WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Boston Beer Corporation. v. Sergey Kuzichkin

Case No. D2002-0414

 

1. The Parties

Complainant is Boston Beer Corporation, a Massachusetts corporation, with its principal place of business at 75 Arlington Street, Boston, Massachusetts 02116, United States of America. Complainant is represented by Ms. Helen Bornemann, Legal Department, Boston Beer Corporation, 75 Arlington Street, Boston, Massachusetts 02116, United States of America.

Respondent is Sergey Kuzichkin of Titanvision Inc. whose address in the records of the Registrar Go Daddy Software, Inc. is shown as P.O. Box 5571, Langeron 121, Murmansk 183025, Russian Federation.

 

2. Domain Name and Registrar

The domain name in issue is <samueladam.com>.

The Registrar with whom <samueladam.com> is registered is Go Daddy Software, Inc., 14455 North Hayden Road, Suite 219, Scottsdale, AZ 85260, United States of America.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint via email on May 1, 2002 and in hard copy on May 10, 2002. The Center transmitted an Acknowledgement of Receipt of Complaint to the Complainant and to the Respondent on May 3, 2002.

On May 3, 2002, the Center transmitted via email to Go Daddy Software, Inc. a Request for Registrar Verification in connection with this case.

On May 3, 2002, Go Daddy Software, Inc. transmitted via email to the Center, Go Daddy Software, Inc.'s confirmation that Go Daddy Software, Inc. is the Registrar of the domain name in dispute. Go Daddy Software, Inc. advised that Sergey Kuzichkin is the registrant of the domain name <samueladam.com>, and the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy) applies to the domain name. Go Daddy Software, Inc. advised that the registrantís address shown in their records is Sergey Kuzichkin, Titanvision Inc. P.O. Box 5571, Langeron 121, Murmansk 183025, Russian Federation. The Technical contact is Sergey Kuzichkin, Titanvision Inc., P.O. Box 55712, Langeron 121, Murmansk, Russian Federation. The Administrative contact is shown as Sergey Lambert, Titanvision Inc., P.O. Box 55712, Langeron 121, Montreal, Quebec 1830289, Canada whose telephone number is listed as (157) 829-8479. Go Daddy Software, Inc. advised that it had not received a copy of the Complaint from the Complainant.

On May 10, 2002 the Center advised the Complainant by email that the Complainant had indicated that a copy of the Complaint had been sent to the Registrar, Go Daddy Software and that Go Daddy Software had advised that it had not received a copy of the Complaint. The Complainant replied on May 13, 2002 advising that the Complaint was sent to the Registrar via first class mail on May 1, 2002. The Complainant was re-sending a copy of the Complaint to the Registrar via Federal Express.

On May 13, 2002 the Center advised the Complainant that the Complaint listed the disputed domain name as <www.samueladam.com>. The Center requested confirmation that the domain name should be listed as <samueladam.com>. The Complainant confirmed that the disputed domain name is <samueladam.com> on May 14, 2002.

The Center verified that the Complaint satisfies the formal requirements of the Policy, 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). Boston Beer Corporation made the required payment to the Center.

On May 15, 2002, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and to Respondentís Administrative Contact via email, fax and via registered mail to the addresses provided by the Registrar, Go Daddy Software, Inc. In the Notification, the Center advised that the response was due by June 4, 2002, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by June 4, 2002, including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default.

The copy of the Complaint sent by registered mail to Sergey Lambert, Titanvision Inc., P.O. Box 55712, Langeron 121, Montreal, QB 1830289, Canada was returned to the sender marked "no such address". The electronic copy of the Complaint sent to <postmaster@samueladam.com> was also not deliverable. The Mail Delivery service advised that the address <postmaster@samueladam.com> "transient non-fatal errors". The Mail Delivery service attempted to send the message for five days. The message could not be delivered to Respondent and after five days the message was deleted.

On June 5, 2002 the Center issued a Notification of Respondent Default.

On June 27, 2002, the Center advised the parties via email of the appointment of Ross Carson as the sole Panelist, and advised that the decision was due on July 11, 2002. The Center also forwarded the Case File to the Panelist by email and courier on June 27, 2002.

 

4. Factual Background

The Trademark

Complainant advises that since 1984, Complainant has used, registered, and applied to register marks containing the words SAMUEL ADAMS and SAM ADAMS in the United States and in more than fifty-five countries worldwide, in connection with a variety of goods and services, namely beer and ale products, non-alcoholic beverages, bar and restaurant services, television commercial contests, and related merchandise, including clothing, posters, playing cards, coasters, stickers, banners, truck decals, pennant strings, balloons, bottle openers, games, drinking glasses, pitchers, mirrors, footwear, tote bags, vanity cases, balloons, umbrellas, and ornamental lapel pins. In particular, Complainant owns, inter alia, the following valid and subsisting trademark registrations throughout the world: United States Registration No. 1,987,062, dated July 16, 1996, for the mark SAMUEL ADAMS for beer and ale; United States Registration No. 1,987,061, dated July 16, 1996, for the mark SAM ADAMS for beers and ales; Russian Federation Registration No. 155,899, dated August 27, 1997, for the mark SAMUEL ADAMS BOSTON LAGER BREWER PATRIOT and Design for beer and ale; Russian Federation Registration No. 135,286, dated December 15, 1995, for SAMUEL ADAMS BOSTON LAGER BREWER-PATRIOT and Design for beer and ale; Canada Registration No. TMA 460,889, dated August 9, 1996, for the mark SAMUEL ADAMS BOSTON LAGER BREWER-PATRIOT and Design for beer and ale; and European Union Registration No. 001149756, dated July 17, 2000, for the mark SAMUEL ADAMS for beer and ale. Copies of the Trademark Registrations and the pertinent information from the United States Patent and Trademark Office website are attached to the Complaint as Exhibit B.

Complainant Boston Beer Corporation is a successor-in-interest of The Boston Beer Company, Inc. established in 1984. Complainant is a brewer of award-winning beer and ale products that are marketed and sold throughout the United States and in selected international markets. In April 1985 Complainant launched its beer SAMUEL ADAMS BOSTON LAGER. Complainant currently manufactures an entire line of SAMUEL ADAMS beers including SAMUEL ADAMS Cream Stout, SAMUEL ADAMS Double Bock, SAMUEL ADAMS Oktoberfest, SAMUEL ADAMS Spring Ale, SAMUEL ADAMS Summer Ale and SAMUEL ADAMS Winter Lager. For the year ending December 29, 2001 Complainant had worldwide sales of approximately US$192 million for its line of SAMUEL ADAMS beer products.

Complainant submits that as a result of its long and widespread use of its SAMUEL ADAMS trademark, the SAMUEL ADAMS mark has acquired worldwide recognition as identifying the beer and ale products of Complainant. Complainant has spent considerable time, effort and money extensively promoting its products under the SAMUEL ADAMS mark throughout the world. Complainant submits that its SAMUEL ADAMS mark is famous, enjoys a worldwide reputation and renown among consumers of beer and ale products worldwide and serves to identify a single source, Boston Beer Corporation and its aware-winning beer and ale products.

Complainant also owns registrations for domain names incorporating Complainantís SAMUEL ADAMS and SAM ADAMS marks as follows: <samueladams.com>, <samuel-adams.com >, <samadams.com>, <samueladamsbrewery.com>, <samadamslight.com>, <samadamssucks.com>, <samueladamsinternational.com>, <samueladams.biz>, <samadams.biz>, <samadams.info>, and <samueladams.info>. (Exhibit C to Complaint). The domain name <samueladams.com> was registered by Complainant on October 24, 1995, and the domain name <samadams.com> was registered on July 8, 1995.

 

5. Partiesí Contentions

Complainant

Complainant avers that all three elements of the Policy, Paragraph 4.(a) are met because:

1. the domain name in issue is identical or confusingly similar to a trademark in which Complainant has rights;

2. the Respondent has no rights or legitimate interests in the domain name; and

3. the domain name was registered and is being used in bad faith by Respondent.

a. Identical or Confusingly Similar

Complainant submits that the domain name <samueladam.com> is virtually identical and confusingly similar to Complainant's trademarks which comprise the words SAMUEL ADAMS and SAM ADAMS.

The only difference between the domain name in dispute <samueladam.com> and Complainant's trademarks SAMUEL ADAMS and SAM ADAMS is the letter "s".

In July 1995 Complainant launched an Internet site at <samadams.com> to provide information about Complainant's history, and to promote, its SAMUEL ADAMS and SAM ADAMS line of products, computer "activities", including games, screen savers and trivia questions and photographs of related merchandise available for sale through its website. Complainant advises that during the twelve-month period from April 1, 2001 to March 31, 2002, Complainantís "Samuel Adams" website received a total of 32,205,679 "hits" and had a daily average of 183,693 "hits".

Respondent registered <samueladam.com> on January 16, 2002. Complainant submits that Internet users who mistype Complainant's SAMUEL ADAMS mark by omitting the letter "s" are instantly transferred to Respondent's pornographic website at <boobsandtits.com>. Users who attempt to exit from Respondent's website are assaulted with pop-up windows containing additional pornographic websites and pornographic images and banner advertisements for additional pornographic websites. At times it is not possible to exit from the website except by shutting down the computer.

Complainant submits that Respondent chose the domain name <samueladam.com> to prey on the millions of Internet users looking for Complainant's official Samuel Adams website to "free-ride" on the goodwill associated with the distinctive SAMUEL ADAMS mark of Complainant.

Complainant submits that as a mere misspelling of Complainant's SAMUEL ADAMS mark, respondent's domain name is confusingly similar to such mark. Complainant cites Bama Rags, Inc. v. Zuccarini, FA 94380 Nat. Arb. Forum, (May 8, 2000), Bloomberg L.P. v Baltic Consultants Ltd., FA 95834 Nat. Arb. Forum, (November 20, 2000).

b. Respondent has no rights or legitimate interest in the domain name

Complainant submits that Respondent cannot demonstrate any legitimate interests in the domain name <samueladam.com>.

Complainant submits that Respondent is using the <samueladam.com> domain name to divert Internet users looking for Complainant's Samuel Adams website and who misspell Complainant's SAMUEL ADAMS mark to an unrelated website featuring sexually explicit and pornographic images.

Complainant advises that Respondent is not a licensee of Complainant. Based on the content of Respondent's pornographic website and the registration information supplied by Respondent, Respondent does not appear to be commonly known by the name "Samuel Adam".

Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the domain name. The website operated by Respondent is a commercial site and generates profit from users who pay to view pornographic images and/or from banner advertisements, which supports the finding that Respondent has no rights or legitimate interests in the domain name in dispute. Complainant cites MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 which found that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant's mark.

Complainant further submits that Respondent's use of the domain name in dispute in conjunction with pornographic and sexually explicit images tarnishes and dilutes Complainant's SAMUEL ADAMS mark by giving consumers the impression that Complainant endorses, sponsors, or is otherwise affiliated with Respondent's website and the pornographic content thereof.

c. The Domain Name was Registered and Is Being Used in Bad Faith

Complainant submits that Respondent registered the domain name in dispute without any bona fide basis for such registration in an attempt to capitalize unfairly on the fame of the SAMUEL ADAMS trademarks owned by Complainant. Complainant cites Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 in which the Panel held that "veuvecliquot.org" is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.

Complainant submits that Complainant has enjoyed exclusive rights to the distinctive SAMUEL ADAMS mark by virtue of the long and widespread use of the mark. Complainant has never consented to Respondent's registration of a variation of the SAMUEL ADAMS mark nor is it associated with Respondent in anyway. Complainant submits that Respondent is preying on Complainant's mark and goodwill associated with it to divert Internet users to Respondent's websites where it provides pornographic services. Complainant cites inter alia Bloomberg L.P. v. Baltic Consultants Ltd., FA 95834 Nat. Arb. Forum, (November 20, 2000), finding bad faith where Respondent used a misspelling of Complainant's mark to divert users to its own websites where it provided pornographic services.

Complainant submits that Respondent is a "typosquatter" because the domain name is nothing more than a typographical error of the name "Samuel Adams" used to intercept Internet users looking for the official Samuel Adams website operated by Complainant. Complainant cites inter alia Bama Rags v. John Zuccarini, FA 102943 Nat. Arb. Forum (February 4, 2002) finding that Respondent acted in bad faith by registering the domain name <davemattews.com>, a misspelling of Complainant's famous "Dave Matthews Band" trademark and name.

Complainant advises that on February 19, 2002, Complainant sent a protest letter to Respondent by U.S. Express Delivery at the address provided in the WHOIS print-out requesting Respondent to contact Complainant. The letter was returned to Complainant as "undeliverable". Complainant also sent the protest letter to Sergey Lambert of Titanvision at the address listed in the Administrative Contact section of the WHOIS printout, which letter was also returned to Complainant as "undeliverable". Complainant submits that Respondent has further acted in bad faith by providing clearly fictitious and/or inaccurate address information to the registrar Go Daddy. Complainant cites World Wresting Federation Entertainment, Inc. v Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000).

b) Respondent

The Respondent did not submit a Response.

 

6. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to a mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a Respondentís registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The Panel has assured itself that the parties have been treated with equality and Respondent has been given a fair opportunity to present its case (the Rules, Paragraph 10.(b)). Accordingly, in the Panelís view, the Respondent has been afforded due process.

b. Identical or Confusing Similarity

Complainant has the burden of proving that the trademark and domain name in dispute are identical or confusingly similar.

The Complainant has used, registered and applied to register trademarks containing the words SAMUEL ADAMS and SAM ADAMS in the United States in connection with beer and ale products, in association with products and services associated with the promotion of beer and ale products. Use commenced in the United States in 1984. Complainant owns valid and subsisting registrations in the United States for the trademarks SAMUEL ADAMS and SAM ADAMS for beer and ale. Complainant is the owner of Trademark Registrations for trademarks containing the words SAMUEL ADAMS in the Russian Federation, Canada, European Union. Complainant's beer and ale products are sold throughout the United States and in selected international markets. SAMUEL ADAMS beer and ale products have won more than 440 international awards and are distributed throughout the United States, Canada and numerous other countries including Australia, Denmark, German, Guam, China, Japan, Saipan, Sweden, Switzerland, and the United Kingdom.

The Respondent did not file a Response to the Complaint. The domain name in dispute <samueladam.com> is confusingly similar to the Complainant's trademarks for or including the words SAMUEL ADAMS.

In Bloomberg L.P. v Baltic Consultants Ltd., FA 95834 Nat. Arb. Forum, (November 20, 2000) the respondent's domain name <bloombergl.com> was found to be confusingly similar to Complainant's trademark "Bloomberg".

The Panel finds that the domain name in dispute and the Complainantís trademark are confusingly similar.

c. Rights or Legitimate Interests

The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain names in dispute.

A Respondent may demonstrate rights and legitimate interests in a domain name or domain names in dispute by establishing one or more of the circumstances set out in Paragraph 4.(c)(i)(ii) and (iii) of the Policy. The Respondent is not limited to the three circumstances which read as follows:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 did not file a Response to the Complaint. The Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. Respondent is using the domain name <samueladam.com> to divert internet users looking for complainants SAMUEL ADAMS website who misspell the mark to an unrelated website featuring sexually explicit and pornographic images.

The Respondent is not a licensee of the Complainant and based upon Respondent's pornographic website the Respondent does not appear to be known by the name "Samuel Adams".

The Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The website associated with the domain name in dispute is a commercial site and generates a profit from users who pay to view pornographic images or from banner advertisements for additional pornographic sites. See MatchNat plc v. MAC Trading, WIPO Case No. D2000-0205 in which the Panel found that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting internet users to a website offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant's work.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

d. Registration and Use in Bad Faith

The third matter which the Complainant must prove is that the domain name has been registered and is being used in bad faith.

The trademarks for or including the word SAMUEL ADAMS in association with beer and ale have been in substantial use since 1984. The Respondent registered the domain name in dispute on January 16, 2002. The Respondent did not file a Response. The Panel finds on a balance of probabilities that the Respondent would not have selected the domain name <samueladam.com> without knowing of the reputation of SAMUEL ADAMS in relation to beers and ales. In Veuve Cliquot Ponsardon, Maison Fondee en 1772 v.The Polygenix Groupe Co., WIPO Case No. D2000-0163, the Panel held that "Veuve Cliquot.org is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."

The Complainant has made widespread use of the trademarks comprised of or including SAMUEL ADAMS or SAM ADAMS in association with beer and ale and services and products associated with the promotion of the trademarks. Complainant has never consented to Respondent's registration of a variation of the SAMUEL ADAMS trademarks. A trademark including SAMUEL ADAMS is not associated with the Respondent is any way. The Respondent registered the domain name in dispute in order to divert internet users who fail to include the letter S in SAMUEL ADAMS to Respondent's own website where it provides pornographic material or banners relating to the pornographic material of others. Association of a trademark with a pornographic website can itself constitute bad faith. CCA Ind. Inc. v. Dailey WIPO Case No. D2000-0148.

The Respondent has provided the Registrar Go Daddy Software with clearly fictitious addresses in Murmansk and Montreal which are virtually identical despite being in different countries, a further factor evidencing registration in bad faith. See World Wrestling Federation Entertainment Inc. v Matthew Bessette WIPO Case No. D2000-0256.

The Panel finds that the domain name <samueladam.com> has been registered and is being used in bad faith.

 

7. Decision

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 <samueladam.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: July 11, 2002