Heineken Brouwerijen B.V. and Heineken USA Incorporated v. Brett Gorder
Claim Number: FA0602000651107
Complainants are Heineken Brouwerijen B.V. and Heineken USA Incorporated (collectively “Complainant”), represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314. Respondent is Brett Gorder (“Respondent”), 708 14th Street, Farmington, MN 55024.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com>, registered with Abr Products d/b/a Misk.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2006.
On February 27, 2006, Abr Products d/b/a Misk.com confirmed by e-mail to the National Arbitration Forum that the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names are registered with Abr Products d/b/a Misk.com and that Respondent is the current registrant of the name. Abr Products d/b/a Misk.com has verified that Respondent is bound by the Abr Products d/b/a Misk.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 March 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2006 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@heinekenpremiumlight.com and postmaster@heinekenpremiumlightlager.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names are confusingly similar to Complainant’s HEINEKEN mark.
2. Respondent does not have any rights or legitimate interests in the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names.
3. Respondent registered and used the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1860, Complainant has been engaged in the business of brewing and selling beer and is the world’s leading beer brewer in terms of sales volume and profitability. Complainant has used the HEINEKEN mark in connection with the marketing and advertisement of its beer products and has registered the mark in national trademark offices throughout the globe including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 823,035 issued January 24, 1967).
Respondent registered the <heinekenpremiumlight.com> domain name on March 11, 2005 and the <heinekenpremiumlightlager.com> domain name on March 12, 2005. The websites hosted at the disputed domain names state that the domain names are offered for sale and contain Respondent’s contact information.
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."
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. 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.”).
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.
Complainant has established rights in the HEINEKEN mark through registration with the USPTO and various other trademark authorities around the world. Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names are confusingly similar to Complainant’s HEINEKEN mark pursuant to Policy ¶ 4(a)(i), because the addition of the generic words such as “premium,” “light” and “lager” do not sufficiently distinguish the domain names from Complainant’s mark. See American Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).
Furthermore, according to Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), where the panel stated “the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy,” the Panel finds that the addition of the generic top-level domain “.com” in Respondent’s domain name does not negate the confusing similarity of the disputed domain names from Complainant’s HEINEKEN mark pursuant to Policy ¶ 4(a)(i). See also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the <heinekenpremiumlight.com> and
<heinekenpremiumlightlager.com> domain names. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the dispute domain names. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel now chooses to examine whether the evidence supports
Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Additionally, the Panel finds that Respondent’s offer to
sell the disputed domain name is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the disputed domain name pursuant to Policy ¶ 4(c)(iii). Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use)
The Panel finds that policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Complainant’s registration of the HEINEKEN mark with the appropriate trademark authorities confers constructive knowledge upon the public of Complainant’s rights in the mark. Therefore, Respondent’s registration of the disputed domain names incorporating Complainant’s mark despite its constructive knowledge of Complainant’s rights in the HEINEKEN mark is evidence of Respondent’s bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
The Panel further finds that Respondent’s registration of
domain names incorporating Complainant’s well-known registered mark with the
addition of generic or descriptive terms, suggests that Respondent knew of
Complainant’s rights in the HEINEKEN mark.
Similar to the holding in Samsonite Corp v. Colongy Holding,
FA94313 (Nat. Arb. Forum Apr. 17, 2000) that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration, the Panel in the present case finds that Respondent likely chose
the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com>
domain names based on the distinctive and well-known qualities of Complainant’s
HEINEKEN mark. Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds that policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <heinekenpremiumlight.com> and <heinekenpremiumlightlager.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 10, 2006
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