The Complainant is Ritual Beverage Company LLC, United States of America (“United States”), represented by Polsinelli PC Law firm, United States.
The Respondent is Tom Tom, Tom Tom S. DE R.L. DE C.V., Mexico.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2021, 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” 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 November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Response was filed with the Center on November 20, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 6, 2021. 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 BackgroundThe Complainant was founded in 2018. It produces spirit-free products under the brand RITUAL ZERO-PROOF. The Complainant’s products are offered to customers in the United States and Canada through the Complainant’s official website at “www.ritualzeroproof.com” and via third-party retailers.
The Complainant is the owner of the trademark RITUAL ZERO-PROOF with registration No. 5,991,808, registered on February 18, 2020 in the United States for goods in International Class 32, with first use as of May 1, 2018.
The Respondent registered the disputed domain name on January 27, 2020. It resolved to a website that mentioned alcohol and alcohol-free products and contains a “buy now” link.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name is confusingly similar to the RITUAL ZERO-PROOF trademark, because it reproduces the trademark with the addition of the term “vodka” which does not diminish the confusing similarity of the disputed domain name to the trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, and its sole interest in the disputed domain name is to abuse its similarity with the Complainant’s corporate domain name
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, being aware of the Complainant and having the RITUAL ZERO-PROOF trademark in mind when registering the disputed domain name. According to the Complainant, the Respondent’s sole motivation in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights. The disputed domain name directs toward a website that ultimately leads to a third-party website which displays products similar to those offered by the Complainant on its website at “www.ritualzeroproof.com”. The Respondent is thus falsely suggesting it is the trademark owner and its website is an official website of the Complainant.
B. RespondentThe Respondent has not submitted a formal Response. In its only communication to the Center, it stated the following:
“The complaignant RitualZeroProof.com owns the Ritual Zero Proof trademark in the USA category 32, Zero Proof means Zero Alcohol
My domain name RitualVodka.com category 33 cannot be confused with RtualZeroProof.com category 32, as you know Vodka is an alcoholic products category 33 which is not confusing in any manner with Ritualzeroproof.com which is a non alcoholic drink”.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
A. Identical or Confusingly SimilarThe Complainant has provided evidence that it is the owner of the RITUAL ZERO-PROOF trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding. According to the trademark registration certificate, no claim is made to the exclusive right to use “ZERO-PROOF” apart from the trademark as shown, and indeed, “RITUAL” is the distinctive and dominating element of this trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The relevant element of the disputed domain name is therefore “ritualvodka”. This element includes the distinctive “ritual” element of the RITUAL ZERO-PROOF trademark together with the word “vodka”. The “ritual” element dominates in the disputed domain name and is easily recognizable in it. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. As further discussed in section 1.7 of the WIPO Overview 3.0, in specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation may support a finding of confusing similarity. Indeed, the website at the disputed domain name contained the text “Ritual Zero Proof Vodka”. The website contains a link to a third-party website that offers various alcohol-free flavored drinks, which appear as competitive to the Complainant’s products offered under the RITUAL ZERO-PROOF trademark. This content of the website supports a conclusion that it is targeting the Complainant’s RITUAL ZERO-PROOF trademark and is using its reputation to offer competitive products.
In view of the above, the Respondent’s argument that the Complainant’s RITUAL ZERO-PROOF trademark is registered for non-alcoholic drinks in International Class 32, while the disputed domain name was for “vodka”, an alcoholic drink included in International Class 33, so therefore the disputed domain name is not confusing with the Complainant’s trademark and domain name
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the RITUAL ZERO-PROOF trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant has not authorized it to use the RITUAL ZERO-PROOF trademark, and the Respondent is not commonly known by the disputed domain name. According to the Complainant, the Respondent has registered it to exploit the Complainant’s goodwill in the RITUAL ZERO-PROOF trademark and to offer competitive products.
The Panel notes with concern that the Complaint states “upon information and belief, ritualvodka.com/zero-proof leads to a fraudulent website which ultimately leads to a third-party website selling Respondent’s own products, to scam internet users into believing Respondent purportedly sells Complainant’s products based on the use of the RITUAL ZERO-PROOF trademark.” The Complaint continues to state that “it is quite clear that the Respondent acquired the domain name for the sole purpose of exploiting the Complainant’s rights, title, interest and goodwill in the RITUAL ZERO-PROOF trademark through the perpetration of a phishing and spoofing scheme to defraud.”
The Complainant’s counsel seems to overlook that UDRP cases must be based on evidence, not conjecture; they do not allow for discovery.
Moreover, the Panel notes that not a single screenshot has been provided to back up the Complainant’s assertions of use of the disputed domain name or any fraud scheme, and the Panel has had to visit the website.
Nevertheless, based on the claims made in the Complaint, the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a formal Response and in its informal communication to the Center it has not provided any specific arguments in support of the existence of any rights or legitimate interests in the disputed domain name except to claim the parties operate in (slightly) different classes, and most critically has not denied its knowledge of the Complainant.
As discussed in section 6.A above, the disputed domain name incorporates the distinctive RITUAL element of the RITUAL ZERO-PROOF trademark, and the evidence in the case file shows that the website at the disputed domain name features alcohol-based and alcohol-free products offered for sale on the website of a third party in competition with the Complainant.
In view of the above, the Panel concludes that it is more likely than not that the Respondent has targeted the RITUAL ZERO-PROOF trademark with the registration of the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain name Internet users looking for the Complainant’s products and redirecting them to competitive products. This conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights and or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 that 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 online 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.”
As discussed in the previous sections, the disputed domain name incorporates the distinctive RITUAL element of the RITUAL ZERO-PROOF trademark, and the evidence in the case file shows that the website at the disputed domain name features alcohol-free products offered for sale in competition with the Complainant. The Respondent’s website contains the title “RITUAL ZERO PROOF VODKA” ” and the top banner says “Ritual Vodka - Vodka free-alcohol beverage” and moreover the site displaysno disclaimer for the lack of relationship with the Complainant. This text incorporates all elements of the RITUAL ZERO-PROOF trademark and refers to a product that is similar and competitive to the products offered by the Complainant for which the RITUAL ZERO-PROOF trademark is registered.
While the trademark for RITUAL ZERO-PROOF was registered in February 2020 and the disputed domain name was registered in late January 2020, the Panel notes that the former provides a date of first use in May 2018, and moreover that the goods are similar if not the same (despite the slightly/technically different classes) and that the website at the disputed domain name had a link to buy non-alcoholic (and alcoholic) beverages in direct competition with the Complainant – also the Respondent did not claim not to have been aware of the Complainant (and if he did, this would stretch beyond credibility given the closeness of the goods provided by the two parties).
In view of the above, the Panel concludes that the Respondent must have been aware of the goodwill of the Complainant’s RITUAL ZERO-PROOF trademark when it registered the disputed domain name, and that it is more likely that the Respondent registered and used it in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s RITUAL ZERO-PROOF trademark as to the affiliation of the Respondent’s website and of the third party website to which the Respondent’s website redirects, and of the products offered for sale on this third party website.
In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Assen Alexiev
Sole Panelist
Date: December 16, 2021