WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guinness UDV North America, Inc. v. Dallas Internet Services
Case No. D2001-1055
1. The Parties
The Complainant is Guinness UDV North America, Inc. of 6 Landmark Square, Stamford, Connecticut, 06901-2704, USA.
The Respondent is Dallas Internet Services (Global Media Consulting/Internet Services), of 6370 International Parking #410, Dallas, TX 75081, USA.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is .
The registrar of the domain name as of the date of the Complaint is Tucows, Inc. of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on August 22, 2001, and in hard copy August 24, 2001.
Upon receipt of the email copy of the Complaint, the Center sent the Complainant an "Acknowledgment of Receipt of Complaint" on August 24, 2001, by email, with a copy being sent to the Respondent by email.
The Center sent a Request for Registrar Verification to Tucows Inc. on August 27, 2001, by email. Tucows Inc. responded to the Center�s request by email on August 30, 2001, verifying (1) Tucows Inc. was in receipt of the Complaint, (2) that Tucows was the Registrar for the domain name in dispute and that (3) the Uniform Domain Name Dispute Resolution Policy applies to the domain name. It also informed the Center that the Respondent was not the current registrant of the domain name. The current registrant was identified as David Smirnof 902-32 Hillsboro Avenue, Toronto, Ontario. Tucows Inc. also indicated that the domain name was on a hold status.
Upon enquiry from the Center, Tucows confirmed that the Registrant was Dallas Internet Services. Furthermore, Tucows confirmed by e-mail that the transfer of the domain name to David Smirnof had been cancelled since it occurred on August 28, 2001, after receipt of the Complaint by the Center.
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on October 22, 2001, to the Respondent by Post/courier, facsimile and email, and to the Complainant by email.
The Center sent a Notification of Respondent Default to Respondent on November 14,2001 by email.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on December 4, 2001, via email. A copy was also sent to the Panel on the same date by email. The Panel was appointed on December 4, 2001.
All other procedural requirements appear to have been satisfied.
4. Factual Background
The Complainant, "Guinness UDV North America, Inc." is a Connecticut corporation with a principal place of business at 5 Landmark Square, Stamford, Connecticut 06901-2704. The Complainant is the owner of many trademark registrations and applications, including the following:
TRADEMARK
U.S. REGISTRATION NO.
SPECIFICATION OF GOODS AND SERVICES
DATE REGISTERED/DATE OF FIRST USE
SMIRNOFF (stylized)*
513,428
Intl. Class 33: Vodka
August 9, 1949 / 1914
PIERRE SMIRNOFF*
623,237
Intl. Class 33: Vodka
December 28, 1954 / 1934
SMIRNOFF SILVER*
907,665
Intl. Class 33: Vodka
February 9, 1971 / 1969
STE PIERRE SMIRNOFF FLS*
1,253,139
Intl. Class 33: Vodka
May 31, 1983 / 1934
SMIRNOFF
1,887,385
Intl. Class 33: non-alcoholic cocktail mixers
April 4, 1995 / 1994
SMIRNOFF & Design
2,045,650
Intl. Class 33: Vodka
March 18, 1997 / 1958
SMIRNOFF & Design
2,047,345
Intl. Class 33: Vodka
March 25, 1997 / 1958
SMIRNOFF CITRUS TWIST
2,187,153
Intl. Class 33: Vodka
September 8, 1998 / 1993
SMIRNOFF & Design
2,198,443
Intl. Class 33: Vodka
October 20, 1998 / 1997
SMIRNOFF
2,351,262
Intl. Class 16: pens, printed materials, namely, note pads and napkins, lithographic prints, and posters
May 23, 2000 / 1971
SMIRNOFF
2,331,088
Intl. Class 6: Metal Key Chains
March 21, 2000 / 1971
SMIRNOFF
2,331,119
Intl. Class 34: Cigarette Lighters
March 21, 2000 / 1985
The above referenced trademarks are registered in the United States. Those trademarks appearing with asterisks are incontestable under Section 15 of the Lanham Act.
TRADEMARK
U.S. SERIAL NO.
SPECIFICATION OF GOODS AND SERVICES
DATE FILED
SMIRNOFF ICE
75/938,668
Intl. Class 33: Beverage Alcohol
March 8, 2000
SMIRNOFF RASBERRY TWIST
76/011,381
Intl. Class 33: Vodka
March 28, 2000
SMIRNOFF VANILLA TWIST
76/011,383
Intl. Class 33: Vodka
March 28, 2000
SMIRNOFF ORANGE TWIST
76/011,385
Intl. Class 33: Vodka
March 28, 2000
SMIRNOFF MUSIC CENTER
76/113,222
Intl. Class 41: Entertainment services namely, sponsorship of musical concerts and like performances and requests
August 21, 2000
SMIRNOFF
76/120,781
Intl. Class 42: Providing information via a global computer information network for disseminating information in the fields of art, entertainment, culture, games, food, and beverage alcohol
August 31, 2000
SMIRNOFF & Design
76/120,782
Intl. Class 42: Providing information via a global computer information network for disseminating information in the fields of art, entertainment, culture, games, food, and alcoholic beverages
August 31, 2000
SMIRNOFF ICE
76/064,361
Intl. Class 32: Flavored brewed malt beverage
June 6, 2000
SMIRNOFF ICE & Design
76/069,257
Intl. Class 32: Flavored brewed malt beverage
June 13, 2000
SMIRNOFF & Design
76/069,259
Intl. Class 32: Flavored brewed malt beverage
June 13, 2000
SMIRNOFF
78/028,755
Intl. Class 32: Flavored brewed malt beverages
October 3, 2000
Complainant, in addition to the above trademark registrations and trademark applications for registration, owns in excess of eight hundred (800) marks throughout the world consisting of, or prominently modeling, the word "Smirnoff," used in connection with, or sale of, alcoholic drinks and related products (together with the above marks, the SMIRNOFF Marks). The Complainant has used these marks extensively throughout the world, since at least as early as 1939, as trademarks for its vodka products. The Complainant�s longstanding and continuous use of the SMIRNOFF Marks has resulted in the SMIRNOFF Marks becoming famous and favorably recognized in the relevant trade and by the public as indicating a source of vodka and related goods and services.
Complainant also enjoys unparalleled worldwide success in connection with its sales of vodka products under the SMIRNOFF brand. Between the years of 1992 and 2000, for example, Complainant�s net sales of vodka under the SMIRNOFF Marks amounted to several hundreds of millions of dollars and tens of thousands of cases. In the year 2000 alone, for instance, Complainant sold vodka products in excess of a half a billion U.S. dollars.
In addition, Complainant maintains websites located at and the following domain names that link directly to the main SMIRNOFF website: , , , , , , , , , and . This website provides brand information for the SMIRNOFF Marks.
When Complainant first became aware of this Domain Name it was held by Global Media Consulting ("GMC") with an address at PO Box 42, Miami, FL 33282, U.S.A. On March 12, 2001, Complainant sent GMC a cease and desist letter stating that its registration of the Domain Name violated the Policy. Shortly thereafter, GMC transferred the Domain Name to Internet Services ("IS") with an address at PO Box 425, Miami, FL 33282, U.S.A. IS continued to own this Domain Name until on or about August 1, 2001 at which point it transferred the Domain Name to the Respondent in this Proceeding, namely Dallas Internet Services, with an address at 6370 International Parkway #410 Dallas, TX 75081, U.S.A.
GMC, immediately after being informed by Complainant of the infringing nature of its domain name registration, transferred the Domain Name to IS. GMC has a history of attempting to elude the owner of a famous trademark by falsifying its contact information on a domain name registration. See Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting (Administrative Panel Decision, WIPO Case No. D2000-1395 (January 4, 2001)) where the Panel held that GMC had deliberately provided false contact information when it registered , a misspelling of the famous Family Circle® marks used in connection with magazines. The facts show similarly evasive behavior in the instant case. GMC has transferred to IS in the past at least one other domain name consisting of a misspelling of a famous trademark. This domain name is a misspelling of the famous Mary Kay® trademark.
IS transferred the Domain Name to the Respondent. Both IS and the Respondent have owned domain names that consist of misspellings of famous trademarks. For example, the domain name , a blatant misspelling of the world-famous trademark Hyundai®, was owned by IS but is now registered to the Respondent. Likewise, , a misspelling of the trademarks of the famous kitchenware manufacturer Kitchen Aid®, was owned by both IS and the Respondent.
B. Respondent
Respondent defaulted.
Given the Respondent�s failure to file a Response to the Complaint, the Administrative Panel accepts as true and accurate all statements of fact relating to the domain name made by the Complainant in its submissions (see: Talk City Inc. v. Michael Robertson, WIPO Case D2000-0009, February 29, 2000; and EAuto, L.L.C. v. EAutoParts, WIPO Case D2000-0096, April 9, 2000).
5. Parties� Contentions
A. Complainant
The Domain name in dispute is identical or confusingly similar to Complainant�s SMIRNOFF mark.
There simply is no evidence to suggest that Respondent has any rights or legitimate interests in . To the best of Complainant�s knowledge, Respondent:
(a) has not used or engaged in any demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services; and
(b) is not commonly known by the Domain Name; and
(c) is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark.
The Respondent has registered and is using the Domain Name in bad faith. The Respondent had constructive, if not actual, knowledge of the Complainant�s world-famous trademarks and position in the liquor industry; the Domain Name was registered in order to offer it for sale; the Domain Name is being "passively held;" and the Respondent (as well as GMC and IS) is in the business of warehousing domain names consisting of misspellings of famous trademarks.
There is another independent basis for considering that Respondent�s ownership of the Domain Name satisfies the bad faith requirement of the Policy. Previous Panels have repeatedly held that "passive holding" of a domain name constitutes bad faith use.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided evidence of US registrations for its famous SMIRNOFF mark. I conclude that the Complainant -- as registered proprietor of the mark SMIRNOFF -- has satisfied the first requirement of this paragraph.
The second requirement is that the domain name be identical or confusingly similar to Complainant�s mark. The Domain Name consists of Complainant�s world-famous SMIRNOFF Mark minus the final "F." This mutilation of a famous mark or "typo-piracy" has been held on many occasions to remove none of the confusing similarity such a misspelling gives rise to. For example, in Diageo, plc. v. John Zuccarini (Administrative Panel Decision, WIPO Case No. D2000-0541 (August 22, 2000)) the Panel held (arbitrating a Complaint claiming that Respondent�s registration of infringed the Complainant�s world-wide famous GUINNESS marks) that "the elimination of the letter "s" between "guinnes" and "Guinness" does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark." That Panel concluded that the domain name was confusingly similar to the Complainant�s trademarks. See also L.L. Bean, Inc. v. Cupcake Patrol (Administrative Panel Decision, NAF Case No. FA0007000095105 (August 4, 2000)) ; Calvin Klein v. Spanno Industries (Administrative Panel Decision, NAF Case No. FA0007000095283 (August 21, 2000)) ; Microsoft Corporation v. M aka Tarek Ahmed (Administrative Panel Decision, WIPO Case No. D2000-0548 (July 21, 2000)) ; and Dow Jones & Co. Ltd. and Dow Jones LP v. John Zuccarini (Administrative Panel Decision, WIPO Case No. D2000-0578)) and
The logic of these prior decisions applies to the facts in the case leading to my conclusion that is confusingly similar to Complainant�s SMIRNOFF Marks.
B. The Respondent has no rights or legitimate interest in respect of the domain name.
There is no evidence to suggest that Respondent has any rights or legitimate interest is .
C. The Respondent registered and is using the domain name in bad faith.
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
I have concluded that the Respondent registered and has continued to act in bad faith. I have considered the following factors:
The Respondent had constructive, if not actual, knowledge of Complainant�s world famous trademarks and position in the liquor industry (see discussion in "4. Factual Background" above). Registration of a domain name containing a famous mark is strong evidence of bad faith. See Barney�s Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059).
It is evident that the domain name was registered in order to offer it for sale. The failure to make good faith use of a domain name indicates that the registrants primary intent was to sell. See Mondich v. Brown (Administrative Panel Decision, (WIPO Case No. D2000-0004), January 10, 2000). There is no evidence of any good faith use.
The domain name is being "passively held." Although a domain name holder is not under an affirmative duty to make use of a domain name, the passive holding of a domain name for a substantial period of time is an additional consideration that can legitimately be taken into account in concluding bad faith use of a domain name. Telstra Corp., Ltd. v. Nuclear Marshmallows (WIPO Case. No. D-2000-0003).
The Respondent did not register the name. However, there is strong evidence that the Respondent, IS, and GMC are indeed the same entity and the transfers of ownership were merely attempts to avoid detection and prevent the rightful owner of the domain name from effectively asserting its rights. First, GMC, immediately after being informed by Complainant of the infringing nature of its domain name registration, transferred the Domain Name to IS. Second, both GMC and IS share the same post office facility. Indeed, their addresses are virtually identical but for a single digit in the post office box number. The omission of the number "5" from the post office box number, if not deliberately evasive, was certainly erroneous. Third, GMC has a history of attempting to elude the owner of a famous trademark by falsifying its contact information on a domain name registration. See Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting (Administrative Panel Decision, WIPO Case No. D2000-1395 (January 4, 2001)) where the Panel held that GMC had deliberately provided false contact information when it registered , a misspelling of the famous Family Circle® marks used in connection with magazines. The facts show similarly evasive behavior in the instant case. Finally, GMC has transferred to IS in the past at least one other domain name consisting of a misspelling of a famous trademark. This domain name is a misspelling of the famous Mary Kay® trademark.
7. Decision
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name be transferred to the Complainant.
Kenneth A. Genoni
Sole Panelist
Dated: December 12, 2001
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