Miller Brewing Company v Yunju Hong
Claim Number: FA0309000192732
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”).
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.
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 email@example.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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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).
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.
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”).
Having found that Respondent has a legitimate interest in the disputed domain name, the Complaint is DENIED.
Wallace, Q.C., Panelist
Dated: December 8, 2003
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