WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
V&S Vin&Sprit AB v. Corinne Ducos
Case No. D2003-0301
1. The Parties
The Complainant is V&S Vin&Sprit AB, Stockholm, Sweden (the "Complainant"), represented by Cogent IPC AB of Sweden.
The Respondent is Corinne Ducos, Barcelona, Spain (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <absolutbabes.com> (the "Domain Name") is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the "Registrar").
3. Procedural history
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2003. The Center transmitted a request for registrar verification in connection with the Domain Name by email to the Registrar on April 17, 2003. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing contact details for its administrative, billing, and technical contacts.
3.2 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 25, 2003. The Center verified that the Complaint, together with the amendment thereto, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.3 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 April 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 19, 2003.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 22, 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.
4. Factual background
4.1 The Complainant is a company organised under the laws of Sweden and was incorporated in 1917. It carries on business as a manufacturer and seller of alcoholic drinks in a number of countries throughout the world.
4.2 The Complainant has sold vodka under and by reference to the trademark ABSOLUT in the United States since 1979, and in Sweden and other parts of Europe since approximately 1980 Ė 1981.
4.3 The Complainant has provided a print out dated October 8, 2001, from a database comprising an extensive international portfolio of its trademark registrations. The portfolio includes registrations incorporating ABSOLUT in over 100 separate jurisdictions, the vast majority of which appear to be registered in Class 33. Unhelpfully, the Complainant has not indicated whether the trademark registrations it relies upon are word marks, device marks or a combination thereof, nor the dates of registration. However, the Complainant has also put in evidence a formal trademark certificate from the Spanish Trademarks Registry dated January 21, 1998. This indicates that the Complainant is the owner of Spanish trademark number 2040377 for the work mark ABSOLUT.
4.4 Although the Panel has not sought to independently verify the Complainantís portfolio, it has satisfied itself that the Complainant is the registered owner of a number of registered trademarks world wide for the word mark ABSOLUT. Examples include:
(i) United Kingdom trademark no. 1450466, filed on December 12, 1990, and registered on November 11, 1992;
(ii) New Zealand trademark no. 188009, filed on October 11, 1988, and registered on April 4, 1993;
(iii) Hungarian trademark no 143494, filed on August 11, 1994, and registered on March 26, 1997; and
(iv) Canadian trademark no TMA284706, filed November 17, 1978, and registered on April 11, 1983.
4.5 The Respondent registered the Domain Name on August 20, 2001.
4.6 The Complainant has put forward uncontested evidence Ė albeit in the form of two undated screen prints only Ė that the Domain Name addressed a website written in the French language and which apparently acted as a portal for a number of different websites of a pornographic nature.
4.7 Legal advisers to the Complainant wrote to the Respondent at the address provided in the WHOIS database by letter dated February 24, 2003. In that letter, the Complainant requested that the Respondent transfer the Domain Name to the Complainant, and offered to bear the costs of such transfer. The Complainant received no response to that letter.
4.8 As at the date of this decision, the Domain Name, when accessed, resolves to a blank white web page which appears to have been specifically encoded so as to render a blank white background.
5. Partiesí contentions: Complainant
5.1 The Complainant asserts as follows:
(a) it has invested considerable resources world-wide in the ABSOLUT trademark by way of extensive marketing and advertising such that the ABSOLUT trademark is extremely well-known amongst both consumers and the relevant trade;
(b) based upon independent research, the ABSOLUT trademark is ranked as the 93rd most valuable trademark asset in the world (survey by Interbrand). It has previously been ranked number 1 on Forbesí list of Top Luxury Brands according to marketing performance (Forbes Magazine) and the product sold under the ABSOLUT trademark is the 3rd best selling trademark for premium spirits world-wide (Impact);
(c) the ABSOLUT trademark is distinctive per se and its reputation in the European Community is significant whilst in the United States the trademark is "famous";
(d) under Article 6 of the Paris Convention for Protection of Industrial Property (confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights), the proprietor of a well-known trademark is entitled to prevent any use of its mark (or a confusingly similar derivative) in connection with any products or services, regardless of the nature of the products and services for which the trademark is actually registered.
Identical or confusingly similar (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
5.2 The Complainant asserts that the Domain Name is confusingly similar with a trademark in which it owns the rights. In particular it asserts that:
(a) the dominant element of the Domain Name is the word ABSOLUT, which is identical to the ABSOLUT trademark;
(b) the addition of the suffix "BABES", which is generic, does not have any impact on the overall impression or the dominant portion of the Domain Name;
(c) it relies upon cases previously decided under the Policy in which domain names incorporating trademarks juxtaposed with words of a sexual nature were found to be confusingly similar with the trademark in question;
(d) the fame of the ABSOLUT trademark means that the public will perceive the Domain Name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant. As a result the ABSOLUT trademark will be seriously tarnished and may suffer dilution.
5.3 In support of these contentions the Claimant relies upon the decisions in V&S Vin&Sprit AB v. Canal Prod Ltd (WIPO Case No. D2002-0437), V&S Vin&Sprit AB v. Oliver Garcia (WIPO Case No. D2002-1081), Sony Kabushiki Kaisha v Inja, Kil (WIPO Case No. D2000-1409) and America Online Inc. v Belmont Studios Ltd (WIPO Case No. D2000-0979).
No rights or legitimate interests (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
5.4. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. In this respect the Complainant claims that:
(a) it has not been able to find much information on the Respondent and that the Respondent is not "listed" at the address provided in the WHOIS record;
(b) it has neither found any listed company nor any registered trademark under the name ABSOLUTBABES in Spain;
(c) it has not licensed the Respondentís use of the ABSOLUT trademark and there is no connection between the Respondent and the Complainant. It relies upon the decisions in Bureau Int. de Medicins Sans Frontiers UAS Inc., v. Nizar Mawani (WIPO Case No. D2001-0515) and Cimcities LLC v. John Zuccarini D/B/A Cupcake Patrol (WIPO Case No. D2001-0491), where this among other facts led the panel to come to the conclusion that the respondent could have no legitimate interest in the domain name;
(d) the word ABSOLUT has no meaning in Spanish and is therefore (i) an illogical choice for the Domain Name and (ii) it would have been advisable that the Respondent conducted a trademark search;
(e) the Complainantís trademark registration for ABSOLUT in Spain pre-dates the registration by the Respondent of the Domain Name;
(f) it is very unlikely that the Respondent would not have been aware of the ABSOLUT trademark prior to registering the Domain Name because the brand recognition of ABSOLUT vodka in Spain is high (78%);
(g) the juxtaposition of ABSOLUT and the word BABES to create the Domain Name indicates that the Respondent sought to create an impression of association with the Complainant. It relies upon the decision in Drexel University v. David Brouda (WIPO Case No. D2001-0067) and The British Broadcasting Corporation v. Jaime Renteria (WIPO Case No. D2000-0050), to the effect that this cannot establish rights and legitimate interests in a domain name; and
(h) the Respondent sought to use another partyís trademark (without consent) in a domain name to attract customers looking for the goods and services identified by the trademark in question and that this cannot be considered as bona fide use. It relies in this respect upon the decision in Motorola Inc. v. NewGate Internet Inc. (WIPO Case No. D2000-0079).
Bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
5.5 The Complainant asserts that the Domain Name was registered and has been used in bad faith. In particular the Complainant claims that:
(a) the ABSOLUT trademark is well-known and has a substantial reputation within the European Community and elsewhere. Accordingly, it is very unlikely that the Respondent would not have been aware of the ABSOLUT trademark when registering the Domain Name. This is evidenced by the fact that the Respondent registered a domain name comprising ABSOLUT as opposed to ABSOLUTE or ABSOLUTO, being the English and Spanish spellings of the word respectively;
(b) had the Respondent conducted a trademark clearance search prior to registering the Domain Name it would have obtained notice of the Complainantís registered trademark rights. On the basis of the decision in Kate Spade, LLC v. Darmstadter Designs (WIPO Case No. D2001-1384) the Complainant asserts that the Respondent has in this case registered the Domain Name in bad faith;
(c) the Respondent would have been better served by registering an alternative domain name that would have been more appropriate for conveying the Respondentís ideas (for example, a domain name connoting sexual content). The fact that the Respondent elected to register a domain name comprising the ABSOLUT trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant;
(d) the Respondent has sought to commercially benefit from the traffic generated to the website established from the Domain Name as a result of such consumer confusion. The Complainant cites the case of National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a, Chargergirls.net (WIPO Case No. D2000-0118), in support of the foregoing contentions. Paragraph 4(b)(iv) of the Policy does not require the Complainant to demonstrate that it has suffered or would be likely to suffer harm as consequence of the consumer confusion;
(e) the Domain Name has been used to address a website that is pornographic in nature. The Complainant relies upon the decision in CCA Industries Inc. v. Bobby R. Dailey (WIPO Case No. D2000-0148), Nokia Corporation v. Nokia girls.com a.k.a IBCC (WIPO Case No. D2000-0102) and America Online Inc. v. Viper (WIPO Case No. D2000-1198) as showing that this is in itself, evidence of bad faith;
(f) the use of the Domain Name to address a website offering pornographic products and services tarnishes the ABSOLUT trademark, and this is evidence of bad faith. In support of this contention the Complainant relies upon the decisions in America Online Inc., v. Viper (WIPO Case No. D2000-1198), Lucent Technologies Inc., v. Johnson (2000 U.S. Dist. LEXIS 16002, 56 U.S.P.Q.2D (BNA) 1637 (C.D.Cal.2000)); Mattel, Inc. v. Internet Dimensions, Inc., 2000 U.S. Dist. LEXIS 9747, 2000 WL 973745, *5 (S.D.N.Y. July 13, 2000); Hasbro Inc., v. Internet Entertainment Group, Ltd., 1996, U.S. Dist. LEXIS 11626, 40 U.S.P.Q.2D (BNA) 1479, 1480 (W.D. Wash. 1996); Travel Services, Inc. v. Tour COOP of Puerto Rico, NAF Case No. 0001000092524 and V&S Vin&Sprit AB v. Oliver Garcia (WIPO Case No. D2002-1081);
(g) where domain names are so obviously connected with a well-known brand, their mere use by a person not authorised in respect of the trademark in question is indicative of opportunistic bad faith. This is said to be the case here and authority for this principle is said to be found in the decisions of Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net (WIPO Case No. D2000-0226), Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. (WIPO Case No. D2000-0163), SSL International PLC v. Mark Freeman (WIPO Case No. D2000-1080) and Altavista Company v. Grandtotal Finances Limited (WIPO Case No. D2000-0848); and
(h) the Respondent failed to respond to correspondence from the Complainantís legal advisers. On the basis of the decisions in V&S Vin & Spirit AB v. Oliver Garcia (WIPO Case No. D2002-1081), Revlon Consumer Products v. Yoram Yosef, aka Joe Goldman (WIPO Case No. D2000-0141) and Cortefiel S.A. v. Javier Garcia Quintas (WIPO Case No. D2000-0468) and Mars Incorporated v. Vanilla Ltd (WIPO Case No. D2000-0586), this can provide evidence of bad faith.
6. Partiesí contentions: Respondent
The Respondent has not responded to the Complaint and has thus put forward no submissions to the Panel.
7. Discussion and findings
7.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.
7.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
7.3 Notwithstanding the default of the Respondent it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Identical or confusingly similar
7.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
7.5 The Complainant relies upon a very large number of trademarks. As far as the Panel can tell, a significant number of these trademarks are word marks for ABSOLUT and many (if not all of these) were registered prior to the date of the registration of the Domain Name. These word marks are collectively referred to hereafter in this decision as the "Trademark".
7.6 The Domain Name comprises the Trademark and differs solely to the extent of the addition of the word "babes".
7.7 The Complainant also brought UDRP proceedings in relation to the Trademark in V&S Vin & Spirit AB v. Canal Prod Ltd. (WIPO Case No. D2002-0437). The domain names in issue were <absolut-sexe.com>, <absolut-sexo.com> and <absolut-x.com>. The Panel in that case held that the addition of the suffixes "-sexe", "-sexo" and "-x" did not "prevent the impact on the overall impression of the Domain Names that they have some sort of connection with the Complainant. The additions lack distinctiveness and are not sufficient to give the Domain Names an individual meaning".
7.8 The Panel adopts this reasoning in the instant case. It is not significant that the Domain Name has no hyphen between the Trademark and the word BABES. The Panel believes its finding in this respect to be consistent with the decisions in V&S Vin & Spirit AB v. Oliver Garcia (WIPO Case No. D2002-1081) and America Online Inc. v. Belmont Studios Ltd. (WIPO Case No. D2000-0979).
7.9 The Panel therefore finds that the Domain Name is confusingly similar to the Trademark.
No rights or legitimate interests
7.10 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.
7.11 There is no evidence before the Panel that the Respondent had any legitimate basis to register the Domain Name or any intent to use it in any manner unconnected with the Complainantís business.
7.12 In the absence evidence to the contrary, the Panel is entitled to infer, and does so, that the Respondent does not have any rights to or legitimate interest in the Domain Name.
Registered and used in bad faith
7.13 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent and has been used in bad faith.
7.14 A non exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the policy. Although the Complainant does not expressly say so, it is reasonably clear from the Complaint that the Complainant maintains that paragraph 4(b)(iv) of the Policy is applicable in this case . Paragraph 4(b)(iv) refers to a situation where:
Ö by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
7.15 The Domain Name was registered on August 20, 2001. The Panel accepts the Complainantís contention that, by this date, the Trademark enjoyed a substantial international reputation and goodwill and it is more likely than not that the Respondent was aware of that reputation when he or she registered the Domain Name. In coming to its conclusion the Panel considers of particular importance the fact that the Respondent gives an address in Spain and the Complainant has put before the Panel uncontested evidence that (a) there is high awareness of ABSOLUT as a trademark for vodka in Spain; and (b) the word ABSOLUT has no meaning in the Spanish language.
7.16 The Domain Name was subsequently used as an address for a website that advertised Internet sites that offered pornographic goods or services that appear to have no connection with the name ABSOLUT. The Panel, therefore, accepts that the Complainant has put forward a strong prima facie case that as a matter of fact the Respondent registered and used the Domain Name in an attempt to attract Internet users to his website by creating a likelihood of confusion with the Trademark.
7.17 Paragraph 4(b)(iv) of the UDRP requires that such an attempt be made for commercial gain. The screen prints provided by the Complainant suggest that the Respondentís website did not actually offer pornographic goods or services itself, but merely advertised and linked through to other Internet sites that did so. However, in the Panelís view this is of no consequence. At least some of the sites advertised would appear to be commercial in nature and in such circumstances it is reasonable to infer (and in the absence of evidence to the contrary the Panel does so) that the Domain Name was being used by the Respondent for commercial gain. It is worth noting in this respect that the Complainant expressly asserts in its Complaint that the Respondent is "using the domain name for commercial business" and this assertion has not been disputed.
7.18 In the circumstances the Panel finds that the Complainantís allegations under paragraph 4(b)(iv) have been successfully made out.
7.19 Other indicators of bad faith in this case are the Respondentís failure to (a) respond to correspondence from the Complainantís legal advisers and (b) file a Response. A respondent is under no obligation to respond to a complaint and a failure to respond will by itself be insufficient to justify a finding of bad faith. However, the reasons for registering and holding a domain name are peculiarly within the knowledge of a respondent. Therefore, it is not unreasonable for a panel to conclude that a failure on the part of that respondent to explain his reasons for registering and holding a domain name is a factor that adds weight to a conclusion that there was no good faith reason for that registration.
7.20 Taking all of the foregoing into account the Panel is persuaded on balance that the Domain Name has been registered and used in bad faith.
7.21 There is therefore no need for the Panel to consider the other arguments put forward by the Complainant in its Complaint in support of the allegation of bad faith. However, the Panel wishes to make it clear that in concluding that the Respondent knew of the Complainantís goodwill and reputation in the Trademark, it has given no weight to the Complainantís assertion that the Respondent would have had notice of the Complainantís (presumably Spanish) trademark registration had it conducted a trademark search at the time of registration of the Domain Name. In making this assertion the Complainant appears to be suggesting that the Registrant had constructive knowledge of the Complainantís trademark registration.
7.22 The question of the extent to which constructive knowledge is relevant to a UDRP complaint is a difficult one. These difficulties are discussed in Red Nacional De Los Ferrocardes Espandes v. Oxa90 (WIPO Case No. D2001-0981) and Sibyl Avery Jackson v Jan Teluch (WIPO Case No. D2002-1180). Although in each of these cases the panel held that in limited circumstances a finding of constructive knowledge might be appropriate, they were circumstances far removed from those present in the current case. Further in Red Nacional De Los Ferrocardes Espandes v. Oxa90 the majority of the panel wished to make it clear that it did not believe that "the UDRP ordinarily imposes on a typical Respondent any affirmative obligation to make extensive trademark or other factual searches".
7.23 Perhaps unsurprisingly, the Complainant does not rely upon either of these cases to support its contention. Instead it relies upon the earlier decision in Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028). Even if the reasoning in this case is correct (and the Panel offers no opinion on this point), the Panel rejects the contention that this decision sets down a generally applicable rule of constructive knowledge in UDRP cases. As the panel in Cellular One Group v. Paul Brien made clear, it decided to apply "United States principles of constructive notice" because "both parties [were] from the United States and Ö the trademark application and registration [relied upon by the Complainant] were made with the USPTC". This is obviously not the situation in the case currently before the Panel.
For all of the foregoing reasons, the Panel concludes that the Complainant has sufficiently proved:
(a) the Domain Name is confusingly similar to the Trademark;
(b) the Respondent does not have any rights to or legitimate interest in the Domain Name; and
(c) the Domain Name was registered and has been used in bad faith.
Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <absolutbabes.com> be transferred to the Complainant.
Matthew S. Harris
Date: June 5, 2003