Mast-Jaegermeister AG v. The Penalty Box
Inc.
Claim Number: FA0508000547812
PARTIES
Complainant
is Mast-Jaegermeister AG (“Complainant”),
represented by Katrin Lewertoff of Sidley Austin Brown & Wood LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is The Penalty Box Inc. (“Respondent”), represented by Brian J. Day, 2180
South 1300 East, Suite 120, Salt Lake City, UT 84106.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jagermeisterpoker.com>,
registered with Tucows.
PANEL
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.
Jonas
Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 29, 2005.
On
August 25, 2005, Tucows confirmed by e-mail to the National Arbitration Forum
that the <jagermeisterpoker.com>
domain name is registered with Tucows and that Respondent is the current
registrant of the name. Tucows has
verified that Respondent is bound by the Tucows 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
August 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
20, 2005 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@jagermeisterpoker.com by e-mail.
A
timely Response was received and determined to be complete on September 20,
2005.
On September 29, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
has stated the following in its Complaint.
Complainant
is the owner of the below United States trademark registrations:
Incontestable U.S.
Trademark Registration No. 857,604 for the mark JAGERMEISTER for "liqueurs, specifically herbalic liqueurs,"
registered on September 24, 1968;
Incontestable U.S.
Trademark Registration No. 861,094 for the mark JAGERMEISTER & Design for "liqueurs, specifically herbalic
liqueurs," registered on November 26, 1968;
Incontestable U.S. Trademark
Registration No. 1,952,558 for the mark JAGERMEISTER AUSZUG EDELSTER KRAUTER . . . & Design for “herbalic
liqueurs,” registered January 30, 1996;
U.S. Trademark Registration
No. 2,23 8,324 for JAGERMEISTER . . . SO SMOOTH & Design for “liqueurs,” registered on April 13, 1999;
Incontestable U.S.
Trademark Registration No. 2,165,258 for the mark JAGERMEISTER KRAUTER-L1QUER
IMPORTED . . . & Design for “distilled spirits,” registered on June 16, 1998.
Complainant encloses
herewith copies of the United States Patent and Trademark Office TAAR records showing the current status of each
registration as EXHIBIT A. Complainant
notes that it has been using its JAGERMEISTER mark in connection with numerous goods such as glasses, t-shirts, head wear, bags
etc. Attached as EXHIBIT B are
printouts from Complainant's website showing use of the mark on these numerous goods.
The Complaint is based on the following factual and legal
grounds: ICANN Rule 3(b)(ix).
[a.]
The domain <jagermeisterpoker.com>
is confusingly similar to Complainant's federally registered marks JAGERMEISTER,
JAGERMEISTER & DESIGN, JAGERMEISTER AUZUG
EDELSTER KRAUTER . . . & DESIGN, JAGERMEISTER
. . . SO SMOOTH & DESIGN and JAGERMEISTER KRAUTER-LIQUEUR & DESIGN
because the dominant part of the domain, JAGERMEISTER,
is identical to Complainant's marks or parts of Complainant's marks.
Complainant's JAGERMEISTER mark is well known throughout the world and especially in the United States. Attached, as
EXHIBIT C, are printouts from
Mast-Jaegermeister AG's website showing JAGERMEISTER' s fame. In 2003,
Mast-Jaegermeister AG sold more than 9 million 1-liter bottles of JAGERMEISTER in the U.S.
[b.]
As the absence of any
content on Respondent's website shows,
Respondent's use of, or demonstrable
preparation to use, the domain name is not in
connection with a bona fide offering of goods and services and Respondent is not making a legitimate noncommercial or fair use of the
domain name. Instead, Respondent tarnishes Complainant's trademarks. In
addition, Respondent's company name is
[“]The Penalty Box, Inc.[”] and the company or enterprise has thus not been commonly known by the domain name.
[c.]
Respondent's registration
of a domain name which contains
Complainant's trademark by definition must
have been in bad faith because the only plausible reason for Respondent to have
registered this domain name is to attempt to
create a likelihood of confusion between Complainant and Respondent. Respondent's failure to post any content to its website
is further evidence of bad faith. In
addition, Complainant sent Respondent a letter dated February 17, 2005,
requesting Respondent to cancel its domain name. A copy of the letter is attached as [an
exhibit]. Respondent completely failed
to respond to the letter. Thus, it can be inferred that Respondent's continued use of the
domain name is in bad faith.
B.
Respondent
Respondent
has stated the following in its Response.
This
Response specifically responds to the statements and allegations contained in
the Complaint and includes any and all bases for Respondent to retain
registration and use of the disputed domain name. ICANN Rule 5(b)(i).
[a.]
The term
“jager meister” is a commonly used expression within the hunting community
meaning hunting master, master of the hunt, and master hunter. The etymology of the term “jager meister” is
German for “hunt master.” Websters
dictionary defines the term “jager” as a sharpshooter, a tern first used in
popular English sometime before 1813.
In German and Afrikaan[s] “jager” means hunter. Websters dictionary defines the term
“meister” as German for Champion or master.
Respondent
is in the process of creating an online poker website which caters to the
hunting community. Respondent plans to
hold poker tournaments giving away exotic hunting trips, guns, and hunting
accessories to winners.
Complainant
chose a common term and expression to identify [its] liquor brand. There is little to no chance that someone
would confuse liquor with a hunting poker site when none of Complainant’s
identifying marks will be used on the website nor will there be any alcohol
related content on the website.
If
Complainant is worried that the term “jagermeister” in the domain name will
create confusion then Complainant should also be pursuing legal action against
jagermeistershepherds.com, a company dealing in world class German
Shepherds. I suspect that Complainant
has also tried to stop this company and failed because there is little to no
chance that someone would confuse liquor and dogs, just as there is little to
no chance that someone would confuse liquor and a hunting poker site.
Furthermore,
currently there are other poker websites running with terms in the domain name
that are identical to a liquor brand and there has been no likelihood of
confusion. bombay.com is the website
for the world renowned liquor Bombay Sapphire Gin. I suspect that Bombay has spent millions of dollars promoting the
Bombay trademark. Bombay liquor and an
entirely separate poker company operating under the domain name bombaypoker.com
co-exist with out any likelihood of confusion that someone would mistake poker
for liquor. Another similar example is
Absolut Vodka and Absolute Poker.
Absolut.com is the world renowned liquor company and absolutepoker.com
is an entirely separate poker company.
[b.]
In July of
2004 Respondent retained the legal services of Brian J. Day, Esq. to help
Respondent begin putting together an online poker company. Online poker companies are recognized as a bona
fide offering of goods or services.
Establishing a world-class online poker site is very a complex process
and requires a great deal of time and effort.
Because of the complexity of the process, Respondent has not yet placed
any content on the web site, nor will Respondent begin its online poker company
until all necessary arrangements are made to establish a world-class online
poker site. This process involves a
whole myriad of hurdles ranging from creating and or licensing software,
setting up the hosting equipment in a proper country and jurisdiction and
obtaining necessary government licenses, government visas, back up bandwidth,
backup generators, setting up merchant accounts and proper banking structures,
marketing, etc. Setting up a proper online
poker site could take as long as a couple of years to do properly.
Respondent began making demonstrable preparations to use the
domain name in connection with a bona fide offering of goods or services
long before any notice to Respondent of the dispute. Respondent began this process in June of 2004 when legal counsel
was retained, and Respondent has continued to pursue this goal as evidenced by
attached e-mails and agreements.
Respondent’s first notice from Complainant that the use of the domain
name may escalate into a conflict was a letter dated February 17, 2005. This proceeding did not begin until August
21, 2005.
[c.]
Respondent
has not registered and has not used the domain name in bad faith. Respondent has never attempted to sell,
rent, or otherwise transfer the domain name registration to Complainant. Complainant is not in the online gaming
business nor has Complainant ever been involved in online poker, Complainant is
strictly in the liquor business.
As stated above the term “jager meister” is a commonly used
expression within the hunting community meaning hunting master, master of the
hunt, and master hunter. The etymology
of the term “jager meister” is German for “hunt master.” Websters dictionary defines the term “jager”
as a sharpshooter, a tern first used in popular English sometime before
1813. In German and Afrikaan[s] “jager”
means hunter. Websters dictionary
defines the term “meister” as German for Champion or master.
Respondent
is in the process of creating an online poker website which caters to the
hunting community. It is well
documented that the majority of hunters have large amounts of disposable
income. In the US, in 1991, hunters
spent $14 billion on their sport, but by 2001 that figure had risen to $20.6
billion, an increase of 33% while the number of hunters was dropping by
17%. US Fish and Wildlife Service
Report. “Nationwide, hunters and
anglers have more disposable income and more time to spend it.” Montana Outdoors
September/October 2002.
It
is also well documented that people who hunt tend to have “risk-taker”
personalities, a common trait among people who also gamble. See Psychology Today
November/December 2000 By Marvin Zuckerman. Respondent seeks to target this hunting community. Respondent is not attempting to create a
likelihood of confusion between Complainant and Respondent. There is no link between a hunting poker
site and liquor. There is little to no
chance that someone would confuse liquor with a hunting poker site when none of
Complainant’s identifying marks will be used on the website nor will there be
any alcohol related content on the website.
As
stated above, if Complainant is worried that the term “jagermeister” in the
domain name will create confusion then Complainant should also be pursuing legal
action against jagermeistershepherds.com, a company dealing in world class
German Shepherds. I suspect that
Complainant has also tried to stop this company and failed because there is
little to no chance that someone would confuse liquor and dogs, just as there
is little to no chance that someone would confuse liquor and a hunting poker
site.
Furthermore,
currently there are other poker websites running with terms in the domain name
that are identical to a liquor brand and there has been no likelihood of
confusion. bombay.com is the website
for the world renowned liquor Bombay Sapphire Gin. I suspect that Bombay has spent millions of dollars promoting the
Bombay trademark. Bombay liquor and an
entirely separate poker company operating under the domain name
www.bombaypoker.com co-exist with out any likelihood of confusion that someone
would mistake poker for liquor. Another
similar example is Absolut Vodka and Absolute Poker. Absolut.com is the world renowned liquor company and
www.absolutepoker.com is an entirely separate poker company.
DISCUSSION AND FINDINGS
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 the 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 the 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 has shown that it is the proprietor of numerous
trademark registrations on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) for the JAGERMEISTER mark. According to the Panelist these
registrations as well as Complainant’s continuous use of the mark in commerce
demonstrate Complainant’s rights in the JAGERMEISTER mark for purposes of Policy
¶ 4(a)(i).
The Panelist further finds that the <jagermesiterpoker.com>
domain name is confusingly similar to Complainant’s JAGERMEISTER mark
because the domain name fully incorporates Complainant’s mark and merely adds
the descriptive term “poker” and the “.com” generic top-level domain. In the Panelist’s opinion, the addition of a
descriptive term and a generic top-level domain does not distinguish the domain
name from Complainant’s mark. Thus, the
Panel finds that the domain name is confusingly similar to the mark under
Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Reliv’ Int’l Inc. v. Kelly, FA 96319 (Nat. Arb. Forum
Feb. 5, 2001) (finding that the <relivlawsuits.com> domain name was
confusingly similar to the RELIV trademark, because the domain name merely
combined the trademark with the generic word “lawsuits,” even though Respondent
had linked the domain name to a website bringing attention to a lawsuit filed
against the complainant); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
As held
by Complainant the Panelist finds that Complainant has prior rights in the
trademark JAGERMEISTER, which precede Respondent’s registration of the domain
name <jagermeisterpoker.com>.
Respondent is not a licensee of Complainant, and Respondent has not
received permission or consent from Complainant to use the trademark. Furthermore, it has not been shown that
Respondent has been commonly known by the domain name in question.
Though
Respondent has submitted documents and e-mails that indicate that Respondent
was in the initial stages of developing an Internet based business, developing
a business does not meet the requirement under Policy ¶ 4(c)(i). What is
required is that Respondent shows that, before it received notice of this dispute,
it has engaged in demonstrable preparations to use the domain name in
connection with a bona fide offering of goods or services. The record is entirely devoid of any
evidence that Respondent made any such preparations to use the name. Hence, the Panel infers that Respondent has
simply not used the name at all and thus has passively held it since the date
of its registration. See Sybase Inc. v. Analytical Sys., D2004-0360 (WIPO
June 24, 2004); see
also Medisite S.A. R.L. v. Intellisolve Ltd., D2000-0179
(WIPO May 19, 2000).
In the
Panelist’s opinion, Respondent’s failure to use the disputed domain name
amounts to passive holding, which is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and Respondent is not commonly known
by the domain name).
Respondent
is a U.S. entity and the word “jagermeister” has no immediate generic
connotation in respect of an online poker website, even if it would be intended
for hunters. It would be more natural
to select the English words “hunt master.”
It
is the Panelist’s opinion that Respondent’s registration of <jagermeisterpoker.com> demonstrates its intent to confuse Complainant’s
customers to believe that Complainant is the source or origin of Respondent’s
on-line commercial offerings for attracting customers by using the goodwill of
the trademark JAGERMEISTER, which constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
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 <jagermeisterpoker.com>
domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: October 13, 2005
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