WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Dewar & Sons Limited v. Rudy Rbeiz
Case No. D2003-0207
1. The Parties
The Complainant is John Dewar & Sons Limited, of Glasgow, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Roberts, Mlotkowski & Hobbes, P.C. of United States of America.
The Respondent is Rudy Rbeiz, of Medawar, Beirut 20727508, Lebanon.
2. The Domain Name and Registrar
The disputed Domain Name <williamlawson.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2003. On March 17, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name at issue. On March 18, 2003, Tucows transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2003. The Respondent did not submit any response until this deadline. Accordingly, the Center notified the Respondentís default on April 11, 2003.
The Center appointed Thomas Legler as the sole panelist in this matter on April 17, 2003. 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.
On April 23, 2003, the Center received an e-mail from the Respondent indicating that he had not been able to send any documents or other communication to the Center due to a death in the family.
In view of this communication and the extenuating circumstances indicated in it, the Panel, acting pursuant to Rule 10(b), which requires that each party be given a fair opportunity to present its case, granted on April 30, 2003, another 10 days to the Respondent within which to file its Response with the Center.
On May 19, 2003, the Complainant requested the Administrative Panel for permission to file a reply brief. The Panel accepted this submission under the condition that the Respondent be heard a second time. The latter replied under a brief communication dated May 28, 2003. No further submissions were admitted by the Panel from either party. The new deadline for issuing a decision was set for June 10, 2003.
4. Factual Background
"WILLIAM LAWSONíS" is a trademark related to a scotch whisky produced since the 19th century. The trademark first belonged to William Lawson Distillers Ltd. and was later passed onto Martini & Rossi, which sold the trademark and the related business in 1992, to Bacardi & Co. Ltd. In 1998 Bacardi & Co. Ltd. acquired John Dewar & Sons Limited and in the framework of this transaction combined the WILLIAM LAWSONíS brand and whisky business with the Dewar scotch whisky brand and business. By special resolution of July 16, 1998, William Lawson Distillers Ltd., changed its name and was incorporated under the name of John Dewar and Sons Limited, the actual Complainant.
The first use of the trademark in question occurred approximately 150 years ago. After being inactive for some time, the brand was re-launched at the end of World War II. Since this time the brand has been in regular use in various countries, in particular in France, Spain, Portugal, Italy, Belgium, Mexico and Lebanon (Annex D). Today, the Complainant is the owner of approximately 200 trademark applications and registrations including the mark "William Lawsonís" or a close approximation thereof. These applications and registrations cover over one hundred countries (Annex C) including Lebanon, where the Respondent lives. Lebanon is an important market for WILLIAM LAWSONíS products and the trademark was registered there in 1977.
The Complainant has spent considerable amounts of money, time and efforts in securing, developing, promoting, advertising and protecting its trademark. The Complainant spent approximately 20 million dollars last year to promote and advertise its mark. Sales of WILLIAM LAWSONíS whisky have exceeded a million cases per year for each of the last several years (Annex F). Moreover WILLIAM LAWSONíS finest blended is currently rated the number 15 scotch brand in the world, which is quoted in all industry media and was quoted as the fastest growing scotch whisky in 1999 worldwide (Annex E).
The Complainant has also used print, internet, radio and television promotions to advertise its WILLIAM LAWSONíS branded goods to the general public and ensure that the brand was widely recognized. Consistent television campaigns over the last 5-10 years, including in Lebanon, have further helped to promote WILLIAM LAWSONíS (Annexes D and E).
The Domain Name was registered with Tucows Inc., on March 14, 2000. The Registrant was Mr. Rudy Rbeiz living in Beirut, Lebanon. Pursuant to the additional evidence submitted by the Complainant in its Reply Brief of May 17, 2003, and accepted by this Panel, the Respondent contacted the Complainantís counsel with the purpose of trying to sell the Domain Name to the Complainant. Indeed, in an e-mail of March 24, 2003, (Annex A, to the Complainantís Reply Brief) the Respondent proposed to sell the Domain Name to the Complainant for US$ 5,000.
5. Partiesí Contentions
The Complainant indicates that the Domain Name is identical or virtually identical to the Complainantís WILLIAM LAWSONíS trademark. It further asserts that in light of the fame of the mark it is virtually impossible that the Respondent was not aware of the Complainantís rights in the term "William Lawson" and/or any near approximations thereof. Therefore, it appears clear to the Complainant that the Respondent did not intend to use the registration of the Domain Name for any legitimate reasons.
Furthermore, the Complainant is astonished about the large number of hits of over 3,000, which is unusual for the Respondentís website, i.e. a site that has virtually no content. The Complainant assumes that the large number of hits is due in significant part to consumers guessing that the Complainantís famous scotch would be showcased at <williamlawson.com>. The Complainant indicates that panels have found that the inclusion of a counter to monitor the number of visitors to the site without other content like in the present case, could constitute an attempt by the Respondent to show the Complainant the popularity of the Domain Name what may be considered as the Respondentís offer to sell and indicative of the bad faith registration and use of the Domain Name. In the Complainantís opinion, the facts in the present situation indicate that this is the Respondentís intent, all the more that the Respondentís site "mybookyourbook.com" linked to <williamlawson.com> does not include such a counter.
The fact that the Respondentís website is linked to the Respondentís "mybookyourbook.com" which is a commercial website makes clear that the Domain Name is being used to trade on the fame of the Complainantís mark and lure web surfers to the Respondentís commercial site. The Complainant concludes that it is clear that the Respondent selected the Domain Name to:
- prevent Complainant, the owner of the subject trademark, from reflecting the mark in a corresponding domain name, and/or
- intentionally attract, for commercial gain, internet users to his website or other online location, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location, and/or
- offer to sell the Domain Name to Complainant at an inflated price, or contrary to 4(b)(i) of the Policy.
The Complainant also indicates that the Respondent has no legitimate rights in and to the terms "WILLIAM LAWSONíS" or "William Lawson" and has never had any legitimate rights. There is no indication that the Respondent operated under the tradename "William Lawson" or <williamlawson.com>. The Complainant also draws the Panelís attention to the fact that the Complainantís trademark registrations, also in Lebanon, pre-date the subject Domain Name registration by many years, which shows that the Respondent had at least constructive notice of the Complainantís rights, a fact that constitutes a bad faith registration. In accordance with paragraph 4(b)(i) of the Policy, the Complainant therefore requests the Administrative Panel render a decision that the contested Domain Name be transferred from the Respondent to the Complainant.
In its Reply Brief dated May 17, 2003, and accepted by the Panel, the Complainant submitted additional evidence of the Respondentís bad faith that was not available at the time of filing of the Complaint. Pursuant to the Complainant, the Respondent contacted the Complainantís counsel after this proceeding had been instituted with the purpose of trying to sell the Domain Name to the Complainant. By asking USD 5,000 the Respondent admits in the Complainantís view that his monetary offer is beyond any out-of-pocket expenses that he had incurred in connection with the registration of the Domain Name, and is thus a strong indication of the Respondentís bad faith. The Complainant also draws the Panelís attention in its Reply Brief to the fact that the Respondentís e-mail of March 20, 2003 (Annex A to the Reply Brief) contains the sentence "I am a student and I just chose William Lawson because I like your commercials". However, in its Response, the Respondent stated that his reason for selecting the Domain Name was to create a website remembering a Baccardi night, which he shared with his girlfriend, whom he is still with. In the Complainantís opinion, the Respondent changed his reason for adopting the Domain Name because he wants to ensure that his action and reasons are not perceived as interfering with the Complainantís rights to control its trademark. The Complainant therefore concludes and reiterates that the Respondent selected the Domain Name for a bad faith purpose and that the Respondent has failed to offer any legitimate evidence of its good faith in connection with the Domain Name.
In its Response dated May 9, 2003, the Respondent admits having set up a website under the Domain Name with a navy blue background, a picture of a lady sitting on a car and a three-line joke about the effect of drinking, as well as a small picture of the bottle of WILLIAM LAWSONíS. He indicates that anyone who saw the website was thinking that he was doing a marketing campaign for WILLIAM LAWSONíS. He considers that the content of this site has nothing illegal and was, on the contrary, more a humoristic page. The Respondent does not see where there is bad faith, since the whole purpose of registering the Domain Name was that he met his girlfriend on a Baccardi night, when they had a drink together. The website was therefore the founding memory of their relationship and their way to thank WILLIAM LAWSONíS.
Regarding his website "mybookyourbook.com", the Respondent indicates that he developed it with the help of a friend at school. He underlines that there is no commercial purpose since the website sustains itself by itself and that the books are exchanged for free. When this site was done, he put a banner on the "www.williamlawson.com" webpage. There was not illegal profit by doing that.
The Respondent further points the Panelís attention to the fact that he did not take the Domain Name <william lawsons.com> but <williamlawson.com>. He does not understand why the Complainant did not register this Domain Name in the year 2000 already.
Regarding the counter on its website, the Respondent indicates that the number of 3,000 is not significant, since the counter counts every refreshment by a browser and not the number of website visitors. He concludes that he did not use that Domain Name in bad faith, nor for making any profit. It was "just a personal thingy".
In its e-mail of May 28, 2003, to the Center constituting its Rejoinder to the Complainantís Reply Brief, the Respondent indicates that he has contacted the Complainant only in order to try to solve the issue as soon as possible and by stating honestly what fees he had and asking for a fair return. This return must contain, pursuant to the Respondent, also a compensation for emotional and/or any other kind of loss.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following elements to obtain a remedy:
- 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 rights or legitimate interest in respect of the domain name and
- that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proven its rights in the trademark "WILLIAM LAWSONíS" and established its extensive registration in many countries of the world. The Panel also finds that the Complainantís Trademark is a strong and well-known trademark applied to Scotch whisky.
The Domain Name <williamlawson.com> is confusingly similar or practically identical to the Complainantís Registered Trademark "WILLIAM LAWSONíS". The fact that the space between the two words and the apostrophe as well as the terminating Ďsí have been removed by the Respondent does not change the Panelís assessment that there is confusing similarity. Consequently, the Panel has no doubt that the Complainant has proven the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the Respondent has not shown any association with the Complainant nor any license or other authorization to use the Complainantís Trademark in a Domain Name.
The Panel holds that the Respondent himself does not deny knowing the Complainantís famous trademark, which has a high degree of recognition in the Lebanon whisky market. The Respondent even admits having put a picture of a bottle of WILLIAM LAWSONíS on his website, which, according to his indications, shows a picture of a nice lady sitting on a car. Whereas the Respondent first indicated that he created this website to remind himself and his girlfriend of their relationship which started on a Baccardi night, he later indicated in one of his e-mails subsequent to the Complaint that he has chosen the disputed Domain Name because he likes WILLIAM LAWSONíS commercials.
The Panel cannot verify the contents of the Respondentís website since it has been removed, neither can the Panel assess what real intentions the Respondent had when setting up the website. However, as it will be shown in the next paragraphs, the Respondent revealed later his motive by asking an excessive amount of money for the transfer of the Domain Name.
The Panel can find no evidence on the record establishing the Respondentís rights or legitimate interests in the Domain Name. In particular, the Respondent is not using the Domain Name for a bona fide offering of goods or services nor has he been commonly known by the Domain Name (paragraph. 4(e)(i) and (ii) of the Policy).
There is no room for "rights or legitimate interests" in the case of a person who registers knowingly a famous trademark as a domain name and uses it without authorization and without material reason, therefore preventing the rightful holder of the trademark from using the domain name in question.
C. Registered and Used in Bad Faith
The Complainant indicates that the Respondent uses the website under the Domain Name to re-direct traffic to his commercial website "mybookyourbook.com", violating hereby the Policy. The Respondent would thereby use the Domain Name to trade on the fame of the Complainantís mark and lure web surfers to the Respondentís commercial site. The Complainant also indicates that by placing a counter on his website showing over 3,000 hits, the Respondent attempts to show the Complainant the popularity of the Domain Name Ė a situation which other panels have construed as an offer to sell the domain name and as being indicative of bad faith registration and use.
Once again, it is not possible for the Panel to verify these allegations, since the contested website has been removed. However, the question may remain open since there is clear proof of bad faith of the Respondent when he submitted in his e-mail of March 24, 2003, addressed to the Complainantís counsel an offer to transfer the Domain Name to the Complainant against a consideration of USD 5,000. The Respondent does not contest having made this monetary offer but considers his demand as a fair return and compensation for emotional and other kind of loss in the context of the registration of the Domain Name and the maintenance of the corresponding website. The Panel is of the opinion that the Respondent hereby acted in bad faith in the light of paragraph 4(b)(i) of the Policy, since his offer exceeds the out-of-pocket expenses that he has incurred in connection with the registration of the Domain Name. As other panels and also the present one have held in many previous cases, an offer to sell the domain name in question for USD 5,000 is evidence of bad faith (see Six Continents PLC and Six Continents Hotels, Inc. v. Immobiliare Incorporated, WIPO Case No. D2002-0811, Roberts Research Group Pty Ltd v. SpaceTel Communications, WIPO Case No. DBIZ2002-00166, Yahoo Inc. v. Syrynx Inc. and Hugh Hamilton, WIPO Case No. D2000-1675 and Migros Genossenschaftsbund v. Centro Consulenze, Kim Paloschi, WIPO Case No. D2000-1171). Consequently, the Panel considers that the Complainant has submitted sufficient evidence that there was a bad faith attempt to sell the Domain Name to the Complainant.
Based on this evidence, the Panel holds that the Domain Name has been registered and used in bad faith in the sense of paragraph 4(a)(iii) of the Policy. For all these reasons the Panel decides to transfer the disputed Domain Name to the Complainant.
In the light of the foregoing, the Panel concludes and decides that the Domain Name <williamlawson.com> should be transferred to the Complainant.
Dated: June 10, 2003