGFISH HEAD-formative marks and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <dogfishbrewery.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 13, 2013

 

 

 

 

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