The Complainant is The Brooklyn Brewery Corporation of Brooklyn, New York, United States of America ("US" or USA"), represented by McDermott Will & Emery LLP, USA.
The Respondent is Kurt Schamann of Brooklyn, New York, USA, represented by Shahmoon & Ellisen LLP, USA. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with R (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2015. On September 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. The parties jointly requested an extension of time to explore settlement but ultimately informed the Center that they were unable to reach an agreement. The Center then notified the Respondent that the Response was due on November 11, 2015. The Response was filed with the Center on November 11, 2015. The Complainant submitted a Supplemental Filing on November 11, 2015, and the Respondent objected to the Supplemental Filing on November 11 and 12, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 23, 2015. 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 is a business corporation organized under the laws of the State of New York, USA and headquartered in Brooklyn, a borough of New York City. According to the Complaint, the Complainant is the largest brewer of beers in New York and "among the twenty largest brewers in the United States", with annual sales of USD 60 million in the US and more than twenty other countries. The Complainant has several registered US trademarks, including BROOKLYN BREWERY (standard characters, number 3186503, registered December 19, 2006) and BROOKLYN BREWERY (words and design, number 3186499, registered Dec. 19, 2006). The Complainant states that it has advertised beers under BROOKLYN BREWERY marks since 1987. The Complainant operates a website at "", using a domain name it first registered in 1996.
The Respondent is a graphic designer who resides in Brooklyn. The Respondent registered the Domain Name on June 29, 2007. According to the Response, the Domain Name was registered for use in connection with a coffee bar, a business that the Respondent planned to conduct with his brother. The Response attaches a copy of the brother's application for a federal tax identification number for the coffee bar, showing July 13, 2007 as the date the business started. It does not appear that the brother has ever actually opened a coffee bar, however. The Response states that while they scouted for locations and researched the costs of operating such a business, the Respondent launched a website associated with the Domain Name in March 2009. The Response attaches screen shots of that retail website, which advertised and sold "Brooklyn-themed" clothing designed by the Respondent, such as shirts displaying the words "Brooklyn Boy", "Brooklyn Girl", or "Brooklyn Baby", or a phonetic version of "Brooklyn". The Response indicates that the website produced sales starting in about March 2010, and the Internet Archive's Wayback Machine includes screen shots of the website in 2011. The Response states that the Respondent has also marketed his clothing on a "BrooklynBrew" Facebook page since December 2010.
According to the Respondent, the website generated sales of thousands of dollars of the Respondent's "BrooklynBrew" clothing over a period of about five years, while the Respondent made sales amounting to tens of thousands of dollars offline at fairs and other events, many of which took place in Brooklyn. Shortly before notice of the current dispute, the Respondent took down the website and started developing a WordPress version at "" (a screen shot is attached to the Response), with the stated intent of publishing the improved version of the website using the Domain Name when the changes are completed. Thus, the Domain Name does not currently resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is an abbreviated form of its BROOKLYN BREWERY marks and thus is "nearly identical" to the marks. As the marks were established before the Respondent registered the Domain Name, the Complainant argues that the Respondent could not legitimately use the Domain Name for a business with a corresponding name without the Complainant's permission. The Complainant contends that the Respondent has not, in any event, demonstrated actual use or preparations to use the Domain Name for a coffee business, and the Complainant argues as well that the Respondent's clothing business is not relevant to the meaning of the Domain Name.
The Complainant concludes that the Respondent acted in bad faith because the Respondent had "constructive notice" of the Complainant's registered marks, and probably actual notice because the Complainant's beers were advertised and sold in the city where the Respondent resides. The Complainant argues that there is a "lack of evidence" of any intent to make legitimate use of the Domain Name and cites the "passive holding" doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, contending that, as in Telstra, "there is no conceivable bona fide use that Respondent could make of this Domain Name that would not be an infringement of Complainant's rights." B. Respondent
The Respondent denies registering the Domain Name to target the Complainant's marks. The Respondent observes that the English word "brew" refers to coffee and tea as well as beer, and that it is also used metaphorically to refer to imminent events or a blend of social or cultural elements. The Respondent argues that the Domain Name was legitimately used first "in connection with a planned Brooklyn based coffee shop, to be called "Brooklyn Brew", and then for a retail website selling "Brooklyn themed apparel", with reference to contemporary Brooklyn being a mix of ideas, cultures, and people. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." A. Supplemental Filings
The Complainant submitted a Supplemental Filing in reply to the Response, and the Respondent submitted an objection to the Complainant's Supplemental Filing. The Complainant's Supplemental Filing discusses a recent UDRP decision in favor of the same Complainant and involving a similar domain name, . The Supplemental Filing then offers arguments against the Respondent's claimed legitimate interests in the Domain Name.
As the Respondent observes, neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding "with due expedition". Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, and cases cited therein.
The recent UDRP decision cited by the Complainant in its Supplemental Filing was issued after the Complaint was filed in this proceeding, and the Response included evidence not previously available to the Complainant concerning the Respondent's plans for a coffee bar and its sales of clothing through a website and Facebook page headed "BrooklynBrew". The Panel will accordingly consider the Complainant's Supplemental Filing for the limited purposes of addressing the recent UDRP decision and the Respondent's evidence concerning its actual or planned business activities associated with the Domain Name. B. Identical or Confusingly Similar
The Complainant holds a standard-character trademark registration for BROOKLYN BREWERY, as well as registered marks featuring those words with a distinctive design. The Domain Name is similar, as it consists of "Brooklyn" and "brew".
UDRP panels customarily treat the first element of the Policy as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent offers some evidence (chiefly the application for a tax identification number) that the Respondent first intended to use the Domain Name in connection with a coffee bar in Brooklyn, for which the Domain Name clearly would be a relevant choice. The Respondent never actually established such a business, however, in the eight years that have passed since then. The Respondent instead used the Domain Name for about five years before this dispute arose for a website headed "BrooklynBrew" selling the Respondent's Brooklyn-themed clothing. This must be considered a use "in connection with a bona fide offering of goods or services", unless, as the Complainant contends, it represented an illegitimate attempt to trade on the goodwill associated with the Complainant's marks. That question is discussed further below in connection with the issue of bad faith, as it involves many of the same facts. D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following:
"(iv) by using the domain name, [the respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
The Complainant implicitly relies on this example by arguing that the Respondent had actual and constructive notice of the Complainant's marks, used the Domain Name for a clothing business that had nothing to do with brewing beer (or coffee, for that matter), and competed with the Complainant's sales of T-shirts imprinted with its own logos.
The Panel considers "constructive notice" of a registered mark inadequate to establish the Respondent's bad faith, particularly where the mark consists of common words and was registered only a few months before the Respondent registered the Domain Name. See WIPO Overview 2.0, paragraph 3.4. These facts make it less likely that the Respondent was covertly targeting the Complainant's marks. Even assuming that the Respondent had actual notice of those marks, it is plausible that the Respondent selected a similar domain name for a relevant descriptive purpose — a coffee bar in Brooklyn, for which the Respondent's brother obtained a federal tax identification — and later used it for five years in connection with the sale of Brooklyn-themed clothing celebrating the city's "brew" of diverse people and cultures.
These facts are materially different from those recited in the recent UDRP decision favoring the same Complainant in The Brooklyn Brewery Corporation v. Tob Lenza / Tobias Lenza,WIPO Case No. D2015-1560. There, the panel found no evidence that the respondent "took any steps whatsoever" toward creating a planned beer blog and in fact used the disputed domain name only for a pay-per-click advertising landing page that included advertisements for the Complainant's competitors. The Respondent here, by contrast, made some demonstrable preparations for a relevant business and then made relevant commercial use of the Domain Name over a period of years.
As the Complainant notes, citing Telstra, supra, UDRP panels have also found bad faith, even absent an active website, where "there is no conceivable bona fide use … that would not be an infringement of Complainant's rights". That is a more convincing argument where the mark in question is a highly distinctive, coined term such as "Telstra", rather than an essentially descriptive moniker consisting of the name of a city and a dictionary word with multiple meanings.
The Panel finds the Respondent's explanation plausible, that the Domain Name was selected for a planned Brooklyn coffee bar and subsequently used, relevantly, to sell the Respondent's Brooklyn-themed clothing. The Complainant has the burden of persuasion, and the Panel concludes on the available record that the Complainant has not established the second and third elements of the Complaint. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: December 10, 2015
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