WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Early Times Distillers Company v. IP Admin / DNAV ASSOCS
Case No. D2007-1812
1. The Parties
Complainant is Early Times Distillers Company, Louisville, Kentucky, United States of America, represented by Seyfarth Shaw, Los Angeles, California, United States of America.
Respondent is IP Admin / DNAV ASSOCS, Tillamook, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2007. On December 10, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 10, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 13, 2007. The Center verified that the Complaint together with the amendment to 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 December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2008.
The Center appointed Gary J. Nelson as the sole panelist in this matter on January 25, 2008. 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.
4. Factual Background
Complainant is in the business of selling alcoholic beverages and has been the owner of a United States registration for the trademark EARLY TIMES since 1935 for whisky.
Respondent appears to have registered the domain name subsequent to the registration of EARLY TIMES by Complainant as a trademark.
5. Parties’ Contentions
A. Complainant
Complainant has made the following allegations:
Complainant owns the trademark EARLY TIMES for whisky and alcoholic beverages, namely, distilled spirits, in the United States and various foreign countries, and uses the EARLY TIMES mark on these and other goods.
EARLY TIMES whisky was first sold in the United States in 1860 and has been sold continuously in the United States since then, including during the periods of United States National Prohibition as a “medicinal” whisky, making it one of the longest-selling consumer products in United States history.
Complainant’s sales of whisky under the EARLY TIMES mark have been extensive and its gross sales in the United States have exceeded US$521 million since 1997.
EARLY TIMES whisky has also been advertised extensively. A print advertising campaign for EARLY TIMES whisky has run continuously in the United States since at least as early as 1950, making the campaign one of the longest-running campaigns for any consumer product in United States history. Since 1997 alone, expenditures on advertising for EARLY TIMES whisky in the United States have exceeded US $36 million.
Complainant has used the EARLY TIMES trademark on the Internet for many years prior to Respondent’s registration of the disputed domain name at websites accessible through the domain names and
Complainant and its predecessors-in-interest have licensed the EARLY TIMES mark for use in connection with clothing, as well as other collateral and gift merchandise, including sunglasses, pens, cards, keychains, fishing scales, fish finders, and catch and release tape measures. Such goods have been sold and distributed in the United States.
Complainant owns registrations of the EARLY TIMES mark for whisky and other potable distilled spirits in numerous countries throughout the world. Complainant first registered this mark in the United States in 1935.
Respondent registered the disputed domain name on March 28, 2007, long after Complainant’s EARLY TIMES trademark had been registered in the United States, and long after extensive sales of EARLY TIMES whisky and other goods had been achieved. Respondent’s website resolved to an operating website shortly thereafter. Respondent’s domain name incorporates the Irish/American spelling of the generic word “whiskey,” which includes the letter “e.”
The disputed domain name initially resolved to a website containing sponsored links pertaining to bar and bartender related products and various other goods and services. The disputed domain name now resolves to a website containing a number of sponsored links pertaining to whisky and other goods and services.
Respondent was on constructive notice of Complainant’s rights in the EARLY TIMES trademark in the United States when it registered the disputed domain name by virtue of the federal registrations of the EARLY TIMES trademark. Respondent was on actual notice of Complainant’s rights in the EARLY TIMES trademark because the website to which the disputed domain name resolves provides links to multiple third-party websites, some of which sell whisky produced by Complainant’s competitors. Respondent also derives pecuniary gain from such use of the Domain Name. Respondent’s registration and use of the disputed domain name were thus based upon its intent to trade upon the goodwill in Complainant’s EARLY TIMES trademark in the United States for Respondent’s own commercial advantage.
On July 3, 2007, Complainant’s counsel sent a letter to Respondent demanding that Respondent cease use of the domain name, and that Respondent transfer the domain name to Complainant. Respondent did not respond to this letter and on July 25, 2007, Complainant’s counsel sent a follow up letter reiterating its demands. Respondent did not respond to this letter either. After being put on notice of Complainant’s demand, Respondent has continued to use the disputed domain name to divert Internet users to the website containing sponsored links.
Complainant owns several registrations of the trademark EARLY TIMES in the United States for whisky, and Complainant has made extensive use of the EARLY TIMES trademark in connection with whisky in the United States. Complainant’s use and registration of the EARLY TIMES trademark in the United States is sufficient to establish Complainant’s rights in the trademark.
The addition of the generic term “whiskey” to Complainant’s mark EARLY TIMES in the disputed domain name does not make the resulting domain name dissimilar from the mark.
Therefore, Complainant’s EARLY TIMES trademark and the disputed domain name are identical or confusingly similar.
Complainant has never licensed or authorized Respondent to use the EARLY TIMES trademark, which was used and registered long before Respondent registered the disputed domain name. Respondent cannot show that it has any rights or legitimate interests in respect of the disputed domain name.
Given the registration and use of the EARLY TIMES mark long prior to Respondent’s registration and use of the disputed domain name, Respondent cannot possibly show that before any notice to it of this dispute, it engaged in the use of the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s registration and use of to divert visitors to various third-party websites, including websites selling competitive products, shows that Respondent had no rights or legitimate interests in the subject domain name.
Because “whiskey” is the generic name of a type of alcohol and to Complainant’s knowledge, EARLY TIMES is not a recognized first name or surname in the United States or any foreign country, Respondent has never been known by either the domain name or a name corresponding to the domain name.
Accordingly, Respondent cannot rebut Complainant’s showing that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has satisfied this element of the Policy.
Respondent’s registration and use of the domain name to intentionally divert Internet users to its website by exploiting the confusing similarity between the disputed domain name and the EARLY TIMES mark for whisky to sell various goods and services including whisky sold by competitors of Complainant, is a clear indication of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph4(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:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established trademark rights in EARLY TIMES. Complainant is the owner of a United States trademark registration granting trademark rights in EARLY TIMES. Exhibit 4 to the Complaint attaches United States trademark registrations sufficient to prove Complainant has trademark rights in the EARLY TIMES trademark. Therefore, Complainant has established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.)
The Panel also notes that Complainant also alleged common law trademark rights in EARLY TIMES. However, since Complainant has already established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy, the Panel need not decide if the common law trademark rights alleged in the Complaint establish rights in EARLY TIMES pursuant to paragraph 4(a)(i) of the Policy.
Respondent’s domain name is confusingly similar to Complainant’s EARLY TIMES trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic term “whiskey” and the generic top level “.com” domain name. Neither the addition of a generic term to another’s trademark nor the addition of a generic top level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic term “whiskey” has been tagged onto Complainant’s EARLY TIMES trademark and where that generic term describes exactly what EARLY TIMES was trademarked to sell. See Accor, Soci�t� Anonyme � Directoire et Conseil de Surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by respondent is descriptive of the complainant’s goods or services marketed in relation to the trademark”). In this case, the Panel concludes the consuming public will understand that the addition of the word “whiskey” to the EARLY TIMES trademark is merely the addition of descriptive/generic terms describing the goods to be sold; namely, whiskey.
Complainant’s argument in paragraphs 21 through 26 of its Complaint that the domain name is identical to the EARLY TIMES trademark is misplaced. The domain name may be confusingly similar to the EARLY TIMES trademark, as has been established, but it is in the Panel’s view not identical to the EARLY TIMES trademark.
Regardless, Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the domain name, or that it is commonly known by any name consisting of, or incorporating the name, “Early Times”, or “Early Times Whisky” or “Early Times Whiskey”. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the domain name predates Complainant’s rights in the EARLY TIMES trademark.
In regard to the domain name, Respondent is currently operating a website linked to a search engine composed of sponsored links. This domain name resolves to a website with click-through opportunities to competitors of Complainant. Using another’s well-known trademark to mislead users into accessing one’s website, which in turn provides diverting click-through opportunities to a search engine composed of sponsored links is not a bona fide offering of goods/services. See Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085 (“using the Domain Name to mislead users by diverting them to a search engine [. . .] does not appear to be used in connection with a bona fide offering of goods or services and therefore legitimate;” Hummert Int’l, Inc. v. Manila Indus., Inc.,WIPO Case No. D2006-0777 (“It may be inferred from the nature of the Respondent’s domain name website—a portal site that leads to various services similar to those provided by the Complainant—that the Respondent was aware of the Complainant’s mark.”); Morgan Stanley v. Unasi Management Inc., NAF Case No. FA471488 (“the Panel finds that Respondent is using a domain name that is confusingly similar to Complainant’s registered MORGAN STANLEY mark to attract Internet users searching for Complainant’s financial products and services to Respondent’s website, where Respondent earns click-through fees for linking these diverted users to third-party websites. It is well-established precedent under the Policy that this type of diversionary use, presumably for the purposes of benefiting from click-through compensation, is not a use in connection with a bona fide offering of goods or services pursuant to Policy �4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy �4(c)(iii) and, therefore, does not bestow rights and legitimate interests upon respondent under Policy �4(a)(ii)”).
The Panel further agrees with the Complainant’s allegations that it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at “www.”, and clicks on any of the available links. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the domain name.
Moreover, the use of EARLYTIMESWHISKEY.COM for whiskey on the “www.” website might be considered trademark infringement of the EARLY TIMES trademark, which cannot establish rights or legitimate interest in the domain name.
The Respondent is also operating a website featuring click-through opportunities for other whiskys/whiskeys and products associated with whisky/whiskey. Because Complainant also promotes and distributes whisky, and licenses others to sell products associated with whisky, the Panel concludes that Respondent is using the contested domain name in association with a website that competes with Complainant’s business interests. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is additional evidence that Respondent has no legitimate right or interest in the domain name. Accordingly, the Panel concludes Respondent is not using the domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find [. . .] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is using Complainant’s EARLY TIMES trademark to attract Internet users to a website associated with the domain name. This website features click-through opportunities leading to search engine results through which Respondent is likely generating revenue. Use of another’s trademark for this type of commercial gain by Respondent is sufficient evidence of bad faith registration and use. See Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085 (“the Respondent’s commercial use of the Domain Name to increase Internet traffic directed at a search engine [. . .] is evidence of bad faith under Policy, para. 4(b)(iv)”); see also Axel Springer AG v. AUTOBILD.COM,WIPO Case No. D2005-0554 (the deliberate redirection of Internet users to a commercial directory is a form of use that may allow Respondent to generate income through an inappropriate use of another’s trademark and is evidence of bad faith).
In addition to other click-through opportunities, Respondent’s website features click-through opportunities to products that compete with the products sold by Complainant under its EARLY TIMES trademark. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313.
Further, the Panel finds that Respondent likely registered the domain name with full knowledge of Complainant’s rights in the EARLY TIMES trademark. Respondent’s awareness of Complainant’s EARLY TIMES trademark may be inferred because the mark became famous prior to Respondent’s registration of the contested domain name. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 name, be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: February 15, 2008
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