V&S Vin
& Sprit Aktiebolag v. IQ Management Corporation
Claim Number: FA0107000098440
PARTIES
The Complainant is V&S Vin & Sprit Aktiebolag, Stockholm, Sweden (“Complainant”) represented by Joanne Ludovici-Lint, of McDermott, Will & Emery. The Respondent is IQ Management Corporation, Belize City, Belize (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <absolutbeach.com>, registered with BulkRegister.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr., (Ret.) as Panelist.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 31, 2001; the Forum received a hard copy of the Complaint on July 30, 2001.
On August 1, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <absolutbeach.com> is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that the Respondent is bound by the BulkRegister 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 3, 2001, a Notification of the Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 23, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@absolutbeach.com by e-mail.
A timely response was received and determined to be complete on August 23, 2001.
The Complainant timely submitted a supplemental statement responding to the Respondent’s Response. The Panel considered the Complainant’s supplemental statement. The Respondent submitted an additional submission after the deadline for submissions, without the required fee. Since the Respondent’s submission was untimely, the Panel did not consider it.
On August 30, 2001, pursuant to the Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr., (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant. The Respondent requests that the Complainant be found to be engaging in reverse domain name hijacking for abuse of the administrative proceeding.
A. Complainant
The domain name <absolutbeach.com> registered by the Respondent is identical
or confusingly similar to the Complainant’s famous trademark ABSOLUT; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and used in bad faith.
B. Respondent
1. The Respondent contests the Complainant's allegation that any similarity between the domain name and the trademark is likely to confuse consumers.
2. The Respondent suggests that the Complainant’s claim of "incontestability" merely highlights possible faults in the Lanham Act.
3. The Complainant’s mark is a common dictionary word, and is not a coined term. "Absolut" is a common German dictionary word with a direct translation into English of "absolute".
4. The Complainant cannot have sole rights to every domain name that includes the word "absolut."
5. The Respondent registered the domain name absolutebeach.com on July 29, 2001 intending to construct a humorous website centered around the misspelling of the expression "absolute bitch". The Respondent chose to construct this site around such a misspelling as the Respondent intends for the site to pay its own way via sales of humorous t-shirts and other items. The Respondent intends to use the widely used web-based automated manufacturing and sales system provided by cafepress.com. Café Press has a "no swearwords allowed" policy, which is why the Respondent decided on using absolutebeach.com for its domain name. While registering the domain absolutebeach.com, an associate informed the Respondent that "absolute" is "absolut" in German, so it was likely that <absolutbeach.com> could be typed in error. On doing a WHOIS the Respondent found <absolutbeach.com> to be already registered, but decided to approach the owner to see if they would sell it. If it were cheap enough, the Respondent would buy it to ensure that the Respondent did not lose traffic to typos and if absolutebeach.com became popular in the future, it would protect the Respondent from "typosquatters".
6. The Respondent is not "luring" web surfers, as it has not registered the website <absolutbeach.com> in any search engines. The domain name <absolutbeach.com> cannot be registered in search engines, or visited by web surfers as no site exists. Surfers trying to reach absolutebeach.com but typing <absolutbeach.com> in error are instantly redirected to the correct website. absolutebeach.com contains no mention of the Complainant's trademark, and does not set out to confuse surfers by trying to appear to be associated with the Complainant. The Respondent is planning to use the website absolutebeach.com for a bona fide offering of products or services and <absolutbeach.com> is being redirected to that site to protect said website from surfer typing errors and in the future from typo squatters.
7. The Respondent is making a fair use of the German dictionary word "absolut" and the English dictionary word "beach" in the domain <absolutbeach.com> as typo protection for its base domain name absolutebeach.com.
8. The Respondent is not re-routing users to its pornographic website. The Respondent does not trap visitors to <absolutbeach.com> with pop-up windows.
9. The domain name <absolutbeach.com> was not registered or acquired in bad faith and is not used in bad faith.
1. The Complainant is V&S Vin & Sprit Aktiebolag, a corporation organized and existing under the laws of Sweden, having its principal place of business at Förmansvägen 19, SE-117 97, Stockholm, Sweden.
2.
This Complaint is based upon the famous trademark ABSOLUT and
variations thereof, which have been adopted and continually used in United
States commerce by the Complainant since at least as early as May 14, 1979, in
connection with the advertising and sale of a variety of products and services,
including inter alia, vodka and
entertainment services by means of a global computer network.
3.
The Complainant owns over 15 U.S. federally registered
trademarks on the Principal Register for ABSOLUT, alone and in combination with
other terms and designs. Many of these
U.S. federal registrations have achieved “incontestable” status under the U.S.
Lanham Act. 15 U.S.C. §§ 1065 and
1115(b). The Complainant also owns
registrations for the trademark ABSOLUT in approximately 130 other countries
throughout the world.
4.
The Complainant uses the trademark ABSOLUT in conjunction with
several Internet web sites, including absolut.com and absolutdirector.com. The Complainant uses these web sites to
promote its products and services over the Internet. The Complainant owns a U.S. federal registration for ABSOLUT for
providing information and entertainment by means of a global computer network.
5.
For decades, the Complainant has featured the trademark
ABSOLUT in block lettering on every bottle of ABSOLUT vodka and in advertising.
6.
For decades, the Complainant, through its distributors, has
been advertising and promoting its ABSOLUT vodka throughout the United
States. In 1981, the Complainant
introduced a unique and distinctive advertising campaign to promote its ABSOLUT
vodka, wherein the Complainant’s advertisements prominently feature the
trademark ABSOLUT in block text, often followed by a common word (e.g.,
ABSOLUT BRAVO). That advertising
campaign has earned numerous awards and substantial recognition.
7.
The Complainant has spent substantial sums of money on the
ABSOLUT advertising campaign in publications distributed to readers throughout
the world.
8.
The Complainant’s ABSOLUT vodka has been enormously
successful. The Complainant’s ABSOLUT
vodka is now the fifth best-selling international spirit brand in the
world. Corresponding total sales
revenues from ABSOLUT vodka per year are likewise enormous and have been for
decades.
9.
The Complainant has never used the phrase
"absolutbeach" in its advertising.
10.
As a result of the internationally famous ABSOLUT advertising
campaign, as well as the long-time, continuous, and substantially exclusive use
of the trademark ABSOLUT by the Complainant and its predecessors, the trademark
ABSOLUT has acquired significant goodwill, widespread public recognition and
fame.
11. The Complainant has vigorously protected the trademark ABSOLUT against unauthorized use by third parties.
12. The domain name <absolutbeach.com> is the subject of trademark infringement litigation currently pending in the United States District Court for the Eastern District of Virginia, Alexandria Division. That case, captioned as V&S Vin & Sprit Aktiebolag v. Christina Hanson et al., CIV. No. 01-164-A, involves the former registrants of the domain name <absolutbeach.com>, who had their registration for the domain name deleted, thereby enabling the Respondent in the instant case to register the domain name on July 29, 2001. Since the Respondent is not a party to the litigation pending in the Eastern District of Virginia, the outcome of that litigation has no bearing on the Panel’s decision in this proceeding.
13.
The Respondent, IQ Management Corporation, registered the
domain name <absolutbeach.com> on July 16, 2001, with
BulkRegister.
14.
The initial registrant of the domain name deleted its
registration of the domain name after the Claimant filed the federal trademark
infringement action. A third party,
Domain Register, registered the domain name on July 16, 2001, and used it to
offer pornography. On July 27, 2001, the
Complainant served Domain Register with the Complaint in the instant proceeding. Domain Register gave the domain name, free
of any charge, to the current registrant, the Respondent on July 29, 2001.
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.
The Respondent’s registered domain name <absolutbeach.com> is confusingly similar to the Complainant’s U.S. federally registered trademark ABSOLUT. Adding the word "beach" does not mitigate that confusion, particularly where as here, the remainder of the domain name, ABSOLUT, is a famous trademark with no non-trademark significance. See Out2com, Inc. v. Rustom Corp., FA 95896 (Nat. Arb. Forum Dec. 20, 2000) (finding the addition of generic words to a mark does not create a distinct new domain name and the domain names <out2travel.com> and <out2themovies.com> were confusingly similar to Complainant's mark OUT2 because they consist of Complainant's mark plus generic words); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (adding the term “models” to the registered mark Victoria’s Secret does not circumvent the Policy’s “identical or confusingly similar” test); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (combining the generic word “shop” with Complainant’s registered mark LL BEAN did not circumvent the Complainant’s rights in its mark nor avoid the confusing similarity aspect of the UDRP with respect to the domain name shopllbean.com). The Respondent’s registered domain name contains the identical mark, i.e., ABSOLUT, which appears in the Complainant’s U.S. federal trademark registration for ABSOLUT. See V&S Vin & Sprit Aktiebolag v. IEC, Inc. a/k/a Kenny Bartel, FA 97369 (Nat. Arb. Forum July 10, 2001) (domain name absolutpussy.com is confusingly similar to Complainant’s mark ABSOLUT, because domain name includes all of Complainant’s mark).
In addition, the disputed domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with the Complainant. See Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
The Respondent intends to use the website absolutebeach.com to construct a humorous website centered around the misspelling of the expression "absolute bitch" with the domain name <absolutbeach.com> being redirected to the absolutebeach.com site to protect said website from surfer typing errors and in the future from typo squatters. However, the Respondent has failed to show any demonstrable preparations for such use.
The Respondent claims that the pornographic site was operated by the prior owner of the domain name and should not be attributable to the Respondent. Considering the registration history of the domain name, it is relevant to consider the use of the domain name by each of the registrants. Domain Administrator used the domain name in connection with pornography.
The Respondent has no rights to or legitimate interest in the domain name <absolutbeach.com>. The Respondent is not licensed to use the mark ABSOLUT, nor does it have any contractual or other relationship with the Complainant that would entitle it to use the mark ABSOLUT. The Respondent is not commonly known by the name “ABSOLUT.” See Policy, ¶4(c)(ii); Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s Victoria’s Secret mark because of Complainant’s well-established use of the mark). As the domain name has been used in connection with pornography, the Respondent is not making a legitimate noncommercial or fair use of the domain name and is not using the domain name in connection with a bona fide offering of products or services. See MatchNet PLC v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where use is calculated to mislead consumers and tarnish Complainant’s mark); V&S Vin & Sprit Aktiebolag v. IEC, Inc., a/k/a Kenny Bartel, FA 97369 (Nat. Arb. Forum July 10, 2001) (use of domain name in conjunction with pornography not considered to be noncommercial or fair use, nor is such a use a bona fide offering of goods or services); See National Football League Properties, Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).
The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, which is bad faith under Policy ¶ 4(b)(iv). The Complainant contends that the use of a domain name which contains the mark ABSOLUT in connection with pornography is likely to tarnish and disparage the reputation and goodwill associated with the mark ABSOLUT.
The domain name was registered and used in bad faith. The Complainant’s trademark ABSOLUT is famous and the Respondent’s domain name <absolutbeach.com> is confusingly similar to the Complainant’s famous trademark. It is inconceivable that the Respondent was not aware of the Complainant’s trademark ABSOLUT when the Respondent registered the domain name <absolutbeach.com>. V&S Vin & Sprit Aktiebolag v. Kownacki, FA 95079 (Nat. Arb. Forum Aug. 8, 2000) (in view of the “fame” of Complainant’s ABSOLUT marks, Respondent knew or should have known of Complainant’s marks when it registered its domain name). Given the fame of the ABSOLUT trademarks and the other circumstances of this case, there is no reason for the Respondent to have registered and used the domain name <absolutbeach.com> other than to trade off of the reputation and good will of the Complainant’s famous ABSOLUT marks. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”). Trading on the goodwill of another’s mark to divert Internet users to pornographic web sites warrants a finding of registration and use in bad faith. See V&S & Sprit Aktiebolag v. IEC, Inc., a/k/a Kenny Bartel, FA 97369 (Nat. Arb. Forum July 10, 2001) (registration and use of absolutpussy.com in connection with pornography demonstrates bad faith); Bass Hotels & Resorts, Inc. v. Rodgerall, D2000-0568 (WIPO Aug. 7, 2000) (respondent’s use of the domain name basshotel.com which is confusingly similar or identical to Complainant’s mark, where the domain name resolves or links to sexually explicit web sites, is bad faith registration and use, by attracting for commercial gain users to a web site by creating a likelihood of confusion as to sponsorship or affiliation).
The Complainant has not engaged in reverse domain name hijacking.
DECISION
Based upon the findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name <absolutbeach.com>.
Charles K. McCotter, Jr., Panelist
Dated: September 14, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page