WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Guinness UDV North America, Inc. v. UKJENT

Case No. D2001-0684

 

1. The Parties

1.1 The Complainant is Guinness UDV North America, Inc., a company incorporated under the laws of Connecticut, USA; and

1.2 The Respondent is UKJENT of Presthusbakken, Spangereid, Norway.

 

2. Domain Name and Registrar

The domain name upon which this Complaint is based is <s-m-i-r-n-o-f-f.com> ("Domain Name"). The registrar of the Domain Name as at the date of the Complaint is Network Solutions, Inc. ("NSI").

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on May 23, 2001, and in hard copy by courier on May 25, 2001. Paragraph 40 of the Complaint states that payment of fees has been made by check. The Complainant also states that a copy of the Complaint was "sent or transmitted to the Respondent on May 21, 2001, via mail return receipt requested".

3.3 The Complainant states that a copy of the Complaint was "sent or transmitted to NSI on May 21, 2001, via email and facsimile". The Panel notes the Complainant sent a copy of the Complaint to NSI attached to an email dated May 23, 2001.

3.4 The Center sent the Complainant an Acknowledgement of Receipt of Complaint on May 25, 2001, by email. This was followed by a Complaint Deficiency Notification sent by the Center to the Complainant by email on May 29, 2001.

3.5 The Center sent a Request for Registrar Verification to NSI on May 29, 2001, by email. NSI responded to the Center's request by email on May 30, 2001, and verified: (1) that NSI was the registrar for the Domain Name; (2) that the Respondent was the current registrant of the Domain Name; (3) the Respondentís contact details; (4) that NSIís Service Agreement is in effect in relation to the Domain Name; and (5) that <s-m-i-r-n-o-f-f.com> had an ĎOn Holdí status.

3.6 The Complainant sent an Amendment to the Complaint by email to the Center which was received on June 4, 2001. The Center completed its Formal Requirements Compliance Checklist on June 6, 2001, and sent the Notification of Complaint and Commencement of Administrative Proceeding on the same day to the Respondent by Swiss Post courier and email. The Center sent this Notification to the Respondent at the following email addresses:

"ukjent69@online.no";
"support@mydomain.com"; and
"postmaster@s-m-i-r-n-o-f-f.com".

The Panel is satisfied that the requirements of paragraph 2(a) of the Policy have been met.

3.7 The Panel notes the email dated June 7, 2001, sent by Stein Inge Lindal to the Center. The email was sent from the email address "ukjent69@online.no" which is the Administrative and Billing Contact email address for the Domain Name listed in NSIís WHOIS records. The Administrative and Billing Contact given for the Domain Name is Stein Inge Lindal, indicating that the Administrative and Billing Contact for the Respondent was in actual receipt of the Complaint Deficiency Notification at least. The Panel has seen no evidence to suggest that the Respondent did not receive the email attaching the Complaint (without Annexures) sent on June 6, 2001, or the copy of the Complaint sent by courier (with Annexures) on June 6, 2001.

3.8 The Respondent failed to file a Response in the time allowed and has not filed a Response to date as far as the Panel is aware.

3.9 The Center sent a Notification of Respondent Default to the Respondent on June 29, 2001, by email and Swiss Post courier.

3.10 The Center sent an Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on July 17, 2001, by email. A copy was also sent to the Panel on the same date by email without Annexures. The Panel received a hard copy of the Complaint together with all Annexures and related correspondence on July 23, 2001.

3.11 All procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant.

The following information was asserted as fact in the Complaint and remains uncontested.

The Complainant is the owner of a number of trademarks which include the word SMIRNOFF and the Complainant has used the trademark SMIRNOFF extensively throughout the world since at least as early as 1939 in relation to vodka and related products and services. As a result of the Complainantís longstanding and continuous use of the SMIRNOFF trademark, this mark has become famous and is recognized by the relevant trade and by the public as indicating a source of vodka and related products and services.

4.2 Activities of the Respondent.

The Panel has seen no evidence regarding the activities of the Respondent.

4.3 The Complainantís Trademarks.

The Complainant claims to rely upon a number of trademark registrations which include the word SMIRNOFF in the United States, details of which are contained in Annex C of the Complaint. In addition to these, the Complainant claims to own in excess of 800 marks throughout the world consisting of, "or prominently modeling" the word SMIRNOFF. These trademarks, together with the registrations in Annex C, are referred to in this Decision as the "SMIRNOFF Marks". Because the Complaint was expressed to be based solely on the trademarks set out in Annex C, and the evidence submitted showed those marks to be registered in the names of entities with names that differed from that of the Complainant, the Panel exercised its power under paragraph 12 of the Rules to require the Complainant to explain its relationship to the registered owners of the marks in Annex C. This explanation was duly provided to the Panel on August 6, 2001, to the effect that the discrepancy was attributable solely to the Complainant having undergone several changes of name (and an assignment in the case of marks in the name of Ste. Pierre Smirnoff, Fls., Inc.). Accordingly, the Panelís decision is formed on the basis that every one of the marks in Annex C was owned by the Complainant prior to the time the Complaint was filed. The Panelís Rule 12 request also dealt with an apparent typographical error in the Complaint which showed SMINROFF instead of SMIRNOFF. Were it not for the contextual importance of the reference in question the Panel would not have troubled the Complainant on that issue. The Complainant has confirmed that the reference to SMINROFF was incorrect and that SMIRNOFF was intended. The Panel has proceeded on that basis.

 

5. The Complainantís Contentions

5.1 The Complaint asserts that each of the elements set out in paragraph 4(a) of the Policy have been satisfied.

5.2 With reference to the elements in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Domain Name is virtually identical and/or confusingly similar to the SMIRNOFF Marks. The Complainant asserts that the Domain Name is spelled in exactly the same way as "Smirnoff" and that the addition of hyphens between each letter does not alter the visual or phonetic similarity between the Domain Name and the SMIRNOFF Marks.

5.3 With reference to the elements in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interest in the Domain Name. In particular the Complainant asserts that, to the best of the Complainantís knowledge, the Respondent has not used the Domain Name in connection with any bona fide offering of goods and services, is not known by the Domain Name and is not making a legitimate or fair use of the Domain Name.

5.4 The Complainant asserts that the Norwegian word "Ukjent" means "unknown" in English. The Complainant asserts that by listing its name as "Ukjent", the Respondent is acting in a manner inconsistent with the concept of legitimate and fair use by disguising the Respondentís true identity.

5.5 The Complainant asserts that the Respondent could not have any legitimate rights or interest in the Domain Name because the SMIRNOFF Marks are so well known. Based on this reputation, the Complainant asserts that the Respondent could not use the Domain Name for any legitimate purpose because this use would always be associated with the Complainant and/or the SMIRNOFF Marks.

5.6 The Complaint states that the Complainant has not licensed the Respondent to use the SMIRNOFF Marks or register the Domain Name.

5.7 With reference to the elements in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Respondent has registered and is using the Domain Name in bad faith because the SMIRNOFF Marks are so well known throughout the world.

5.8 The Complainant asserts that the Respondentís failure to use the Domain Name in good faith to create a presence on the Internet amounts to registering and using the Domain Name in bad faith even in the absence of any offer by the Respondent to sell the Domain Name to the Complainant.

5.9 The Complainant asserts that by listing its name as "Ukjent" the Respondent is providing incomplete or inaccurate billing or contact information which amounts to bad faith.

 

6. Discussion and Panel Findings

6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted above, the Respondent failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response subsequently. Accordingly, all assertions in the Complaint are uncontested and, under paragraph 5(e) of the Rules, the Panel is required to decide the dispute based on the Complaint. Despite the fact that the Respondent has not provided a Response, the Panel takes the view that it needs to be independently satisfied that the three elements set out in paragraph 4(a) of the Policy have been made out on the evidence available to the Panel. The Complainant, of course, carries the onus of making its case.

6.2 Domain Name identical or confusingly similar to Complainantís Marks.

The Panel is satisfied that the Complainant has very extensive rights in the word SMIRNOFF as a trademark throughout the world.

The Complainant asserts that the insertion of dashes between each letter in S-M-I-R-N-O-F-F does not alter the visual or phonetic identity of the word SMIRNOFF. Therefore, the Domain Name is virtually identical and/or confusingly similar to some or all of the SMIRNOFF Marks.

The Panel agrees with this view. The addition of dashes between the letters of a single word does not alter the way the Domain Name is pronounced and cannot, in context, differentiate it from the same word absent the dashes. This panel has consistently taken such a view, and notes with approval the supporting citation of this Panelís earlier decision in the Complainant. The overall impression given by the Domain Name is of the trademark SMIRNOFF and the .com gTLD is incapable of distinguishing the two further. The SMIRNOFF trademark is not based on a common English word and the Panel has no evidence before it that it has meaning in any other language which may lessen its distinctiveness. Based on the material furnished with the Complainant, the Panel surmises that SMIRNOFF is the family name of Pierre Smirnoff, one of the founders of the Complainantís predecessors in business.

The Panel finds that the Domain Name is, at the very least, confusingly similar to a trademark in which the Complainant has rights.

6.3 The Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has asserted no rights or legitimate interest in the Domain Name and, without any evidence to the contrary, the Panel cannot presently conceive of any legally sound basis on which such an assertion might be made. The Panel has seen no evidence that any of the situations in paragraph 4(c) of the Policy apply in the case of the Respondent and accepts the view that the simple act of registering a domain name does not grant the registrant a legitimate interest in that domain name.

The Panel accepts the Complainantís contention that the SMIRNOFF trademark is well known in a number of countries throughout the world. The Complainant has stated that it has not authorized the Respondent to use any of the SMIRNOFF Marks and the Panel has seen no evidence to the contrary. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.

6.4 The Domain Name has been registered and is being used in bad faith.

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith.

Paragraph 4(b) of the Policy provides:

"Ö the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faithÖ"

Of these circumstances, the Complainant has drawn attention to the following:

"(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 web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The Complainant relies on the following three points to prove bad faith:

(i) the reputation the Complainant has developed in the SMIRNOFF trademark;

(ii) the Respondent does not appear to have made any effort to carry on legitimate business or activity in connection with the Domain Name; and

(iii) the Respondent has described itself as "Ukjent" which the Complainant has stated means "unknown" in Norwegian.

The SMIRNOFF trademark is well known in many countries and has no meaning that the Panel is aware of other than to signify the goods of the trademark owners. This adds to the distinctiveness of that trademark and makes it more difficult for other traders to establish good faith when using it. The fact that the Respondent has registered a variant of the SMIRNOFF trademark by inserting dashes between each letter indicates to the Panel that the Respondent acknowledged the recognition value in the SMIRNOFF trademark and registered the Domain Name in an attempt to capitalize on that recognition value.

The Complainant asserts that the Respondent has not made any use of the Domain Name since registering it. The Panel has seen no evidence refuting this and notes that the Domain Name does not currently resolve to any website or other online location. This Panel regards registration of a domain name, and its entry in the DNS, as having a blocking effect sufficient to constitute "use". And it is plain in this case that such use is in bad faith.

By listing its name as "Ukjent" which the Complainant has stated means "unknown" in Norwegian, the Respondent has cast further doubt on its bona fide. If the Respondent wished to make bona fide use of the Domain Name, the Panel would expect it to do so by providing accurate and sufficiently detailed information about itself.

In addition to these points, the Panel notes that the Respondent has been given the opportunity to present evidence to prove it has acted in good faith in registering and using the Domain Name but it has failed to do so (although the onus is on the Complainant to satisfy paragraph 4(a)(iii) of the Policy).

Taking these points together, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith, which satisfies paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel finds that all the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel directs that the domain name <s-m-i-r-n-o-f-f.com> be transferred by NSI to the Complainant.

 


 

Philip N. Argy
Sole Panelist

Dated: August 9, 2001