WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Dewar & Sons Limited v. Roni Abou Jaoude and CRM Consulting
Case No. D2003-0175
1. The Parties
The Complainant is John Dewar & Sons Limited, a body corporate with a principal place of business at Glasgow, Scotland, United Kingdom of Great Britain and Northern IrelandG32 8XR. It is represented by Roberts, Mlotkowski & Hobbes, McLean, P.C., 8270 Greensboro Drive, Suite 850, McLean,Virginia, United States of America.
The Respondents are (1) Roni Abou Jaoude, (2) CRM Consulting, both having a common post office address in Costa Mesa, P.O. Box 3862, Costa Mesa,California82628,, United States of America.
2. The Domain Names and Registrar
The dispute concerns the following domain names <williamlawsons.com> and <william-lawsons.com >.
The Registrar of each of these domain names is TierreNet Inc.d/b/a DomainDiscover, whose mailing address is DomainDiscover, P.O. Box 502010, San Diego, California 92150-2010 United States of America ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center) on March 3, 2003. On March 5, 2003, the Center acknowledged receipt by e-mail directed to the Complainantís representative and to the Respondent and on the same date sent to TierraNet d/b/a DomainDiscover a request for registrar verification in respect of each of the domain names in issue. The Registrar replied on the same day confirming that the Respondent CRM Consulting was listed as the registrant in respect of the domain name <williamlawsons.com> and that the Respondent Roni Abou Jaoude was listed as the registrant listed in respect of the domain name <william-lawsons.com>. Further, the Registrar provided the contact details for the administrative, billing and technical contact.
Upon request, the Complainantís representative supplied an electronic version of the Complaint on March 6, 2003. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by ICANN, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") in accordance with paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules.
In accordance with paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 7, 2003. In accordance with paragraph 5(a) of the Rules, the due date for the Response was March 27, 2003. The Response was sent to the Center late in the evening on March 27, 2003.
On April 8, 2003, the Center appointed the undersigned to serve as sole panelist in this proceeding, following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration").
The Panel has independently determined and agrees with the assessment of the Center that the Complainant has met the formal requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
Complainantís Factual Assertions
The Complainant is the successor to William Lawson Distillers Limited, a distiller of scotch whisky which traces its business to the nineteenth century. In 1992, Bacardi & Company Limited acquired assets including the business of William Lawson Distillers Limited. In 1998, Bacardi acquired the business of John Dewar & Sons Limited, also a well known distillery. By special resolution of July 16, 1998, William Lawson Distillers Limited changed its name and was incorporated under the name John Dewar and Sons Limited. With this change of name the brands of William Lawson and John Dewar, their trademarks and their whisky businesses were merged.
Upon this change in corporate name, the Complainant is the owner of the trademark "WILLIAM LAWSONíS" as applied to spirits, more precisely, scotch whisky. Sales under this trademark made prior to wartime were resumed after the end of World War II. Since that time, this mark has been in use in various countries throughout the world. In more recent times, the main markets for the WILLIAM LAWSONíS" branded whisky have been in France, Spain, Portugal, Italy, Belgium, Mexico and Lebanon, though sales have also been made in Africa, Latin America and North America.
The Complainant, or its predecessors, have registered or applied for registration of the mark "WILLIAM LAWSONíS" in 88 countries. On March 15, 1965, this mark was registered in the United States of America on the Principal Register, under no. 786911, with respect to scotch whisky. This registration was based on dates of first use in the United States of America in 1963. The mark "WILLIAM LAWSONíS" applied to wines and spirits was registered in Lebanon on July 29, 1977, as no. 34121. Both registrations have been renewed.
Further, the Complainant also registered a label design applied to bottled whisky. In relatively large and distinctive lettering this design mark prominently identifies the product sold under the label as "WILLIAM LAWSONíS" whisky. The Complainant or its predecessors registered or applied for registration of this design mark in 94 countries. This design mark was registered in the United States of America on March 22, 1977, on the Supplemental Register under registration no. 1061915. A similar design mark, "WILLIAM LAWSONíS (Label)" applied to wines and spirits, was registered in Lebanon on July 29, 1977, under registration no. 34120. The Complainantís Annex E and Annex G include photographs showing the bottled spirits and the prominent position of the word mark on the label.
The Complainantís Annex C identifies in a status chart, the many countries in which the two trademarks referred to above have been protected, as well as a number of marks in which "WILLIAM LAWSONíS" is included as a prominent element.
The Complainant submits that the trademark "WILLIAM LAWSONíS" is well known though extensive sales, advertising and promotion. In each of the years 1996 through 2002, sales of "WILLIAM LAWSONíS" whisky have approached or exceeded one million dollars per year. The principal markets in these periods for "WILLIAM LAWSONíS" whisky were in Europe, The Middle East and Africa, with lesser amounts in Latin America and North America. See the sales figures provided in Annex F.
The Complainant submits that it has expended substantial sums of money, time and effort in promoting, advertising and protecting the trademark "WILLIAM LAWSONíS" such that it has gained public recognition in its markets and abroad. The Complainant has used print, Internet, radio and television media to advertise its mark. A novel promotional program has toured, with a visitor centre on wheels, bringing the "WILLIAM LAWSONíS" distillery to consumers and potential consumers. Through this program, visitors can learn about "WILLIAM LAWSONíS" whisky and also taste samples of the product. In 1998, this tour covered Belgium and France and in 1999, extended to sites in Portugal, France and Belgium. In 2000 program toured in Spain and Lebanon and in 2001 again in Spain.
Lebanon has been an important market for "WILLIAM LAWSONíS" whisky. The Respondent, Abou-Jaoude, has lived in and visited Lebanon, and has had close ties with Lebanon.
The Complainant asserts that it has strong rights in its "WILLIAM LAWSONíS" trademark.
The domain name <williamlawsons.com> was registered on April 23, 2000. The registrant was said to be CRM Consulting at Post Office Box 3862, Costa Mesa, California. The administrative contact was identified as Roni Abou Jaoude at the same post office address.
The domain name <william-lawsons.com> was registered on June 29, 2002. The registrant was said to be Roni Abou Jaoude at Post Office Box 3862, Costa Mesa, California. The administrative contact was said to be Roni Abou Jaoude at the same address.
Upon becoming aware of the unauthorized domain name registration of <williamlawsons.com>, the Complainant sent a letter on June 11, 2002, to Roni Abou Jaoude requesting the cessation of illegitimate use of Complainantís trademark.
5. Partiesí Contentions
The Complainant contends that the owner of both domain names is essentially the same person, Roni Abou-Jaoude. There is no evidence to identify CRM Consulting as more than an alter ego and this has not been disputed by the Registrants.
The Complainant alleges that the Respondentsí domain names <williamlawsons.com> and <william-lawsons.com> are each virtually identical to, and confusingly similar to the registered mark "WILLIAM LAWSONíS" in which the Complainant has exclusive rights. The Complainantís rights antedate any acts by the Respondents, by a considerable period of years.
The Complainant has not given any licence, permission or authorization to use its trademark or either domain name. It alleges that the Respondent of record was not using the domain name <williamlawson.com> in connection with a bona fide offering of goods or services at any time prior to the Complainantís warning letter. The Complainant asserts that as recently as June 11, 2002, the said domain name was merely being held with the goal of selling the registration to the owner of the trademark or to some third party.
On June 11, 2002, the Complainant wrote to Roni Abou Jaoude, the technical contact in respect of <williamlawson.com>, (the first and only domain name at that point in time), and requested that the Respondent cease further use of the Complainantís trademark in its domain name. It sought an early and amicable resolution of the matter. Following a telephone conference on June 19, 2002, with Mr. Abou Jaoude, the Complainant indicated a willingness to make a no-liability payment of £5,000. to bring the matter to a close.
On the same date Mr. Abou Jaoude replied as follows:
(1) "Please note that we are already getting in what amounts to 80,000 to 120,000 Hits per week on the domain name thatís with 0 Advertisement. we did get some offers from different dealers around the world (France and Spain) which we did not accept due to the non-fairness of the offer."
(2) "As for your offer, it is way on the low side (because we have received offers for higher amounts that were rejected, but I will discuss it nevertheless with the parties involved Ė If your offer should be £50,000 th(a)n I think it may be accepted,Ö."
A later e-mail from Mr. Abou Jaoude on July 3, 2002, repeated the request for a higher amount. It is noted in the correspondence between the parties that the Respondent makes reference to others having approached him to purchase the domain name. The Complainant suggests that the Respondent either made such a statement to induce it to pay a higher price for the purchase of the domain name or intended marketing the domain name to others having no legitimate interest in the domain name.
While carrying on settlement negotiations in the period June 19 to July 9, 2002, Roni Abou-Jaoude registered in his own name the domain name <william-lawson.com> on June 29, 2002. On August 16, 2002, Roni A Jaoude secured through the California Business Portal, a corporate name, William Lawsons Inc. See Complainantís Annex P
There is evidence that until a recent date, if one were to access <williamlawsons.com> it automatically linked to health products sourced in the South Pacific. As seen in Annex K, there is on this site of any legitimate use of William Lawson in any form or any affiliation with the domain name. The Complainant submits that the Respondent was itself using or allowing others to use the domain name to direct traffic to a commercial site relating to juice and oils that have no relation to the Complainantís trademark or brand.
At about the same time as this change was made in the domain name website <williamlawsons.com>, Mr. Abou-Jaoude changed his website "abou-jaoude.com". Where that site previously employed his initials in referring to the business as "RAJ Advertising", he changed the title of the business to "William Lawsons". The altered website continued to refer not only to the graphics business, but also the incorporation and the South Pacific products. See Complainantís Annex L.
The second domain name <william-lawsons.com>, registered after receiving notice of the complaint, has duplicated the content of the altered domain name <abou-jaoude.com>, and makes no legitimate use of the domain name. See Complainantís Annex N.
The Complainant contends that the Respondentsí have registered as domain names a mark which is identical or confusingly similar to the Complainantís trademark, that the Respondents have no rights or legitimate interests in respect of its domain names and that the Respondents have registered the domain names in bad faith and used the domain names in bad faith.
The Respondents allegations are rambling but may be briefly summarized in the order in which they are advanced, as follows:
(1) the Complainant has registered too many domain names but neglected to register the domain names now in contention.
(2) the Respondent denies having ever heard of the trademark "WILLIAM LAWSONíS" before selecting the words for the first domain name now in issue.
(3) the Complainantís trademark is not famous in California or the United States. Each word in the trademark can be shown to be common names in the United States.
(4) an account of the circumstances which led to the choice by Mr. Abou-Jaoude of the name William Lawson.
(5) an explanation of Complainantís Annex I
6. Discussion and Findings
The Panelist finds that the Complainantís trademark "WILLIAM LAWSONíS" is a strong, arbitrary and well known trademark applied to scotch whisky. The Complainantís U. S. federal trademark registration, Lebanese registered trademarks and registered trademarks in Canada, the United Kingdom, Europe and the Middle East establish the validity and right to exclusive use of each of the marks in respect of the services defined in the respective registrations. The use, goodwill and registration of the mark "WILLIAM LAWSONíS" was established many years before the date of creation of the Respondentís domain name. Accordingly, the Panelist finds that the Complainant has rights for stating a complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following elements to obtain a remedy:
(i) that the domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interest in respect of the domain names; and
(iii) that each domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has established its rights in the trademark with the extensive registration of its trademarks.
The domain name <williamlawsons.com> is virtually identical to the Complainantís registered trademark "WILLIAM LAWSONíS". The Respondent has merely removed the space between the two words and the apostrophe. Spaces and apostrophes are not permitted in domain names. It is also quite clear that the element "com" is to be ignored for the purpose of assessing similarity.
In the case of the second domain name, <william-lawsons.com>, the addition of a hyphen does not lessen the virtually identical and confusingly similar nature of the domain name. Decisions of previous panels have held that the addition or deletion of a hyphen makes an insubstantial difference to the appearance, pronunciation and meaning of the term. Draw-tite, Inc v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017 and Club Méditerranée v. Yosi Hasidim, WIPO Case No. D2000-1350. The domain names and trademark at issue are so similar that members of the public, especially those in Europe and the Middle East using the Internet, would inevitably associate the domain names with the Complainant. Evidence of lack of confusion is irrelevant since the test is confined to a consideration of the disputed domain name or names and the trademark. Gateway, Inc.v. Pixelera.com, Inc., WIPO Case No. D2000-0109.
The Respondents have objected to the Complainant registering a series of domain names including the name william lawson together or hyphenated and under more than one of the generic Top Level Domains. The suggestion is that the Complainant is monopolizing the wording by registering a variety of domain names. But the variety of registrations obtained by a party is not the issue in these proceedings. Nor is the fact that the person writing the initial letter of complaint misspelled the Complainantís trademark by omitting the last letter (ís) The three issues to be considered are set out in paragraph 4(1)(i) above.
The Internet has no territorial boundaries. The Complainant does not have to show that it has acquired rights in the mark worldwide or even in California or the United States of America where the Respondents are located. The Complainantís prior use or registration of its mark anywhere is sufficient to state a claim. Thus if the mark is known and registered in countries of Europe and Lebanon, the Policy requires that the question of identity and confusing similarity be evaluated based solely on a comparison between the complainantís trademark and the domain name in issue. In this case the mark and the domain name are so similar as to be likely to create confusion.
The Panelist finds that each of the Respondentís domain names are at the least, confusingly similar to the Complainantís trademark. The Complainant succeeds in establishing the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Complainantís use of its trademark predates the registration of the Respondentsí domain names by several years. The Respondent has not shown any association with the Complainant, nor any license or other authorization to use the Complainantís trademark in its entirety in a domain name
The Complainant alleges that the Respondentís registration of the domain name <williamlawsons.com> was not followed by any legitimate use of the name in connection with a good faith offering of goods or services. The registration was merely shelved with the intention of selling the registration at some later date. The Respondent denies that it registered the domain name primarily to sell it to the Complainant. It does not deny the allegation that there was no use of the name offering goods and services in good faith following initial registration and even after the dispute commenced. Nor does it deny that the Respondent would sell the domain name to others than the Complainant. This appears clear from what Mr. Abou-Jaoude said in referring to offers from different dealers in France and Spain which he said to be greater than the Complainant proposed but presumably less than was sought.
In his correspondence, Mr. Abou-Jaoude appears to deny any knowledge of the trademark prior to the letter of complaint.
His explanation of what led him to select <williamlawsons.com> as the chosen domain name is a surprising story. As he recounts the tale, it turns on his good fortune following service at the age of 16 in the Lebanese army at war with Syria, when his home and village were destroyed and many of his family killed. A member of a United Nations unit stationed in Lebanon facilitated his flight to Cyprus by boat in October 1990. The manís name was William Lawson.
Mr. Abou-Jaoude within a week moved to Romania and later to the United States of America. He credited Lawson with his escape from the war, never forgot his kindness, named one of his children William, and some ten years after his escape to Cyprus, selected as a domain name <williamlawsons.com>.
This Panel would be more inclined to accept the account if there was corroboration evidence. "The addition of the letter "s" to "williamlawson" would lead one to conclude The inclusion of the apostrophe "s" raises doubt that the origin of the domain name owes more to the Complainantís trademark than the memory of the UN officer.
There is also some reason to believe that Mr. Abou-Jaoude had or should have had knowledge of the Complainantís wares in the market when on June 11, 2002, copied promotional material bearing the "WILLIAM LAWSONíS" trademark, text and as well photographs of the Complainantís wares. The site is said to be at the courtesy of Roni A-J. Compare Complainantís Annex I with the second page of its Annex J. which was copied from the website of one of the Complainantís distributors.
The Complainant interpreted Annex I to support a conclusion that the Respondent was offering the website to sell the domain name. Mr. Abou-Jaoude asserted that this was the work copied for his other website "abou-jaoude.com" with the intention to sell the latter mark. His explanation is vague and unsatisfactory. One would not immediately conclude that the words "Domain Name for Sale" applied to very small print beneath the design or at the foot of the page.
Further, Mr Abou-Jaoude suggests that once in the United States of America he would live, raise his children, retire and die in the United States of America. That may be so, but consideration of the Complainantís Annex O, discloses that he is familiar with Lebanon and involved in a number of ventures related to Lebanon, including operation of a website called "downtownbeirut.com" involving a considerable current information. It might be noted that he takes a photographic credit, which would suggest that he also has visited Beirut at least on one recent occasion.
Absent any evidence on the record establishing the Respondentís rights or legitimate interests in the domain name <williamlawsons.com>, the Panel finds that the Respondent has no rights or legitimate interests in that domain name. The second domain name, <william-lawson>, registered after the complaint was lodged is clearly without rights or interests.
The Respondent states that a trademark search was made to insure that there was no conflict in adopting the domain name. The print out Annex E appears to show that the inquiry was made in 2002, or later, not prior to the first registration obtained. The Complainantís marks were then and are now on record. The error was in entering the inquiry, a good reason to hire an agent who is well versed in searching the database. The Respondent cannot claim that great care was taken to avoid conflicting prior trademark registrations.
Registered and Used in Bad Faith
For a significant period of time, approaching two years from the initial registration, the domain name <williamlawsons.com> in the hands of the Respondent was inactive. The prolonged non-use of a domain name has been held to support a finding of registration in bad faith. The Complainant relies on the case of Mary-Lynn Mondich et al v. Shane Brown, WIPO Case No. D2000-0004, where the panel said " it is possible to infer from this failure of use that the domain name was registered without bona fide intent to make good faith use".
Moreover in the course of discussions to resolve the dispute, the Respondent requested the payment of £ 50,000. for the transfer of the earlier domain name, a sum far in excess of out-of-pocket expenses and clearly an extortionate amount.
As to the registration of <william-lawsons.com> after the complaint was raised, there is prior authority that holds that registration in bad faith on the part of the Respondent is to be inferred where the Respondent has used hyphens as a device to obtain a domain name which is otherwise in all respects identical to anotherís trademark. SeekAmerica Networks Inc. v. Tariq Masood and Solo Sign, WIPO Case No.D2000-0131; Columbia Sportswear Co. v. Mahlon Keeler, WIPO Case No. D2000-0206.
However, apart from that holding, the close similarity between the two domain names and the timing of the second registration clearly indicates that the domain name was registered in bad faith.
Coupled with the actions taken by the Respondents, these matters confirm the conclusion that each of the domain names in issue has been registered and is being used in bad faith.
This Administrative Panel decides that the Respondents have registered the domain names <williamlawsons.com> and <william-lawsons.com>, each being confusingly similar to the Complainantís trademark WILLIAM LAWSONíS, that each Respondent has neither rights nor legitimate interests in respect of their respective domain name and that each Respondent has both registered and used their respective domain name in bad faith.
The Panel decides that each of the said domain names should be transferred to the Complainant.
James G. Fogo
Dated: May 8, 2003