The Absolut Company Aktiebolag v. Marshall Gu
Claim Number: FA1309001521693
Complainant is The Absolut Company Aktiebolag (“Complainant”), represented by Robert W. Zelnick of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is Marshall Gu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <absolutespirits.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 26, 2013; the National Arbitration Forum received payment on September 26, 2013.
On September 27, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <absolutespirits.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 September 30, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 21, 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, adminis-trative, and billing contacts, and to postmaster@absolutespirits.com. Also on September 30, 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 Respond-ent’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 October 23, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 owns exclusive rights in the ABSOLUT mark, which it uses in marketing one of the best-selling and best-known spirits brands in the world.
Complainant holds registrations for the ABSOLUT trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 1,302,003, registered October 23, 1984).
One of Complainant’s USPTO registrations for the ABSOLUT trademark (Registry No. 1,811,766, registered Dec. 21, 1993) is specific to Complainant’s marketing of apparel, including jackets.
Respondent registered the disputed <absolutespirits.com> domain name on August 17, 2011.
The domain name is confusingly similar to the ABSOLUT mark.
Respondent has not been commonly known by the disputed domain name.
There is no affiliation or association between Respondent and Complainant.
Complainant has not authorized Respondent to register or use Complainant’s ABSOLUT mark as part of any domain name.
Respondent uses the domain name to resolve to a Chinese-language website which advertises and offers for sale clothing goods.
Respondent profits from the goodwill associated with Complainant’s ABSOLUT mark by the sale of clothing through the use of the domain name.
Respondent has neither any rights to nor any legitimate interests in the disputed domain name.
The <absolutespirits.com> domain name is an example of typo-squatting.
Respondent knew of Complainant and its rights in the ABSOLUT mark when registering the <absolutespirits.com> domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the ABSOLUT trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), finding that a UDRP complainant had established rights to its mark under Policy ¶ 4(a)(i) through its federal trademark registration.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). To the same effect, see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <absolutespirits.com> domain name is confusingly similar to the ABSOLUT trademark. The domain name contains the entire mark, with the addition of the term “spirits,” which describes Complainant’s core busi-ness branded products, together with the letter “e” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition to the mark of another of the term “batteries,” which described a UDRP complainant’s products, and of the generic top-level domain “.com” were insufficient to distinguish the resulting <duracellbatteries.com> from that complainant’s DURACELL mark); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to a complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).
Finally, because every domain name requires a gTLD, the addition of a gTLD to Complainant’s mark in forming the disputed domain name is irrelevant to our analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that there is no affiliation or association between Respondent and Complainant, and that Complainant has not authorized Respondent to register or use Com-plainant’s ABSOLUT mark in a domain name. Moreover, the WHOIS record for the <absolutespirits.com> domain name identifies the domain name registrant only as “Marshall Gu,” which does not resemble the domain name. On this rec-ord, we conclude that Respondent has not been commonly known by the con-tested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel there finding that “nothing in Re-spondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as a factor in determining that Policy ¶ 4(c)(ii) does not apply.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <absolutespirits.com> domain name to profit by having the domain name resolve to a Chinese-language website that advertises and offers clothing goods for sale. In the circumstances here presented, this employ-ment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See, for example, Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent did not have rights to or legit-imate interests in a domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where it used a domain name derived from the mark of another to redirect Internet users to its own website which promoted the sale of that respondent’s books).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the dis-puted <absolutespirits.com> domain name attempts to take advantage of the confusing similarity between the domain name and Complainant’s ABSOLUT trademark in order to profit financially by bringing Internet users to its own web-site, which is unrelated to Complainant. Under Policy ¶ 4(b)(iv), this stands as evidence that Respondent registered and is using the <absolutespirits.com> domain name in bad faith. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel there finding bad faith under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process.
We are also convinced by the evidence that in creating the <absolutespirits.com> domain name Respondent has engaged in typo-squatting of the ABSOLUT mark. Typo-squatting is the formation of a domain name by means of the deliberate misspelling of the mark of another in hopes of taking advantage of common typo-graphical mistakes made by Internet users in entering into a web browser the mark of an enterprise with whom they wish to do business. Typo-squatting is a marker for bad faith registration and use of a domain name. See, for example, Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a UDRP respondent’s registration of the <nextell.com> domain name, formed from the mark NEXTEL, was in bad faith because the domain name epitomized typo-squatting in its purest form).
Here the <absolutespirits.com> domain name contains the entire ABSOLUT trademark, not spelled in keeping with its Swedish origins, but with an added “e” at the end, thus leaving the domain name phonetically identical to the mark’s original spelling, but aligning its spelling in the domain name with that of its English language cognate. This linguistic trick is emblematic of typo-squatting and thus of bad faith in the registration of the domain name. Respondent’s further addition to the domain name of the term “spirits,” which describes Com-plainant’s core business, removes any lingering doubt as to Respondent’s bad faith intent in thus altering the mark to suit its profit-making purposes.
Finally under this head of the Policy, it is clear from the evidence that Respond-ent knew of Complainant and its rights in the ABSOLUT trademark when regis-tering the <absolutespirits.com> domain name. This too is evidence of bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of registration of an offending domain name).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <absolutespirits.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 4, 2013
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