Miller Brewing Company v Yunju Hong
Claim Number: FA0309000192732
PARTIES
Complainant
is Miller Brewing Company,
Milwaukee, WI (“Complainant”) represented by Nathan D. Jamison, of Quarles & Brady LLP, 411 East Wisconsin Avenue, Milwaukee, WI,
USA 53202. Respondent is Yunju Hong, Yudong Bakgu, Korea (“Respondent”)
represented by Zak Muscovitch, of Barrister & Solicitor, 101 Scollard Street, Toronto, Ontario, Canada M5R 1G4.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <highlife.com>,
registered with Hangang Systems, Inc. d/b/a Doregi.Com (hereinafter
“Doregi.Com”).
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Anne
M. Wallace, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 3, 2003; the Forum received a hard copy of the
Complaint on October 21, 2003.
On
October 16, 2003, Doregi.Com confirmed by e-mail to the Forum that the domain
name <highlife.com> is
registered with Doregi.Com and that the Respondent is the current registrant of
the name. Doregi.Com has verified that Respondent is bound by the Doregi.Com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
October 21, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 10, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@highlife.com by e-mail.
A
timely Response was received and determined to be complete on October 30, 2003.
On November 11, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Anne M. Wallace,
Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Miller Brewing Company, a corporation organized under the laws of the State of
Wisconsin, is in the business of brewing and selling beer. Complainant spends
significant sums of money advertising and promoting its products and is
well-known both in the general public and among consumers of beer.
Complainant
is the owner of U.S. Trademark Registration Nos. 305,854 (issued August 29,
1933) for HIGH LIFE (Stylized); 305,871 (issued August 29, 1933) for HIGH LIFE
and Design; 859,048 (issued October 22, 1968) for MILLER HIGH LIFE and Design;
976,465 (issued January 8, 1974) for MILLER HIGH LIFE and Design; 2,112,798
(issued November 11, 1997) for HIGH LIFE (Stylized) used in connection with
“beer”; 2,232,404 (issued March 16, 1999) for MILLER HIGH LIFE and Design;
2,313,372 (issued February 1, 2000) for MILLER HIGH LIFE THE CHAMPAGNE OF BEERS
EST’D 1855 PREMIUM BREWED and Design; 2,507,050 (issued November 13, 2001) for
NOW YOU’RE LIVING THE HIGH LIFE; and 2,695,931 (issued March 11, 2003) for
MILLER HIGH LIFE and Design, all used in connection with “beer.”
The
disputed domain name is <highlife.com>. Complainant contends it is identical to
Complainant’s name and is confusingly similar to many of Complainant’s marks
that contain the term HIGH LIFE.
Complainant
further contends that Respondent does not have any rights or legitimate
interests in the <highlife.com>
domain name. Respondent’s <highlife.com> site contains a
generic search engine. The <highlife.com>
website does not contain any reference to Miller Brewing Company, nor does it
offer for sale any products bearing the name Miller or associated with Miller
Brewing Company. The descriptive quality of the <highlife.com>
domain name has no connection to the use of the domain name for a search engine
website. The
only occurrence of the High Life name in anything associated with Respondent
is in its use of the <highlife.com>
domain name for a generic search engine.
Complainant contends that such use of a domain name does not
constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does the use represent a noncommercial or fair use pursuant to Policy ¶
4(c)(iii).
Complainant
alleges that Respondent has engaged in bad faith with
respect to the <highlife.com>
domain name because Respondent is using the famous trademark of Complainant to
attract consumers to a generic search engine.
Reasonable consumers looking for the Miller Brewing Company website may
type “highlife.com” into a Web browser and be diverted to the Respondent’s
site. This, Complainant contends,
constitutes bad faith use under the Policy.
Complainant
asserts that Respondent’s actions demonstrate a continuous bad faith intent to
profit from Complainant’s trademarks by diverting customers looking for Miller
Brewing Company’s HIGH LIFE brand to a generic search engine, by creating a
likelihood of confusion with the Miller Brewing Company’s trademarks as to the
source, sponsorship, affiliation or endorsement of Respondent’s website. This act falls within Section 4(b) of the
Policy. Complainant asserts that Respondent has violated the Policy by
registering and using this domain name, incorporating Complainant’s famous
trademark, with no rights to use the domain name, and with bad faith intent to
profit from such domain name at the expense of Complainant.
B. Respondent
Respondent begins by pointing out that
Complainant has to date, succeeded in at least four (4) ICANN Complaints
involving one of its trademarks:
1.
Miller
Brewing Co. v. km,
FA 158252 (Nat. Arb. Forum July 3, 2003) (<millerbrewingcompany.com>)
2.
Miller
Brewing Co. v. The
Miller Family, FA 104177 (Nat. Arb. Forum April 15, 2002) (<millertime.com>)
3.
Miller
Brewing Co. v. Virtual
Agents, D2001-0652 (WIPO July 4, 2001) (<millerliteracing.com>)
4.
Miller
Brewing Co. v.
Carrington, FA 151398 (Nat. Arb. Forum April 25, 2003) (<millervrl.com> [virtual
racing league])
In each of these cases, Complainant was
successful because it was able to show that the impugned domain name
registration did not consist of a generic or descriptive word or phrase,
but consisted of a trademark that could not have been used in good faith
in a domain name by anyone other than Complainant.
Complainant
has however, been unsuccessful in a widely reported civil action; Miller
Brewing Co. v. G. Heilemann Brewing Co., 561 F.2d 75 (7th Cir.
1977). In this case, the 7th Circuit Appeals Court found that Miller
Brewing Company went too far in trying to protect an alleged trademark for the
word LITE. The Court held that common descriptive word or generic term, or its
phonetic equivalent, cannot be appropriated as a trademark.
Respondent
is an individual resident of Korea who registered the phrase “HIGH LIFE” as a
domain name (<highlife.com>)
on or about March 4, 2003, which Respondent points out is nearly three (3)
years ago.
Respondent
has to date used the subject domain name in connection with a search engine
portal.
Respondent
notes that Complainant expressly admits the following facts:
Complainant’s
objection to the Respondent’s registration and use of <highlife.com> is apparently that it believes that Respondent
is using Complainant’s “famous” trademark to attract consumers looking for the
Miller Brewing Company on the Internet.
Respondent
readily concedes that Complainant has a number of United States trademarks for
the phrase “HIGH LIFE”, all registered in connection with “beer”.
Complainant
has led no evidence that its trademarks are registered or well known in Korea,
where Respondent resides.
Respondent further submits that
Complainant has misrepresented the degree of exclusivity that it enjoys as a
registered trademark holder for HIGH LIFE. A search of HIGH LIFE in the United
States Patent and Trademark Office database and filed in this proceeding
reveals that other companies, totally unrelated to Complainant, enjoy trademark
rights for the phrase HIGH LIFE. For example, the following goods and services
are registered for use in association with the trademark HIGHLIFE, by companies
other than Complainant:
Cooling
Installations for Liquids, etc.
Tires,
Inner Tubes for Vehicle Tires, etc.
Gaming
Devices
Self-contained
Spas
Canned
Vegetables
Respondent
also filed evidence that a search of the Google Internet search engine reveals
thousands of common uses of the phrase “HIGH LIFE” in connection with all
manner of things, none of which are related to Complainant. This, Respondent
submits, demonstrates that HIGH LIFE it is a generic phrase. The fact that the
phrase “HIGH LIFE” is commonly used in the English language and describes
luxury, good living or a better state of affairs also demonstrates that it is a
generic phrase.
Respondent submits that
the domain name <highlife.com>
is comparable to <soccerzone.com> domain name in SOCCERPLEX, INC. v.
NBA Inc., FA 94361 (Nat.
Arb. Forum May 25, 2000) (finding that Complainant failed to show that it
should be granted exclusive use of the domain name <soccerzone.com>, as
it contains two generic terms and is not exclusively associated with its
business); in that it is generic and comprised of two generic terms.
Respondent submits, therefore, that Complainant is not entitled to exclusive
protection.
In
Black v. Molson
(2002), 60 O.R. (3d) 457, 21 C.P.R. (4th) 52, an Ontario Superior Court
Judge ruled on an Application to set aside a National Arbitration Forum
decision (the “NAF decision”) regarding the domain name CANADIAN.BIZ. In the
earlier NAF decision, Complainant, the Molson beer brewing company, had somehow
convinced the Panelist that because it had a trademark for the word CANADIAN in
connection with beer, it was entitled to force the transfer of the domain name
CANADIAN.BIZ from the registrant, Black.
Respondent
cites the following passage from the decision on the question of whether or not
Molson’s trademark was identical to the domain name:
Molson
Canada owns the registered trademark "CANADIAN". Mr.
Merhige [the NAF Panelist] concluded, "It's beyond question that the
domain name in issue is identical to the mark in which Complainant has
rights".
But,
is that the end of the enquiry? Does that mean that Molson Canada
should automatically have the domain name canadian.biz transferred to
it? The fundamental problem stems from the registration of the
generic name, "Canadian", as a trademark. Until this case,
I was unaware that the word "Canadian" was a registered trademark of
Molson Canada. In my view the trademark registration should only
have been allowed as "Molson Canadian".
In
the registration details for the registration of the trademark CANADIAN there
is the following disclaimer:
The
Applicant disclaims the right for the purpose of this application and the
resulting registration to the exclusive right to the use of the word CANADIAN
apart from the trade-mark in connection with all of the wares except brewed
alcoholic beverages, namely beer.
From
this disclaimer I conclude that Molson Canada intended to use the word
"CANADIAN" only with respect to beer. Therefore, since the
trademark registration does not give Molson Canada exclusive use of the word
"Canadian", any person should be able to own the domain name,
"canadian.biz".
There
are hundreds of Canadian businesses and entities which use the word
"Canadian" as a prefix or suffix for identification purposes.
I
venture to say that the word "Canadian" accompanied by the suffix
"biz" would not conjure up in the minds of most Canadians as
referring to Molson Canadian beer.
Likewise,
Respondent points out that Complainant’s trademark registration of the phrase,
HIGH LIFE, is only in connection with beer.
Respondent
submits that Complainant is wrongfully attempting to monopolize a common phrase
notwithstanding that its trademark is only registered in connection with beer.
Complainant’s trademark does not in any way serve to prevent anyone from using
the phrase – except in connection with beer. As has been demonstrated in
Respondent’s evidence, it is quite possible for many other companies to use
this phrase, even as a trademark, without causing any confusion with
Complainant’s product.
By
Complainant’s own admission, Respondent has never used its domain name or associated
website in connection with beer.
Complainant alleges that Respondent does not have
any legitimate rights or legitimate interest in <highlife.com> because Respondent’s use of the domain name is
limited to offering a “generic search engine”. Respondent submits that the
practice of registering generic names to be used in a search engine portal is
not prohibited by ICANN or domain name registration agreements, and in the
absence of other evidence, will be found to constitute a legitimate use. See Williams,
Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum
Oct. 8, 2001).
Respondent is
accused of using what amounts to a generic phrase to connect these
concepts with search keywords in order to provide advertisers with targeted
customer traffic. This is a legitimate business of the Respondent. See GLB
Serviços Interativos S.A. v. Ultimate Search Inc. D2002-0189
(WIPO May 29, 2002).
Respondent asserts that it is well established that
where a domain name is generic, the first person to register it in good faith
is entitled to the domain name. This is considered a “legitimate interest.” See
CRS Tech. Corp. v. CondeNet, FA
93547 (Nat. Arb. Forum Mar. 28, 2000):
…Even though the trademark and the name are all but
identical, the Panel has determined that the first person or entity to register
the domain name should prevail in circumstances such as these where the domain
name is a generic word, here indicating a provider of services, and where that
word is widely used as a trade or service mark, although almost always in
connection with modifiers or qualifiers.
Under the Policy, registration of a
domain name incorporating merely a common word or term to use for a business,
as here, establishes a Respondent’s legitimate interest. See: Rusconi Editore S.p.A. v. FreeView Publ’g, Inc., D2001‑0875
(WIPO Oct. 10, 2001); Gen. Mach. Prods
Co. v. Prime Domains, FA 92531
(Nat. Arb. Forum Jan. 26, 2000); Car Toys,
Inc. v. Informa Unlimited, Inc, FA 93682
(Nat. Arb. Forum Mar. 20, 2000) and First Am.
Funds, Inc. v. Ult.Search, Inc., D2000‑1840
(WIPO April 20, 2001).
Respondent argues that the extent of Complainant’s allegations of
bad faith against Respondent is that Respondent’s bad faith is ‘self-evident’
from the mere fact of using Complainant’s trademark for a “generic search
engine”.
In
Canned Foods, Inc. v Ult. Search Inc.,
FA
96320 (Nat. Arb. Forum Feb. 13, 2001) the Panel explained:
Where the domain name is a generic term, it is difficult to conclude that there is a
deliberate attempt to confuse. It is precisely because generic words are
incapable of distinguishing one provider from another that trademark protection
is denied them. There are dozens of other enterprises that use the term
"Grocery Outlet," therefore one cannot conclude that Complainant must
necessarily be the special target.
Reverse
Domain Name Highjacking
Respondent requests a finding of Reverse Domain
Name Hijacking against Complainant. Respondent says that Complainant ought to have known better
than to bring this Complaint and it must therefore be concluded that this was
an attempt to wrongfully seek the transfer of the subject domain name.
The name was a
generic one used in many trademarks and websites. It should have been apparent
to Complainant that it could not prove all the elements required by the Policy.
See Supremo n.v./s.a v. Rao Tella,
D2001-1357 (WIPO Feb. 15, 2002)
Such a claim under
Rule 15(e) is frequently made by Respondents but a finding of Reverse Domain
Name Hijacking is rarely granted. To prevail in such a claim, Respondent must
show that Complainant knew of Respondent’s unassailable right or legitimate
interest or of the clear lack of Respondent’s bad faith registration and use
but nevertheless brought the Complaint in bad faith. See Sydney Opera House v Trilynx Pty. Ltd.,
D2000-1224 (WIPO Oct. 31, 2000) and Koninklije
KPNNV v Telepathy, Inc., D2001-0217 (WIPO May 7, 2001).
FINDINGS
I
find that Respondent’s domain name, <highlife.com>
is identical to Complainant’s HIGH
LIFE trademark, but that Respondent has established a right or legitimate
interest in the domain name. Neither did Respondent act in bad faith. That
being the case, Complainant’s claim cannot succeed. I also dismiss Respondent’s
claim of Reverse Domain Name Highjacking in this case.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which Complainant has rights;
(2) the 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.
Complainant holds rights in the trademark
HIGH LIFE and other marks including the words HIGH LIFE. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction).
The disputed domain name <highlife.com>, with the
exception of the top-level domain “.com,” is identical to Complainant’s mark.
Respondent does not dispute this. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant succeeds on the first
element.
It
is clear from the evidence that Complainant does not hold exclusive rights in
the HIGH LIFE mark. Complainant does have exclusive rights in relation to the
uses for which it has registered trademarks (in particular, beer), but the
words HIGH LIFE themselves are a generic phrase used in many ways and conveying
various meanings. For example, the evidence before me establishes that there
are several other HIGH LIFE trademark registrations registered to parties other
than Complainant for products other than Complainant’s products. HIGH LIFE is
also a generic term in common parlance describing luxury, or good living, or a
better state of affairs. Respondent has also demonstrated the phrase is being
used in many different ways on the Internet.
Based
on all the evidence, I find that HIGH and LIFE are two generic words which
together form a generic phrase, HIGH LIFE, that is used in common parlance and
that, notwithstanding Complainant’s rights to certain trademarks incorporating
the words HIGH LIFE, the phrase remains a generic one. See Zero
Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are
legitimately subject to registration as domain names on a 'first-come, first-served'
basis"); see also Successful
Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb.
Forum Mar. 7, 2001) (finding that seminar and success are generic terms to
which Complainant cannot maintain exclusive rights).
Furthermore,
I agree with Respondent that in the circumstances of this case the registration
of the generic term HIGH LIFE to be used in a search engine portal is a
legitimate use and that there is nothing wrong with using the generic phrase to
connect these concepts with keywords in order to provide advertisers with
targeted customer traffic. See Choice Courier Sys. Inc. v. William H.
Kirkendale, D2002-0483 (WIPO July 23, 2002) (stating that “there is no
requirement that the user of a domain name must offer goods or services bearing
a mark which matches the domain name. This is particularly so when the mark
is a generic word”).
In
the circumstances, therefore, Respondent has established a right or legitimate
interest in the disputed domain name. Complainant fails on the second element.
While it is not necessary to decide this
question, I have reviewed the evidence and find that on the evidence before me
the domain name was not registered by Respondent in bad faith. Having found
that Respondent is legitimately using a generic phrase in connection with a
search engine, Respondent has not registered and is not using the disputed
domain name in bad faith. See Canned Foods Inc. v. Ult. Search Inc., FA
96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a
generic term, it is difficult to conclude that there was a deliberate attempt
to confuse on behalf of Respondent, and stating that “[i]t is precisely because
generic words are incapable of distinguishing one provider from another that
trademark protection is denied them”).
Reverse Domain Name Highjacking
I
have reviewed all the evidence before me in this case and I do not find
evidence to support a finding of Reverse Domain Name Highjacking. Complainant
does own trademarks which it appears Complainant was trying to protect by
bringing this application. Respondent did not establish an “unassailable right
or legitimate interest” of which Complainant knew, nor did Respondent establish
Complainant’s knowledge of absence of bad faith registration and use. In this
circumstances, therefore, I cannot make a finding of Reverse Domain Name
Highjacking. See Warm Things, Inc. v. Adam S. Weiss, D2002-0085 (WIPO
April 18, 2002) (holding that despite the generic nature of Complainant’s WARM
THINGS mark, Complainant’s possession of a registered mark and Respondent’s use
the disputed domain name gave Complainant a “good faith basis for bringing the
complaint”).
DECISION
Having found that Respondent has a legitimate
interest in the disputed domain name, the Complaint is DENIED.
Anne M.
Wallace, Q.C., Panelist
Dated: December 8, 2003
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