The Complainant is Irish Distillers Limited of Dublin, Ireland, represented by Pernod Ricard Europe, France.
The Respondent is James Powers of Chicago, Illinois, United States of America, represented by himself. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 23, 2010, GoD, Inc. 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” or “UDRP”), 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 November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Response was filed with the Center on December 13, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on December 21, 2010. 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
The Complainant sells whiskey under the POWERS trademark. This whiskey has been made in Ireland for about 200 years. It is currently the second most popular whiskey brand in Ireland, with more than 1.3 million bottles sold each year. It is exported to many countries, including the United Kingdom of Great Britain and Northern Ireland, Canada and the United States of America.
The Complainant registered the POWERS trademark in the United States of America in 1940, the POWER’S trademark in Ireland in 1991, in the European Community in 1997, and in Canada in 1994, and the POWERS IRISH WHISKEY label trademark in Ireland in 2000.
The Respondent’s surname is “Powers”. The disputed domain name was registered on June 19, 2007. It resolves to a website displaying paintings made, and photographs taken, by the Respondent. The Respondent owns the domain name , which resolves to a website that has the same content as the one to which the disputed domain name resolves.
The Complainant contacted the Respondent on October 25, 2010, to inform him of its earlier rights to the POWERS trademark and to request the transfer of the disputed domain name in return for reimbursement of the registration fee. No settlement was reached. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is almost identical or at least confusingly similar to the Complainant’s trademark because it wholly contains the Complainant’s mark. It associates the mark POWERS to the word “whiskey”, which directly and only refers to the Complainant’s product. It is likely that consumers and Internet users will think the disputed domain name is the property of the Complainant, or of an entity linked to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because, whilst the Respondent has the surname “Powers”, he does not have a legitimate interest to associate it with the word “whiskey”. The Respondent’s field of activity is art and the website to which the disputed domain name resolves shows some of the Respondent’s paintings and photographs. The Respondent has no association with the alcoholic drinks business and in particular with the whiskey business.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent has no legitimate interest to associate the word “whiskey” to his surname. Having been born in Ireland, the Respondent would be fully familiar with the Complainant’s product, Powers whiskey. The Respondent owns the domain name which resolves to a website that has the same content as the one to which the disputed domain name resolves. The Respondent has registered and is using the disputed domain name to attract Powers whiskey consumers and fans to his website, and thereby to increase the number of potential buyers of his paintings. Because of the disputed domain name’s direct reference to the Complainant’s product, Internet users visiting the website to which it resolves may be deceived into thinking that the website is somehow sponsored by the Complainant. B. Respondent
The Respondent contends that the website to which the disputed domain name resolves is owned by him and was never designed to be associated with the Complainant’s Irish-originated commercial identity. The Respondent does not sell his artwork online. The website to which the disputed domain name resolves has never taken the guise of a commercial identity or been concerned with alcohol. The Respondent uses “whiskey” in the disputed domain name as an American colloquialism for an American audience familiar with its ambiguities and connotations. “Whiskey” refers to the infamous ploy of political doublespeak, taken from the “whiskey speech”, also known as “if-by-whiskey” speech, made by the Mississippi State Senator, Noah S. “Soggy” Sweat Jr, in 1952.
The Respondent contends that, having been a student of Political Science between 2004-2008, he had a legitimate interest in the political studies and implications of “whiskey” and “if-by-whiskey” in the labyrinth of American politics, which he continues to explore in his artistic renderings. The use of “whiskey” in the disputed domain name refers to the paradoxical existence of a politically minded person and their dependence on the politically elected to assist in their exhibition.
The Respondent contends that he has never had reason to be familiar with the commercial identity of Power’s whiskey. The founding concept of the disputed domain name was to highlight the insecurity and accused doublespeak of an artist that wants to instigate political change. The conceptual and existential agenda for the disputed domain name is in no way related to the business and ideas of whiskey, its distillation or the commercial interests of the Complainant. Further, the Respondent contends that if the preservation of “powerswhiskey” was a paramount concern for the Complainant then it would have made efforts to buy all websites of that name or related to it (there being, as of November 28, 2010, over 20 still available). The Complainant’s attempt to co-opt the disputed domain name is a hegemonic attempt by the interests of a European conglomerate, Pernod Ricard, to stifle the free expression and political speech of an independent American citizen referencing cultural vernacular. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s trademark POWERS and adds the descriptive word “whiskey”. Because the Complainant uses its POWERS trademark in respect of whiskey, the addition of the word “whiskey” to the Complainant’s trademark only serves to add to the confusing similarity of the disputed domain name to the Complainant’s trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The fact that the Respondent’s surname is “Powers” does not, of itself, establish that the Respondent has a right or legitimate interest in a domain name containing the word “powers”. It is to be noted that the disputed domain name contains, in addition to the word “powers”, the word “whiskey”. The Respondent asserts that his motivation for incorporation of the word “whiskey” with his surname is to refer “to the paradoxical existence (as an idea) of a politically minded person and their dependence on the politically elected to assist in their exhibition”. This is fanciful. There is a multitude of other words that would convey such a paradox more effectively than “whiskey”. In the Panel’s view, the only reasonable conclusion that can be drawn is that the Respondent intended the word “whiskey” to have its common meaning of distilled liquor made from a fermented mash of cereal grains. By his own admission, the Respondent has no connection with the alcoholic beverages industry. Accordingly, this Panel finds on the present record that the Respondent has failed to rebut, in any convincing fashion, the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The evidence provided in the Complaint contained screenshots of various pages of the Respondent’s website, wherein the Respondent asserts he was born in Ireland 1986. The Respondent did not deny this fact – rather, he merely states he “has never had reason to be familiar with the commercial identity of Power’s Whiskey”. In all of the circumstances, this Panel considers it more likely than not that the Respondent was aware of the Complainant’s use of its POWERS trademark in respect of whiskey at the time the Respondent registered the disputed domain name. The coincidence of the Respondent’s surname and the Complainant’s trademark gave the Respondent’s registration of the disputed domain name a veneer of legitimacy. However, in the Panel’s assessment, this veneer of legitimacy disappears once account is taken of the fact that the disputed domain name also contains the word which is the name of the product in respect of which the Complainant uses its trademark, and the fact that the Respondent has no plausible legitimate reason for incorporating that word in the disputed domain name. This Panel has no substantial doubt that the true reason the Respondent registered the disputed domain name is because it combined the Complainant’s trademark (which happened also to be his surname) with the name of the product in respect of which that trademark is used by the Complainant.
This Panel accepts the Complainant’s contention that the motivation for the Respondent using the disputed domain name as a URL for his website is to increase traffic to that website. It is highly plausible, as the Complainant contends, that consumers and fans of the Complainant’s whiskey will be attracted to the Respondent’s website due to the confusing similarity between the disputed domain name and the Complainant’s trademark. This Panel accepts the Respondent’s contention that he does not sell his artwork online. However, that fact does not, of itself, establish that the Respondent does not derive a commercial benefit from increased traffic to his website caused by his use of the confusingly similar disputed domain name. The more visitors there are to his website, the more developed becomes his reputation as an artist. For an aspiring professional, or even semi-professional, artist, that is a commercial benefit. Drawing reasonable inferences from the evidence before it, this Panel concludes that the Respondent has used the disputed domain name in the manner described in paragraph 4(b)(iv) of the Policy. Accordingly, this Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: January 4, 2011
Full & Egal Universal Law Academy