Allied Lomar, Inc. v. Zeb Williams / Old Nick Williams Co.
Claim Number: FA1704001725043
Complainant is Allied Lomar, Inc. (“Complainant”), represented by Suzann Moskowitz of The Moskowitz Firm LLC, Ohio, USA. Respondent is Zeb Williams / Old Nick Williams Co. (“Respondent”), represented by James L. Lester of Maccord Mason PLLC, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oldestnickdistillery.com>, and <oldestnickbourbon.com>, and <oldestnickwhiskey.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2017; the Forum received payment on April 3, 2017.
On April 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oldestnickdistillery.com, postmaster@oldestnickbourbon.com, postmaster@oldestnickwhiskey.com. Also on April 11, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 4, 2017.
Complainant submitted a timely Additional Submission on May 9, 2017.
Respondent’s Additional Submission was received on May 11, 2017.
On May 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the OLDE ST. NICK mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,851,340, registered Nov. 10, 2015). It has offered alcoholic beverages under the name Olde St. Nick since February 1991. Respondent’s <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> (the “Domain Names”) are confusingly similar because they include the mark entirely, and add terms which describe the exact types of goods which Complainant produces under that Mark, in the exact class of goods in which Complainant’s mark is registered.
Respondent has no rights or legitimate interests in <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com>. It is not licensed or authorized to use Complainant’s mark for any purpose, and Respondent is not commonly known as “Olde St. Nick.” Further, the domain names redirect to <oldnickwhiskey.com>, which is not affiliated with Complainant, and which sells a competing brand of alcoholic beverages.
Respondent registered and used <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> in bad faith. Respondent registered the domain names to compete with Complainant in bad faith and to profit off of Complainant’s goodwill built in the mark.
B. Respondent
Complainant has mischaracterized the Domain Names by using capital letters so that they read, “OldeStNick” when the corresponding parts of the Domain Names are actually written “oldestnick.” Respondent has omitted punctuation in Complainant’s OLDE ST. NICK mark, and so the Domain Names cannot reasonably be interpreted to read as Complainant asserts. Further, there is no evidence that Complainant has used the OLDE ST. NICK mark on any goods, and Respondent has filed for cancellation of Complainant’s registration of that mark. Complainant’s label has never been approved for sale in the United States under the federally required Certification of Label Approval (“COLA”) system, which means that Complainant[1] could not legally sell alcohol using the Olde St. Nick mark.
Respondent is the owner of the marks OLD NICK and THE SPIRIT OF OLD NICK (“Respondent’s marks”). They were filed for registration, allowed, and opposed by Complainant before any notice to Respondent of this dispute. Respondent has filed to cancel Complainant’s OLDE ST. NICK mark as Respondent’s marks have priority. Respondent’s marks, the history of the family business (one of the oldest whiskey distillers in North Carolina), and construction of the Old Nick Williams Co. distillery all demonstrate Respondent’s use and preparation to use the Domain Names in connection with a bona fide offering of goods and services. Respondent acquired the Domain Names because they include the phrase “Oldest Nick,” which is related to Respondent’s family business, the Old Nick Williams Company. The family has been involved in whisky production dating back to at least 1690. If parsed into words, the Domain Names would be “OldestNickDistillery.com,” “OldestNickBourbon.com,” and “OldestNickWhiskey.com.”
Respondent has neither registered nor used the Domain Names in bad faith because it has operated with a legitimate business intent, and has not intended to profit from any goodwill associated with Complainant. Complainant has never self-produced or sold product under its OLDE ST. NICK mark and there was no website presence of Complainant prior to Respondent’s registration of the Domain Names.
On March 20, 2017, Complainant filed a Notice of Opposition to Respondent’s OLD NICK and THE SPIRIT OF OLD NICK marks with the USPTO, in which it asserted priority based in part on the Olde St. Nick mark. Respondent requests that Complainant’s request for transfer of the Domain Names in this case be denied or, in the alternative, that the Panel decision be suspended pending resolution of the Opposition/Cancellation matters above stated.
C. Additional Submission--Complainant
Since domain names are not case-sensitive, a typical consumer would have no idea that Respondent purportedly intended the Domain Names to be read as “Oldest Nick” rather than “Olde St. Nick.” There has never been a product called “Oldest Nick Bourbon,” nor has Respondent even suggested that it has any intent to create such a product. Respondent has never used the phrase “Oldest Nick” in any pubic capacity whatever. Further, the omission of a period does not avoid or negate confusing similarity, because periods denote hierarchies in domain names rather than abbreviations.
Notwithstanding Respondent’s assertion to the contrary, Complainant’s website for <oldestnick.com> was active since 2013.
While Respondent says it has a long history as one of the oldest whiskey distillers in North Carolina, it omits the fact that its operations were on hiatus for nearly 100 years from 1920, when national Prohibition began, until Respondent began its current venture in 2015, and all of Respondent’s members are new to the distilling business.
The Domain Names would cause a typical consumer to think they are associated with Complainant, since they contain Complainant’s OLDE ST. NICK mark in its entirety. A consumer looking for Olde St. Nick bourbon who types in the corresponding letters on his keyboard would wind up at Respondent’s website.
As to Respondent’s reference to Complainant’s Notice of Opposition to Respondent’s OLD NICK and THE SPIRIT OF OLD NICK marks, those matters are adjudicated by the Trademark Trial and Appeal Board, an administrative agency, not a court, and the Notice of Opposition does not involve the Domain Names. ICANN Rule 18 is clear that “other legal proceedings” as used in that Rule means court proceedings, and ICANN Rule 3(b)(xi) specifically limits the inquiry to “legal proceedings” related to the relevant domain names.
D. Additional Submission—Respondent
Respondent asks the Panel to disregard Complainant’s Additional Submission as it does not introduce previously unavailable facts.
Respondent intended the Domain Names to be read as “Oldest Nick” and would be read that way by consumers, who would not expect “old” to be spelled with an “e” at the end. Complainant argues that no “Oldest Nick” products have ever been sold, but omits the fact that no “Olde St. Nick” products have ever been sold in the United States.
Respondent is using the Domain Names in connection with a bona fide offering of goods and services.
Respondent was unaware of Complainant at the time of registration, and Complainant’s Internet Archive evidence does not appear to be related to Complainant.
Preliminary Issue: TRADEMARK DISPUTE OUTSIDE THE SCOPE OF THE UDRP
On March 20, 2017, Complainant filed a Notice of Opposition to Respondent’s OLD NICK and THE SPIRIT OF OLD NICK trademark applications (Response, p. 5), and Respondent has filed a counterclaim in that same proceeding to Cancel Complainant’s OLDE ST. NICK trademark (Response, p.3). Because of the pendency of these matters, Respondent requests the Panel either to deny Complainant’s request for transfer of the Domain Names or, in the alternative, to suspend its ruling in this case until the Opposition and Cancellation matters are resolved. Complainant argues that the Opposition and Cancellation matters are not “legal proceedings” within the meaning of ICANN Rule 18(a), and that neither of them involves the Domain Names. ICANN Rule 18(a) provides as follows:
18. Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
Both the Opposition and Cancellation matters are pending before the Trademark Trial and Appeal Board (“TTAB”). See Annex 1 to Response, and Annex 6 to Complainant’s Additional Submission. The TTAB is an administrative agency, not a court, and neither the Opposition nor the Cancellation matter directly involves the Domain Names. Thus, it appears that Rule 18(a) does not apply in this case, and the Panel must proceed to adjudicate the domain name dispute that has been submitted to it. Even if the Rule were applicable here, the Panel has discretion under it to proceed in any event and would be inclined to do so in order promptly to resolve a dispute that clearly affects the ability of both parties to move ahead with their respective business plans pending the outcome of the TTAB proceedings. See, W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”).
Decision on the Merits of the Case
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 rights in the OLDE ST. NICK mark pursuant to its registration with the USPTO (Reg. No. 4,851,340, registered Nov. 10, 2015). Annex 2 to Complaint. USPTO registrations confer rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent argues that Complainant cannot have rights in the OLDE ST. NICK mark because it has never used that mark on any goods, and that the label submitted by Complainant with its application for trademark registration has never been approved for sale in the United States under the COLA system and its product therefore cannot be legally sold in the U.S. Nevertheless, a trademark registration has universally been accepted as evidence of a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See, cases cited above. Respondent seeks in the matters pending before the TTAB to cancel Complainant’s trademark, but as the matter stands now Complainant has a valid and existing USPTO trademark registration for its OLDE ST. NICK mark and this is sufficient to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> are confusingly similar because they include the mark entirely (less the spaces and the punctuation), and add terms which represent the exact class of goods in which Complainant’s mark is registered (along with the gTLD “.com”). Spacing and “.com” are irrelevant under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Elimination of punctuation may also be ignored when that punctuation denotes an abbreviation. See Dawson v. Doctor, FA 521036 (Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”). Addition of descriptive words may serve to enhance confusion. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Respondent argues forcefully that the Domain Names do not contain any reference to “St.” Nick with a period, and without the period they cannot be read or interpreted as Complainant asserts. Respondent says it intended them to be read as “oldest Nick” rather than “Olde St. Nick” and that they would certainly be read that way by consumers, who would not expect to see “old” spelled with an “e.” This argument is a long stretch at best. “Oldest Nick” is implausible in the context of a brand or product name; a typical consumer would be far more likely to recognize “Olde St. Nick” in any of the Domain Names than “Oldest Nick.”
In any event, in evaluating whether a domain name is confusingly similar to a Complainant’s mark, the Panel looks at two things: The Complainant’s mark, in this case OLDE ST. NICK, and the domain names, in this case <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> . The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) first confirms that one compares the domain name to the complainant’s mark and then explains the substance of the test, as follows:
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Id., Sec. 1.2. See, also SoftCom Technology Consulting, Inc. v. Olariu Romero/Orv Fin Group S.L., WIPO Case No. D2008-0792, Wal-mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662,
This standard contemplates a threshold, standing-oriented test, in which a complainant would need to show only that its trademark is present and recognizable as such in the domain name in order to meet the requirements of Policy ¶ 4(a)(i). This standard serves essentially as a standing requirement and is easily met. See, Project Management Institute v. CMN.com, WIPO Case No. D2013- 2035. Complainant’s OLDE ST NICK mark is clearly present and recognizable as such within each of the Domain names. On this basis the Panel finds that the Domain Names are confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> Domain Names are identical or confusingly similar to the OLDE ST. NICK mark, in which Complainant has rights, all within the meaning of Policy ¶4(a)(i).
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not known by the Domain Names, (ii) Complainant has not authorized or licensed it to use the Domain Names or its Mark, and (iii) the Domain Names all redirect to Respondent’s primary website at <oldnickwhiskey.com>, which is not a legitimate or fair use. On this evidence the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent bases its claim to rights and legitimate interests on the Old Nick Williams Company name that was used historically, with variations, by ancestors of Respondent Zeb Williams in connection with a Carolina whiskey business, primarily from around 1865 until Prohibition went into effect in 1920, continuing a distillery business that started around 1768 and operated under other, related names, e.g., Williams Distillery (Annex 4 to Response). The current iteration of the Old Nick Williams Company started around 2015, when Respondent Zeb Williams and others reconstituted the company as a corporation (Annex 5 to Complaint) and began planning for a new distillery to be constructed at or near the location of their ancestors’ former works in North Carolina (Annexes 3 and 4 to Response). A document that Respondent says is minutes from a corporate meeting in March 2015 purports to show that persons present discussed “Old Nick,” “Old Nick Williams,” and “Oldest Nick” as possible tradenames at that time. Respondent registered the Domain Names in September, 2016. Respondent asserts that this demonstrates its use and preparation to use the Domain Names in connection with its yet-to-be-constructed distillery and business operations. Respondent also states that it owns the marks OLD NICK and SPIRIT OF OLD NICK, and has applied to the USPTO for registration of the same (Annex 2 to Response). Nowhere except in the Domain Names themselves, however, has Respondent actually used the name “Oldest Nick” or any variation thereof in any public way, and evidence that it is commonly known by that name is wholly lacking. Likewise, there is no evidence that it has used or made demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Using the Domain Names to attract and redirect Internet traffic to Respondent’s principal website at <oldnickwhiskey.com> does not qualify as using them in connection with a bona fide offering of goods and services. Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The names Respondent actually uses appear to be “Old Nick Williams Company,” its corporate name, and its primary domain name, <oldnickwhiskey.com>. “Oldest Nick” appears only in the Domain Names.
Based upon the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Policy ¶ 4(b)(iv) provides that a respondent’s use of a domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website or of a product or service on it is evidence of bad faith. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) There is no question that Respondent is presently doing just that: using the Domain Names, which incorporate Complainant’s OLDE SAINT NICK mark in its entirety, to attract Internet users to its commercial website. Users who type in “oldestnickbourbon.com” or “oldestnickwhiskey.com” on their keyboards reach the Domain Names, where they are redirected to Respondent’s website at <oldnickwhiskey.com>, at which Respondent markets its own whiskey and bourbon products, which compete (or will in the future compete) with Complainant’s business. See, Annex 4 to Complaint. This is manifest bad faith use, as Respondent continues this use in the face of its actual knowledge of Complainant’s rights in its OLDE ST NICK mark.
Determining Respondent’s intent as of September 2016, when Respondent registered the Domain Names, is not so simple. The only evidence of Complainant’s rights in its OLDE ST NICK mark as of that time is its USPTO registration thereof, dated November 10, 2015, and perhaps a website at <oldestnick.com> which shows an image of a label or a drawing for a label with the words “Very Olde St. Nick, Ancient Cask, Bourbon Whiskey” printed around the image of an elderly man. There is no evidence, however, of an actual presence in the market of any whiskey or bourbon product being marketed under the name OLDE ST. NICK or any variation thereof at the time the Domain Names were registered. In fact, the evidence is to the contrary. Even Complainant’s evidence is clear that it was not producing or selling any product under the name OLDE ST. NICK at that time. Its newspaper article (Annex 3.1 to Complaint) dated February 13, 2016, describing Complainant’s move to Bardstown, Kentucky to produce whiskey and bourbon, is clear that that move had yet to occur and makes no mention of any trade or brand names proposed for its products, let alone OLDE ST. NICK. In short, there is no evidence of any market presence, reputation, or goodwill associated with OLDE ST. NICK for bourbon or whiskey as of September 2016. It is therefore difficult to find that Respondent (1) had actual knowledge of Complainant’s rights in OLDE ST. NICK or (2) had any commercial motive to register domain names that incorporated that mark, as there was no reputation or goodwill associated with it to take advantage of at that time.
The Policy is very clear that proof of both bad faith use and registration is required in order to make out a case for transfer. Other panels have followed this reasoning, relying on the plain wording of Policy ¶4(a)(iii), and the legislative history of the UDRP. See, Teradyne, Inc. v. 4tel Technology, No. 2000-0026 (WIPO May 9, 2000) (“it was not the intent . . . to extend the definition of ‘abusive registration’ to include domain names originally registered in good faith.” See, Weatherall Green & Smith v. Everymedia.com, No. D2000-1528 (WIPO February 19, 2001), Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) No. D 2001-0782 (WIPO August 14, 2001) (If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.”) Accord, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005). This reasoning is persuasive for the Panel in this case. The Policy is intended to provide a summary and inexpensive remedy for abusive domain name registrations. See, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Sec 4.1(c) (October 25, 1999) (The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.”) <http://www.icann.org/udrp-second-staff-report-24oct99.htm> Registrations originally made in good faith are not deemed abusive under the Policy and are not subject to cancellation or transfer based upon subsequent events.
It is also clear that the constructive notice of Complainant’s rights in OLDE ST. NICK afforded by its USPTO registration is not sufficient to support a claim of bad faith. The preferred rule, supported by a majority of Panels who have considered the matter, require proof of actual knowledge of a complainant’s rights to prove bad faith registration and use. Greencycle, Inc. v. Gail Loos/Ingenious Marketing, FA 1553841 (FORUM May 2014) (“the predominant viewpoint of UDRP panelists has been to reject that argument and insist on a respondent’s actual knowledge of a complainant’s trademark rights”). Custom Modular Direct LLC v. Custom Modular Homes, Inc., (“There is no place for constructive notice under the Policy”). Respondent states categorically that it was unaware of Complainant or any Olde St. Nick product prior to registering the Domain Names (Respondent Additional submission, p.2), and there is no evidence to the contrary.
The Panel has an abiding and persistent skepticism of Respondent’s actual knowledge and motives at the time it registered the Domain Names. Its own website at <oldnickwhiskey.com> makes no mention of any of its yet-to-be-produced products as being marketed under the brand name “Oldest Nick” or any variation of that name. Also, reading “oldestnick” as “Olde St. Nick” is much more obvious, easy and intuitive than Respondent’s asserted interpretation of “oldestnick” as “oldest Nick,” which is strained at best and wholly implausible. Nevertheless, in the final analysis, Complainant has failed to produce any credible evidence that Respondent knew of its OLDE ST. NICK mark and intended to benefit commercially from that mark when it registered the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names have not been registered and used in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oldestnickdistillery.com>, <oldestnickbourbon.com>, and <oldestnickwhiskey.com> domain names REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: May 23, 2017
[1] The Response says that Respondent could not legally sell alcohol under the Olde St. Nick mark but its Petition for Cancellation of Complainant’s mark (Annex 1.0 to Response) clearly indicates that Respondent meant to say “Complainant,” not “Respondent.”
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