WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Double Eagle Brands N.V. v. Jonathon Maneval Case No. D2009-0168 1. The Parties
The Complainant is Double Eagle Brands N.V. of Curaçao, the Netherlands Antilles, represented by De Brauw Blackstone Westbroek N.V. of Amsterdam, the Netherlands.
The Respondent is Jonathon Maneval of Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009 electronically and in hardcopy on February 10, 2009. On February 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
3.2 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 February 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2009 at 5.32 PM. The Respondent subsequently submitted a response at 7.32 PM on the same date simply stating, “I responded back with an email”.
3.3 The Complaint has been submitted in English.
3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on March 19, 2009. The Panel finds that it was properly constituted. It 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
4.1 The Complainant has stated that its “KETEL ONE” trademarks have been intensively used in commerce since 1983 on a worldwide basis, including in the United States and in Europe. The Complainant claims to have expended considerable time and money in advertising, promoting and selling premium alcoholic beverages including premium vodka, in connection with the KETEL ONE trademarks. It claimed that in 2005 alone approximately USD 17.9 million were spent on advertising for the KETEL ONE trademark in the United States and the Complainant provided an extract from a specialist journal for the American distilling industry to back up its claims.
4.2 The “KETEL ONE” trademark has been registered by the Complainant as a trademark in various countries. The Complainant has annexed to its Complaint a list of the trademark registrations, which include the following (all of which appear to be simple word marks):
(i) the trademark registered with the USPTO, registration number 73465621, registration date August 27, 1985;
(ii) the trademark registered with the USPTO, registration number 76020695, registration date February 12, 2002;
(iii) the trademark registered with OHIM, registration number 511626, registration date April 16, 1999;
(iv) the trademark registered with the BOIP (Benelux Office for Intellectual Property), registration number 659199, publication date of registration June 1, 2000;
(v) the trademark registered with the BOIP (Benelux Office for Intellectual Property), registration number 782761, date of registration December 12, 2005. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reason:
(i) the Complainant's counsel has claimed that KETEL ONE is famous throughout the world, including the United States, and embodies substantial goodwill. It provided evidence to show that KETEL ONE vodka is in turnover the eighth largest seller in the market segment for vodka in the United States. It also annexed additional extracts from the specialist magazine “Impact” to show that KETEL ONE vodka occupied third place in 2005, with a market share of approximately 27%.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:
(i) there is no evidence to show that the Respondent is using, or planning to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services;
(ii) the Respondent is not commonly known by a name similar to the Domain Name; and
(iii) the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) at the time the Domain Name was registered, on October 23, 2007, the KETEL ONE trademark had been used worldwide for more than 20 years and had appeared on the trademark register of nearly every country in the world, including the United States;
(ii) The Respondent must have been aware of the existence of the KETEL ONE trademark at the time the Domain Name was registered;
(iii) The Respondent's passive holding of the Domain Name deliberately prevents the Complainant from reflecting the KETEL ONE trademark in a generic top level domain for mobile devices and links and constitutes bad faith;
(iv) the Respondent intentionally created a likelihood of confusion with the Complainant's trademark, corporate name and domain name as to the source, sponsorship, affiliation and/or endorsement on its website. The Complainant's counsel cited several decisions in support of this submission including that of Produits Berger v. Standard Project Limited,WIPO Case No. D2002-0518.
The Complainant requests a decision that the Domain Name be transferred to the Complainant. B. Respondent
5.4 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding via means reasonably available to the Center to achieve actual notice. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Name 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.
6.5 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., / Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808). A. Identical or Confusingly Similar
6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.7 In line with such provision, the complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name's use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.8 The Complainant has appended to the Complaint a list of registered trademarks that incorporate the words “KETEL ONE”. It is quite clear that the Complainant is the owner of a number of trademarks in various jurisdictions that simply comprise the words “KETEL ONE”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name which fully incorporates “KETEL ONE” is confusingly similar to a number of trademarks in which the Complainant has rights.
6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.10 At the heart of the Complaint is the Complainant's contention that the Respondent has used the trademark of the Complainant with a view to attracting Internet users to its website, which does not have a bona fide offering of goods or services. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the Domain Name.
6.11 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name.
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
6.13 As another panel had held in the case of Owens Corning v. NA,WIPO Case No. D2007-1143, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support. (see paragraph 6.21(ii) of that decision).
6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the Domain Name, or that Respondent has made non-commercial or fair use of the name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant's mark.
6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
6.16 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name in the knowledge of the Complainant's business and its use of the KETEL ONE trademark. This is inherently probable given the fact that the Complainant has demonstrated its widespread usage of the KETEL ONE trademark as being used for its alcoholic beverage and particularly for vodka in industry magazines.
6.17 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with a view to intentionally create a likelihood of confusion with the Complainant's trademark, corporate name and domain name as to the source, sponsorship, affiliation and/or endorsement on its website, in all likelihood, for its own commercial gain.
6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source of a website.
6.19 Given that the Respondent has failed to show (for the reasons set out under the heading 6.B. Rights and Legitimate Interests above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith for the above-stated reasons. 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.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: April 2, 2009
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