WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

V&V Vin&Sprit AB v. Wallin

Case No. D2003-0437

 

1. The Parties

The Complainant is V&V Vin&Sprit AB of Stockholm, Sweden, represented by Cogent IPC AB of Sweden.

The Respondent is Wallin of Västerås, Sweden.

 

2. The Domain Name and Registrar

The disputed domain name <absolut-erotik.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2003. On June 6, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On that same date, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 June 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 2, 2003.

The Center appointed Gunnar Karnell as the sole panelist in this matter on July 9, 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

The Complainant is a Swedish joint stock company that manufactures, imports and distributes alcoholic beverages. It is the owner of hundreds of ABSOLUT trademark registrations spread over more than hundred countries. A number of registrations relate to other matter than alcoholic beverages. "absolut" can be found in the 350 domain names owned by the Complainant.

The respondent registered its domain name <absolut-erotik.com> on July 31, 2001. At that time, the Complainant owned, in Sweden only, some 25 registered ABSOLUT trademarks and trademarks with ABSOLUT as their dominant part. Respondentís domain name leads Internet users to a website where they meet the text "Welcome to Absolut TGP" and sexual content in pictures and texts.

 

5. Partiesí Contentions

A. Complainant (summary)

The Complainantís sale of vodka under the trademark ABSOLUT began in 1979, in USA and in Sweden and other parts of Europe in 1980-1981. In 2001, in an article in Business Week August 6, ABSOLUT was reported to have been ranked by Interbrand as the 93rd most valuable trademark asset in the world. It is the 3rd best selling trademark for premium spirits all categories on a worldwide basis. Sweden is one of the top three main markets for products carrying the ABSOLUT mark. In legal terms, such as reflected in Article 6, second paragraph, of the Swedish Trademark Act, ABSOLUT is a well-known trademark that provides its owner with the right to prevent any use thereof or of a confusingly similar denomination in connection with any products and services, also those not limited to vodka.

a) Identity or Confusing Similarity

ABSOLUT is the dominant part of the domain name in issue, making it confusingly similar to the trademark ABSOLUT . The addition of the suffix "Ėerotik" has no impact on the overall impression created by the dominant part of the name, ABSOLUT, instantly recognizable as one of the most famous trademarks of the world. The added elements do not attenuate the overall impression that the domain name has some sort of connection to the Complainant via an association with the Complainantís trademarks. The public will perceive the domain name either as owned by the Complainant or as a sign of some commercial relation with the Complainant and "erotik", in English "eroticism", unmistakably as referring to sex/pornography of some kind, as part of the domain name for the Respondentís website in English language. It clearly targets an international set of customers that will, by the dominant "absolut", relate the Respondentís pornographic website to the Complainant, thereby tarnishing the reputation of its trademark.

b) Rights or Legitimate Interests

The Respondent has no registered trademarks or trade names corresponding to the domain name. Its registration occurred later than those of a vast majority of the Complainantís ABSOLUT marks, at a time when those had already gained international status as, also from a legal point of view, well known marks. No licence or authorisation to use ABSOLUT has been given by the Complainant to the Respondent. The Respondent can not have been ignorant of the rights held by the Complainant.

The domain name <absolut-erotik.com> is resolved to a pornographic website with the same name as the domain name, where visitors can download for free pornographic material, the Respondent making money from the site by offering space there to sponsors listed on the site. Consequently, the Respondent does not make any legitimate or non-commercial or fair use of the domain name without the intention of commercial gain. Instead, it misleadingly diverts consumers and it tarnishes the trademark in issue. It is of no relevance whether a visitor to the Respondentís website would immediately or soon realise that it does not relate to the Complainant. By consumersí visits to the Respondentís pornographic website the trademark ABSOLUT becomes severely tarnished. Respondentís use of "absolut" as a trade mark on the website, in an entirely English language context, proves that the Respondent tries to sponge off the fame of the Complainantís world famous trademark, having no reason to choose it unless be it for creating an impression of association with the Complainant.

c) Registration and Use in Bad Faith

The awareness of the trademark ABSOLUT is manifest the world over and not least in Sweden. Its value and goodwill cannot have been unknown to the Respondent when registration of the domain name took place, nor presently. By registering the domain name simply in the name "Wallin", a common family name in Sweden, and by the fact that extensive efforts to contact whomever may act as holder of the domain name under that family name have born no result, it appears that the Respondent, already when registering the domain name, has been, and still is, hiding its identity. It would have been easy for the Respondent to find out about the trademark rights of the Complainant, in the most unlikely case that the Respondent would have been ignorant about them. Bad faith is also established by the fact that the Respondent has no trademark corresponding to the one at issue and that no authorisation has been given by the Complainant to use ABSOLUT. The tarnishing by pornographic elements evidences bad faith both at the registration and since. ABSOLUT is such a well known and famous mark and so obviously connected with the Complainant and its products that its very use by someone with no connection to the Complainant suggests an opportunistic bad faith.

d) Remedy Requested

The Complainant requests that the domain name <absolut-erotik.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

a) Identical or Confusingly Similar

The addition of "-erotik" to Complainantís trademark ABSOLUT, being a well known trademark under Swedish law and of wide international reputation, not only for its core product vodka, does not overshadow the impact on observers of the element "absolut" as the dominant part and as the element that indicates a connection to the Complainant. Whether written ABSOLUT or absolut is of no consequence, due to the standard typography of domain names. The domain name clearly falls within what may be called the "absolut family" of domain names, adding to the infamous set of pornography related domain names that have already been subjected to transfer to the Complainant, expectedly there to remain unused (cf. WIPO Case No. D2002-0437). Consequently, the domain name <absolut-erotik.com> is found to be confusingly similar to Complainantís registered trademark ABSOLUT.

b) Rights or Legitimate Interests

The Respondent has not replied to the Complainantís contentions. The arguments by the Complainant, as summarised here above under 5A(b), supported by means of proof submitted by the Complainant, have convinced the Administrative Panel that the Respondent has not had, nor has, any rights or legitimate interests in respect of the domain name <absolut-erotik.com>.

c) Registered and Used in Bad Faith

Already the manner to register, as the only name of the Respondent, just a common family name, in combination with further elements indicating an interest of anonymity, cannot, unless clearly false contact details would have been given, of which there is no proof, be seen as per se illegitimate for a domain name holder, especially not for someone engaged in the shady and sometimes even with personal risk affected business of pornography, the legality of which cannot be subjected to discussion here. Nor can it generally be called for that a domain name registrant shall have made a formal trademark search before entering its application for registration.

However, the Respondent in this case cannot have been ignorant about the trademark ABSOLUT, because of its fame in Sweden and its world-wide reputation. Its advertising impact on the market will most certainly have been evident even to a teetotaller in the backwoods. Having no trademark rights of its own corresponding to the one in issue and without any permission from the Complainant the Respondent has made such use of ABSOLUT as severely tarnishes it, by registration and continued use of the domain name. These are acts of bad faith. Also, the trade mark ABSOLUT is such a well known mark that its use in unconnected business, as in the present case, must be considered what has been called "opportunistic bad faith".

 

7. Decision

In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <absolut-erotik.com> be transferred to the Complainant.

 


 

Gunnar Karnell
Sole Panelist

Dated: July 12, 2003