WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guinness UDV North America v. Timothy Nicholas Llewellyn Lewis
Case No. D2001-0621
1. The Parties
The Complainant is Guinness UDV North America, a Connecticut corporation with its principal place of business at Stamford, Connecticut, U.S.A. The Complainant is represented by Mr Stephen W. Feingold of Morgan, Lewis-Bockius, LLP, Attorneys, of New York, New York, U.S.A.
The Respondent is Timothy Nicholas Llewellyn Lewis of London, U.K. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <smirnoffbar.com>. The domain name is registered with Core Internet Council of Registrars of Geneva, Switzerland ("Core").
3. Procedural History
The Complaint submitted by Guinness UDV North America was received on May 1, 2001, (electronic version) and May 3, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). Some minor amendments were made to the Complaint before dispatch to the Respondent.
On May 8, 2001, a request for Registrar verification was transmitted by the WIPO Center to Core, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with Core.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name.
By email dated May 10, 2001, Core advised WIPO Center as follows:
- Core had not received a copy of the Complaint from the Complainant.
- Core is the Registrar of the domain name registration <smirnoffbar.com>.
- The Respondent is shown as the "current registrant" of the domain name.
- The administrative, technical and zone contact is Get Free Domains of Prestons Road, Docklands, London, U.K.
- Coreís Service Agreement applies.
- The domain name registration <smirnoffbar.com> is currently in "Active" status.
- Core has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The advice from Core that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with Core. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
- Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on June 6, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to Core and ICANN.
- The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent did not file a Response within the time stipulated. Accordingly, a notice of Respondent Default was issued by WIPO Center on June 28, 2001.
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
- The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
- On July 17, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by July 30, 2001.
- The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
- However the Panelís decision has been delayed for the following reasons. On June 29, 2001, the Respondent advised the WIPO Center and the Complainant by email, that the Complainant was "welcome" to the site. He had no desire to use the site independently or to damage the Complainantís brand. On receipt of the file the Panel requested WIPO Center to ascertain whether the parties would agree to a transfer of the name or at least suspension of the process. Despite enquiries, the parties have been unable to agree. Accordingly, it becomes appropriate for the Panel to issue a decision the return date for which is extended to August 3, 2001.
4. Factual Background
The Complainant produces and markets vodka worldwide under the "Smirnoff" and "Smirnoff Black" brands. In the year 2000, it sold products in excess of US$500,000.00.
The Complainant owns numerous registered marks in numerous countries both for the word "Smirnoff" and for other words attached to "Smirnoff" such as "Smirnoff Silver" and "Smirnoff Ice". It owns 33 marks in the United Kingdom, where Respondent resides, which consist of or model the word "Smirnoff".
The Respondent has not developed a website with the disputed name.
The Complainant has not given the Respondent any rights in respect of any of its marks.
5. Partiesí Contentions
The disputed domain name <smirnoffbar.com> is confusingly similar to the "Smirnoff" marks.
Respondent has no connection or affiliation with Complainant. Respondent has not received any license or consent, express or implied, to use the marks in a domain name or in any other manner.
Respondent has not used the infringing domain name in connection with a bona fide offering of goods or services. Respondent does not have a trademark registration for "smirnoffbar" and could not obtain one.
Respondent has not made a legitimate non-commercial or fair use of the infringing domain name.
The Complainantís marks are famous throughout the world. The fame and reputation of a trademark ownerís mark can be persuasive in determining a respondentís bad faith intent in registering a domain name that contains the famous mark. See Telstra Corp. Ltd v. Nuclear Marshmallows D2000-0003 (WIPO February 18, 2000). Given the fame of the marks, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of the fame of the mark at the time of registration". Accordingly, Respondent has registered the infringing domain name in bad faith.
Respondent also has used the infringing domain name in bad faith. Respondent has not linked the domain name to an active website, which fact may support a holding of use in bad faith.
The Respondent has made no Response. His email indicates that he is content to transfer the name to the Complainant Ė seemingly without cost.
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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the view of the Panel, the disputed domain name is confusingly similar to the Complainantís "Smirnoff" marks. The addition of the word "BAR", a generic name for a place where alcoholic beverages are served, does not detract from the confusing similarity. On the contrary, it increases the confusion because of the obvious connection of a bar with the Complainantís product. A significant number of internet users would be familiar with the word "Smirnoff" and would assume that the name is in some way connected with the Complainantís mark.
In the Panelís view, the Respondent has no legitimate rights to or interest in the domain name. The Complainant gave it none. The Respondent claims none. The name "Smirnoff" and the products, which the Complainant advertises and sells worldwide, are well known. It is naïve to suggest that the Respondent had never heard of the Complainant and its activities. Accordingly the Panel finds the second criterion proved.
Similarly, with the third criterion. It strains belief that the Respondent did not know of the Complainant and its heavy involvement in the liquor industry at the time the name was registered.
The Respondentís failure to develop the website is indicative of continuing bad faith use. Besides, in this case, there can be, in effect, "judgment by consent". The email from the Respondent indicates his desire not to continue with the name.
Accordingly for the reasons stated, the Panel finds the Complaint proved.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <smirnoffbar.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: August 3, 2001