WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diageo Brands B.V., Diageo North America, Inc. and United�Distillers�Manufacturing,�Inc. v. iV a.k.a. Alec Bargman
Case No. D2004-0627
1. The Parties
The Complainants (hereinafter individually and collectively) are Diageo Brands B.V. (Netherlands), Diageo North America, Inc., and United Distillers Manufacturing,�Inc. (United States of America), represented by Arent Fox PLLC, United�States�of�America.
The Respondents are iV a.k.a. Alec Bargman, Woodland Hills, California, United�States�of�America (hereinafter referred to as “Respondent”), represented by Alec Bargman, United�States�of�America.
2. The Domain Names and Registrar
The disputed domain names , , , , 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on August�11,�2004. On August�13,�2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On that same day, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the�“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the�“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the�“Supplemental�Rules”). In accordance with the Rules, Paragraphs�2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August�17,�2004. In accordance with the Rules, Paragraph�5(a), the due date for Response was September�6,�2004. The Response was filed with the Center on September�7,�2004. The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on September�13,�2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph�7. As a preliminary matter the panelist must determine whether the late response should be considered. Insofar as the Response appears to have been filed in the morning of the day after the deadline for filing the Response, and before the panelist was appointed and any substantive review commenced, the Panel has considered the contents of the late Response. The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale, WIPO Case No. D2000-0378 (June�22,�2000). 4. Factual Background Complainants are subsidiaries and affiliates of Diageo PLC (formerly known as Guinness plc and Arthur Guinness & Sons plc), known worldwide for its beverages. In connection with their parent company Diageo PLC, Complainants produce and market over 200 spirits and wines in over 200 countries under a variety of marks including those at issue here. Complainant United Distillers Manufacturing Inc., and its related companies own the GORDON’S brand in the United States. Complainant Diageo Brands B.V. and its related companies own the GORDON’S brand in the rest of the world as well as the GILBEY’S, TANQUERAY and TANQUERAY STERLING brands worldwide. Complainant Diageo North America, Inc., and its related companies own the POPOV and RELSKA brands worldwide. Complainants own over 2000�registrations and pending applications for those six marks (hereinafter “the Marks”) in over 200 countries including the United States. (See Annex 4 to the Complaint.) Complainants and their predecessors have used continuously: (i) the GILBEY’S mark in the United States for producing and marketing GILBEY’S gin and vodka since at least 1857; (ii) the GORDON’S mark in the United States for producing and marketing GORDON’S gin and vodka since at least 1855; (iii) the POPOV mark in the United States for producing and marketing POPOV vodka since at least 1960; (iv) the RELSKA mark in the United States for producing and marketing RELSKA vodka since at least 1952; (v) the TANQUERAY mark in the United States for producing and marketing TANQUERAY gin since at least 1892; and (vi) the TANQUERAY STERLING mark in the United States for producing and marketing TANQUERAY STERLING vodka since at least 1989. Complainants also have been using the Marks on other products including ice buckets, trays, cocktail shakers, umbrellas, polo shirts, chairs, coasters, glasses, hats, jackets, sampling cups, T-shirts and posters. Complainants and Diageo PLC also own domain names incorporating the Marks and operate commercial websites about their products using them, for example: and . For purposes of this opinion, these domain names are included in “the Marks” defined above. Complainants advertise and market their products, including the gins and vodkas, under the Marks in a variety of channels worldwide such as printed publications, radio, television, the Internet and billboards. They have expended significant resources advertising and promoting their products under the Marks and, as a result, the Marks are well known throughout the world. Alec�Bargman is listed as the administrative, technical and billing contact for the Domain Names as well as the domain name, with an address in Woodland Hills, California. In his Response to the Complaint, Alec Barman identified himself as the Respondent, providing the same Woodland Hills, California address. Alec Bargman is also President of Synertech, a business selling web design, hosting, domain registration and consulting services. Synertech is the registration service provider for both the Domain Names and . Synertech uses the Woodland�Hills, California address mentioned above. On or about February�14,�2001, Complainants’ in-house counsel sent a cease and desist letter to Respondent concerning the unauthorized registrations and uses of the Domain Names , and . The letter demanded that Respondent cease using those Domain Names and transfer the registrations for the Domain Names to Complainants. Respondent did not respond to this letter, cease using the domain names, or transfer the registrations. Around December�2001, Complainants discovered that Respondent had registered the following additional domain names: , , The “iv” site provides information on vodka brands including Complainants’ GILBEY’S, GORDON’S, POPOV, RELSKA, TANQUERAY and TANQUERAY STERLING. Moreover, the site has been offering a “gift shop,” a “marketplace” and “services” including advertising for businesses on the “iv” site through the purchase of banners, board headers and side bars. The services or merchandise advertised on the site has included: “PayPal” services, Russian gifts, gambling services, and Alec Bargman’s own Internet services (“”). As of February�20,�2001, and were directed to the “iv” site, and as of February�1,�2001, was directed to the “iv” site. As of the filing date of the Complaint, there were no websites accessible at those domains. On or about June�13,�2002, Complainants’ outside counsel sent another cease and desist letter to Respondent regarding his failure to respond to the earlier letter, the ongoing registrations, uses and renewals of the Domain Names, and Respondent’s use of Complainants’ brand bottle design images on the “iv” site. On June�28,�2002, Alec Bargman responded by telephone to the cease and desist letter informing Complainants’ outside counsel that the “iv” site was a hobby site for non-commercial activities, that he was making fair use of the Marks and bottle design images, and that he should have fair compensation for maintaining the Domain Names. He proposed transferring the Domain Names if Complainants would sponsor Respondent’s “iv” site. He also indicated that fair compensation for the Domain Names would be cheaper than commencing a UDRP proceeding but would not specify a dollar amount. Attempting to end the dispute, Complainants offered Respondent $250 to transfer the Domain Names based on the registration costs. In response, he first demanded $1000 then $2000 to transfer the Domain Names; eventually the parties agreed to $1500. Complainants’ counsel sent Respondent a letter on September�26,�2002, acknowledging acceptance of the $1500 and enclosing documents to transfer the Domain Names. Respondent failed to respond to this or other attempts Complainants made to contact him. Thereafter Complainants discovered: (1) Respondent renewed the registrations for the Domain Names; (2) some of the Domain Names continued to redirect the public to the “iv” site (whereas others did not redirect the public to any site); (3) there were additional images of Complainants’ bottle designs on the “iv” site; (4)�Respondent was now using Complainants’ SMIRNOFF mark as well as a misspelling of it as a meta tag; and (5) there were additional banner advertisements and links for various businesses including Alec Bargman’s Internet business. Thus, Complainants’ outside counsel sent another cease and desist letter to Respondent. By e-mail correspondence, Respondent stated, among other things: “Your client has already spent a lot of money on you to get something from me, that they could have done by just contacting me directly and offering a fair amount of money or some other arrangements. . . . I will accept $1500 for each domain you are interested. That offer is good for 1 week only from tomorrow (April�1,�2004). After that the price will go up.” Thereafter, Respondent registered the domain names and and he included an image of the GILBEY’S bottle design on the “iv” site. No websites were available at those addresses. Moreover, Respondent has registered scores of other domain names using third-party marks along with the word “vodka.” 5. Parties’ Contentions A. Complainants The Domain Names incorporate the Marks with insignificant changes, thus the Domain Names are confusingly similar if not identical to the Marks. Respondent lacks any rights or legitimate interests in the Domain names. In view of Complainants’ many registrations for and long-term use of the Marks worldwide, as well as the goodwill and reputation associated with the Marks, it is impossible to conceive of any circumstance in which Respondent could legitimately use the Domain Names without creating a false impression or association with Complainants. Respondent registered the Domain Names aware of Complainants’ rights in the Marks having no intention to use the Domain Names in connection with any type of bona fide offering of goods or services. Respondent is using the Domain Names to trade on Complainants’ good will in the Marks to lure Internet users to Respondent’s commercial site. Similarly, Respondent’s passive holding of seven of the eleven Domain Names does not demonstrate any bona fide use of the Marks. Respondent has not been commonly known by the Domain Names, has no legitimate rights in the Domain Names, and is not making any legitimate noncommercial or fair use of the Domain Names. Respondent registered and is using the Domain Names in bad faith. He registered the Domain Names primarily for the purpose of transferring them to Complainant for valuable consideration in excess of out-of-pocket costs directly related to the Domain Names. Respondent also registered the Domain Names to prevent Complainant from reflecting the Marks in corresponding Domain Names and has engaged in a pattern of such conduct with others. Furthermore, Respondent has used the Domain Names to intentionally attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Marks. B. Respondent Respondent asserts that he has one of the largest collections of vodka in the world and his website relates to that collection; it is not for profit. He also claims the “iv” site is not part of the Synertech business and that he collected the majority of information displayed on the site from either Respondent’s own collection, sources found on the web, and manufacturers who wanted to be included in the site’s directory. Respondent further claims that he registered as a primary domain for the collection site. He reserved the Domain Names in early 1998 for the same reason he collects the vodka memorabilia. They were not purchased with the intent to resell them to the trademark owner or to someone else, or to use them in bad faith. With regard to another dispute over a domain name, Respondent asserts that he transferred the immediately and was compensated $250 for doing so. Respondent acknowledges that there are several aspects of the “iv” site that might indicate future possibility of income, but so far there has been none generated from the site. He claims that the site has been a great burden on his resources which is why when Complainants’ offered to reimburse him for the expenses, he did not mind getting the money. Respondent further acknowledges that he has about 100 different domain names that he would not mind giving back to the trademark owners for reasonable compensation. And Respondent maintains that he removed pictures of Complainants’ products from the website when he was not required to do so. 6. Discussion and Findings Paragraph�4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar This element contains two parts: (1) do Complainants have rights in the Marks and; (2)�are the Domain Names identical or confusingly similar to the Marks. Complainants have established rights in the Marks based on their long-standing use and registration of the Marks with the United States Patent and Trademark Office. Those registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June�1,�2004). Regarding the second element, and contain Complainants’ marks RELSKA and TANQUERAY STERLING in their entirety. Similarly, , , , , It is well settled that the addition of the gTLD “.com” is not significant in determining whether the Domain Names are identical or confusingly similar to the mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September�4,�2000). Similarly, adding a word such as “vodka,” that is descriptive of the goods offered by Complainants under its Marks, does not distinguish the Domain Names from the Marks but rather supports a finding of confusing similarity. Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 (January�20,�2004); Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020 (March�22,�2001). Likewise, omitting the letter “S” from Complainants’ GORDON’S mark in , omitting an apostrophe from Complainants’ GILBEY’S and GORDON’S marks in and , and adding a hyphen to Complainants’ marks to obtain the and For the foregoing reasons, the Panel finds that Paragraph�4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests Complainants must prove that Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant makes a prima facie showing that a Respondent has no legitimate interests or rights in the domain names at issue, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO�Case No. D2000-0270 (June�6,�2000). Pursuant to Paragraph�4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph�4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainants have carried their burden of proving that Respondent has no rights to or legitimate interests in the Domain names. It is uncontested that Complainants have not licensed or otherwise authorized Respondent to use the Marks for any purpose. In fact Complainants notified Respondent on numerous occasions that his registration of the Domain Names violated Complainants’ rights in the Marks. Furthermore Respondent adduced no evidence attempting to show that he or his company has been commonly known by the Domain Names. Respondent also failed to rebut Complainants’ proof that Respondent did not use the Domain Names in connection with a bona fide offering of goods or services. “[C]onsideration of good faith is a key issue in determining whether use is bona fide under the policy.” San Francisco Museum of Modern Art v. Joshua S. Drapiewski, WIPO Case No. D2000-1751 (April�25,�2001). Based upon the numerous registrations for the Marks and the goodwill and reputation associated with them, it is apparent that Respondent registered the Domain Names from the beginning, and continued to do so during this dispute, fully aware of Complainants’ rights in the Marks and with the intention of creating a false impression that Respondent is somehow associated with Complainants. That is bolstered by the facts that (1) Respondent had a noninfringing domain name () but chose eleven infringing ones; and (2) Respondent is using the Domain Names to divert Internet users to its “iv” site which relates to vodka. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (November�16,�2000) (finding no rights or legitimate interests because complainant’s famous mark “is not one that the respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant”). Respondent’s passive holding of seven of the eleven Domain Names is additional evidence that the Domain Names are not being used in connection with a bona fide offering of goods or services. See Paws, Inc. v. garfieldonline, NAF Case No. FA 0105000097328 (holding that the registration and passive holding of a domain name fails to demonstrate any use in connection with a bona fide offering of goods or services). Likewise his stockpiling of scores of domain names using the marks of third parties coupled with “vodka” is evidence he has no legitimate interests in the Domain Names. Boardwalk Bank v. Patrick Thorogood, WIPO No. D2000-0213 (May�20,�2000). Also, Respondent has failed to rebut Complainants’ proof that he has been using the Domain Names for commercial gain and to misleadingly divert consumers. The evidence strongly demonstrates that Respondent has been trading on the reputation and goodwill of the Marks incorporated in the Domain Names to lure Internet users seeking Complainants’ websites and information about Complainants’ products to Respondent’s commercial site. Respondent’s assertions that his web site is a hobby site for non profit purposes is belied by Respondent’s admission: “And while there are several aspects of the site that might indicate future possibility of income, so far there has been non [sic] generated from the site.” Strombecker Corp. v. Just Service, Inc., NAF Case No.�FA�94450 (May�31,�2000) (holding there were no rights or legitimate interests in the domain name despite the assertion that the domain name was registered for the “purpose of hosting a Web site for collectors items”). The fact that Respondent may not have made the profit he seeks from the site does not negate the commercial purpose of the site. See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October�1,�2001) (“[T]he failure to make a profit is not sufficient to remove the commercial nature of the activities conducted on Respondents’ website.”). Indeed on the “services” page of the “iv” website, Respondent has been maintaining an advertising business whereby for the rates set forth on the site, he will provide advertising for businesses on the site (e.g., banners - static/animated, board headers, side bars). In fact the site evidences the advertising he is running for businesses. Also, the commercial nature of the “iv” site is demonstrated by multiple ads Respondent is running for Internet services he sells through his Synertech business. Despite Respondent’s assertions to the contrary, the evidence of record clearly shows Respondent is using the Domain Names to misleadingly divert Internet users to his site for commercial gain. Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 (January�20,�2004) (holding “domain name is being used to attract Internet users to the respondent’s website, and as it is a commercial website that can only have been done for commercial gain (however small)”); see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October�1,�2001). For the foregoing reasons, the Panel finds that Paragraph�4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph�4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. Respondent claims that “[t]he main reason for purchasing domains was [the] same as getting the other vodka memorabilia” but it appears that Respondent registered the Domain Names to sell them to and leverage a business deal from Complainants. Both before Complainants filed this proceeding and in his Response, Respondent has bemoaned the fact that the “iv” site has been a great burden on his resources and he would like some help in maintaining the site. See, e.g., e-mail dated March�31,�2004, from Alec Bargman at Annex 5 to the Complaint. In correspondence to Complainants’ counsel, Respondent acknowledged that Complainants “are one of the largest producers of vodka. And the main reason for the site was to promote different brands of vodka with the help of the producers.” Thus, in addition to negotiating money to transfer the Domain Names, Respondent was seeking an advertising deal: “I�will also want the cooperation of your client’s marketing department regarding the future promotional opportunities [sic] on our site. . . . In this case we would consider talking to them about future display of their images on the site.” Kinko’s Inc. v. eToll, Inc. f/k/a E Corp., NAF Case No. FA 94447 (May�27,�2000) (holding that the registration of a domain name without permission was a form of leverage to extract a business deal from complainant); Boardwalk Bank v. Patrick Thorogood, WIPO Case No. D2000-0213 (May�20,�2000) (finding bad faith where Respondent acquired and held registrations in the domain name at issue and other domain names Respondent was holding for the purpose of enabling him to parlay his registrations into business opportunities by way of transfers of the registrations for consideration). Furthermore, Respondent continued to register domain names incorporating the Marks in the face of demands that Respondent cease using the Marks and transfer the registrations for the Domain Names to Complainants. There is also ample evidence of Respondent’s bad faith use of the Domain Names. On numerous occasions Respondent offered to sell the Domain Names to Complainants at a value far in excess of out-of-pocket costs with an admonition in one correspondence that the price would go up if Complainants do not take his offer by a certain time. EMI�PLC v. Jason Mace, WIPO Case No. D2000-0712 (August�30,�2000) (holding that an offer for sale at a value in excess of out of pocket expenses is prima facie evidence of bad faith). Complainants also adduced evidence that Respondent registered the Domain Names to prevent them from reflecting the Marks in corresponding domain names and engaged in a pattern of conduct of registering domain names incorporating the trademarks of others in which the Respondent has no rights. Respondent had a domain name for his site but registered eleven domain names using Complainants’ well known marks some of which he used to direct Internet users to his site and others he did not use as website addresses. In addition to the Domain Names, Respondent has registered scores of domain names using the marks of third parties and he has been involved in at least one law suit in federal court over such a domain name (). In his Response, Respondent claims that he transferred that domain name “right away” and was compensated $250, however in correspondence with Complainants’ counsel Respondent boasts that “[t]hey actually paid me 10 times what I spend on them,” and the fact that a lawsuit was filed against Respondent to obtain the transfer of the domain name is not to Respondent’s credit. Moreover, there is ample unrebutted evidence that Respondent has intentionally attempted to attract for commercial gain Internet users to his vodka-collection site where he is selling advertising and internet-related services, by creating a likelihood of confusion using the Marks (relating to alcoholic beverages, namely vodka) as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the products and services offered on the site. See Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 (January�20,�2004) (“[t]o the extent that any website linked to the domain name provided goods or services relating to beer or beer drinking, the likelihood of confusion would have been exacerbated”); Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102 (April�18,�2000) (holding respondent’s use of banner advertisements and pop-up windows in conjunction with a domain name incorporating complainant’s mark was a financially-driven attempt to draw Internet users, some of whom were searching for complainant’s web site, to the respondent’s site by “taking a free ride on the goodwill of complainant’s trademark”). Furthermore, persons using a search engine to locate Complainants are likely to be led to Respondent’s site due to the similarity of the domain names (complainants’ domain names: and ) and meta tags comprised of Complainants’ SMIRNOFF mark. Such conduct has been recognized by the U.S. Courts as an infringement of trademark rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). Even if an Internet user investigated and learned that Respondent’s site was not authorized or operated by Complainants, that does not diminish the fact that confusion, or at a minimum, initial interest confusion, can occur. See Cimcities LLC v. John Zuccarini D/B/A Cupcake Patrol, WIPO Case No. D2001-0491 (May�31,�2001) (holding that initial interest confusion constitutes bad faith). For the foregoing reasons, the Panel finds that Paragraph�4(a)(iii) of the Policy has been satisfied. 7. Decision For all the foregoing reasons, in accordance with Paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the Domain Names , , , , Harrie R. Samaras Dated: September�27,�2004
Sole Panelist
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