WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Planet 10 Spirits, LLC v. Adam Hyatt dba Cyber Aim

Case No. D2007-0976

 

1. The Parties

The Complainant is Planet 10 Spirits, LLC, Chicago, United States of America, represented by Michael Best & Friedrich, LLP, United States of America.

The Respondent is Adam Hyatt dba Cyber Aim, Miami, United States of America, according to the confirmation provided in the whois and the Registrar’s verification response. According to the confirmation provided in the Response, the Respondent is located in Dhaka, Bangladesh.

 

2. The Domain Name and Registrar

The disputed domain name <effen.com> is registered with Domainnamebidder, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 5, 2007, the Center transmitted by email to Domainnamebidder, LLC a request for registrar verification in connection with the domain name at issue. On July 11, 2007, Domainnamebidder, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2007. In accordance with paragraph 5(a) the Rules, the due date for Response was August 1, 2007. Upon request by the Respondent and in the absence of any comments by the Complainant, this time limit was extended by the Center until August 6, 2007 in accordance with paragraph 5(d) of the Rules. The Response was filed with the Center on August 7, 2007. On August 23, 2007, the Complainant filed a supplemental submission with the Center which was forwarded to the Panel on August 24, 2007. On August 24, 2007, the Respondent replied to the Complainant’s supplemental submission. The same day, the Complainant replied to the Respondent’s submission. Both communications were transmitted to the Panel.

The Center appointed Brigitte Joppich as the sole panelist in this matter on August 14, 2007. 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 paragraph 7 of the Rules.

 

4. Factual Background

The Complainant in this administrative proceeding is Planet 10 Spirits, LLC, a company established in the United States of America and a producer of distilled spirits, including vodka. The Complainant is the owner of various EFFEN trademarks, including US word mark EFFEN (reg. no. 2788499) and US word mark and device EFFEN (reg. no. 2788500, containing the word in stylized form), both filed on November 18, 2002 for vodka and registered on December 2, 2003 (the “EFFEN Marks”). The Complainant has also applied for registration of another word mark EFFEN with the United States Patent and Trademark Office on May 7, 2007 (serial number 77174439) for financial sponsorship of entertainment events, fashion shows, nightlife and lifestyle events, sporting events, cultural events and music performances.

The Respondent is, in its own words, an “underground lifestyle management company with lifestyle products and events in South Asia”. The Respondent is the owner of a Community trademark application EFFEN (no. 005954391), filed on May 31, 2007 for goods and services in international classes 3, 9, 14, 18, 25 and 41. The disputed domain name <effen.com> was registered by the Respondent on August 24, 2006.

The word “effen” is Dutch and translates into English as “even” or “smooth”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(i) The domain name <effen.com> is identical to the Complainant’s well known, long established EFFEN Marks. Effen vodka is among the leading premium luxury distilled spirits brands and as such well recognized and highly regarded in the trade and among customers. The Complainant actively promotes Effen by sponsoring lifestyle and entertainment events, including fashion shows, nightlife events, sporting events, cultural events and music performances. As a result of its substantial and extensive advertising, the Complainant has acquired valuable goodwill in the EFFEN Marks.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name, as it is unconceivable that the Respondent registered <effen.com> without regard or reference to the EFFEN Marks, as the Respondent sought to improperly trade on the Complainant’s goodwill, which is not a legitimate non-commercial or fair use of the domain name, and as the Complainant is and continues to be damaged by the Respondent’s registration of the disputed domain name.

(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent is using an Effen logo that is strikingly similar to the Complainant’s logo, is using content copied from the Complainant’s web site and is offering goods and services which are competitive to those where the Complainant has firmly established its reputation and rights. The Complainant also states that by registering a domain name identical to the Complainant’s marks, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and/or services offered by means of the disputed domain name. Finally, the Respondent has made no attempt to explain or justify its actions in response to the Complainant’s multiple attempts to communicate with the Respondent.

B. Respondent

The Respondent contends that the three elements specified in paragraph 4(a) of the Policy are not given in the present case:

(i) The Respondent contends that he has developed a well-known underground lifestyle management company with lifestyle products and events all over South Asia since 1999 under the name of Effen, while he cannot provide proof and sample of its designed products and events due to severe flooding in Bangladesh. The Respondent further states that the Complainant’s trademark no. 77174439 is only an application and not a registered right and was filed on May 7, 2007, only, i.e. long after <effen.com> was registered and used for lifestyle products, events and services. The Respondent also claims that in response to the first letter of warning sent by the Complainant, he removed the “effen” definition allegedly copied from the Complainant’s website to avoid further confrontation and legal cost, even though he had never copied any materials, content or images from the Complainant’s website, as “effen” is simply a Dutch word.

(ii) The Respondent argues that he enjoys rights or legitimate interests in respect of the domain name, which is descriptive, while the Complainant’s EFFEN Marks are not inherently distinctive, and that the Complainant’s domain name <effenvodka.com> is neither identical nor confusingly similar to the Respondent’s domain name <effen.com>. Therefore, the Respondent has a legitimate interest in using Effen, while the Complainant does not have exclusive rights to use such term. The Respondent denies to have known of the Complainant’s mark at the time when he acquired the disputed domain name in a free market from a third party. He contends that he could not have copied the logo on the Complainant’s website as his logo is not in any similar font or style as compared to the Complainant’s logo. The Respondent applied for registration of EFFEN as a Community trademark well before receiving any notice of this dispute.

(iii) As to registration and use in bad faith, the Respondent contends that the domain name <effen.com> was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. In fact, the Respondent has never offered to sell the domain name <effen.com> to the Complainant. The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name either. The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent to disrupt the Complainant’s business. The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain Internet users to the Respondent’s web site or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. The Complainant always mentions vodka in relation to its alleged events, which suggested that the Complainant is in fact engaged in promoting vodka, and not events, lifestyle or any (other) products or services that the Respondent is offering. The Respondent claims to have repeatedly felt threatened by the Complainant.

Finally, the Respondent asks for a finding of reverse domain name hijacking in this case: The Complainant filed a trademark registration for lifestyle services on May 7, 2007, long after the disputed domain name was registered and used by the Respondent for lifestyle products, events and services. Moreover, the Respondent investigates whether the Complainant used third party software (“reverse Google bomb”) to lower the rank of the Respondent’s Effen lifestyle products and services allocated by the Google search engine.

 

6. Discussion and Findings

The Respondent did not file its response within the time limit set by the Center (which had previously been extended as per the Respondent’s request) but only one day later. According to paragraph 14 of the Rules, the Panel need not have regard to the response in this case (but can take it into account if there are good reasons for it to apply its discretion) and draw inferences it considers appropriate. Responses submitted late were considered by previous panels in particular where they were filed before commencement of the decision-making process (cf. e.g. J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035) or where the lateness did not delay the decision (cf. e.g. Young Genius Software AB .v. MWD, James Vargas, WIPO Case No. D2000-0591). Although this Panel is also aware of decisions by previous panels rejecting out of time responses, it considers it more important that each party is given a fair opportunity to present its case than to penalize the Respondent for a slight delay. The response is therefore accepted.

The next point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). This is the case here, as the Complainant’s supplemental submission deals with the late filing of the Response which could not have been anticipated at the moment of the filing of the Complaint. However, according to the considerations outlined above with regard to the late filing of the response, the supplemental submission by the Complainant is not accepted by the Panel because of its late arrival: it was filed 17 days after the response had been submitted and reached the Panel only when this administrative decision had already been finalized. For the same reasons the Respondent’s supplemental communication and the Complainant’s second supplemental communication are also disregarded.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the EFFEN Marks.

Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

The domain name is therefore identical to a trademark in which the Complainant has rights and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

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

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.

The Panel needs to decide whether the name Effen was used by the Respondent in connection with a bona fide offering of goods or services or whether the Respondent has been commonly known by the domain name. Although the Respondent claims to have used the Effen name since 1999 and to have spent significant money on research and development of its lifestyle products and services, not a single piece of evidence has been submitted to the Panel to support these allegations. It is unlikely that all evidence of the Respondent’s alleged extensive use of the Effen name for eight years was destroyed by natural disaster, in particular as the Respondent seems to also spend time in the United States of America on a regular basis.

The Community trademark application filed by the Respondent on May 31, 2007, i.e. well after the Complainant first wrote to him, is not sufficient to establish any rights in this regard either.

Finally, the Respondent is arguing that he has merely been using a descriptive domain name in good faith. However, the term “effen” is Dutch and not commonly known in the United States of America where both the Complainant and the Respondent are apparently doing business, nor in Bangladesh where the Respondent is also active. Furthermore, the Respondent has not used the domain name in a descriptive way but in connection with content copied from the Complainant’s web site. As a result, “effen” cannot be considered as a descriptive domain name in this case.

As a result, the Respondent cannot rely on rights or legitimate interests under paragraph 4(c) of the Policy and the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.

As to bad faith registration, the Panel is convinced that the Respondent knew of the Complainant’s EFFEN Marks when he acquired the disputed domain name in 2006 and therefore registered it in bad faith for the following reasons:

- The Respondent has an address in the United States of America and apparently regularly spends some time in the United States of America. Given the Complainant’s marketing efforts and expenditure, it is in the view of the Panel unlikely that the Respondent could have been unaware of the Complainant’s EFFEN Marks.

- The stylized version of the word “effen” used by the Respondent is very similar to the Complainant’s version. Moreover, the Respondent’s website at “www.effen.com” originally reflected three possible ways to translate “effen” from Dutch into English – just as the Complainant’s web site at “www.effenvodka.com” does.

- The business activities of the Respondent in the lifestyle sector are complementary to the Complainant’s field of business – the selling of fashionable distilled spirits is by the general public easily associated with a certain lifestyle, where products described by the Respondent as e.g. accessories, glasses, watches also belong.

The Respondent also used the disputed domain name in bad faith: By fully incorporating the EFFEN Marks into the domain name and using a stylized version thereof on his web site, similar to the version used by the Complainant, the Respondent has created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and tried to divert Internet users to such website for commercial gain.

As a result, the Complainant has also established registration and use in bad faith under paragraph 4(a)(iii) of the Policy.

 

7. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

In the present case, where the Complainant owns several registered marks identical to the second level domain name and clearly predating the Respondent’s domain name registration, there is no room for a reverse domain name hijacking order.

 

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <effen.com> be transferred to the Complainant.


Brigitte Joppich
Sole Panelist

Dated: August 28, 2007

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

This is an Addendum to the Administrative Panel Decision (“Decision”) dated August 28, 2007 with regard to the disputed domain name <effen.com>.

Further Procedural History

On September 5, 2007, the Respondent contacted the WIPO Arbitration and Mediation Center (“Center”) by telephone noting that the Panel appeared not to have taken into account a certain piece of material provided in one copy to the Center by the Respondent with the hard copy of its Response: specifically, a black diary stamped with the disputed domain name. On the same day, the Center checked the case record, and ascertained that such copy had indeed been provided and inadvertently not been included in the case record provided to the Panel. The Center immediately advised the Panel of this fact by telephone and email, forwarding the said document.

Email of September 6, 2007

The Respondent confirmed the above in an email to the Center on September 6, 2007, in which it stated further that it distributes “thousands” of complimentary diaries/yearly planners and other merchandise and promotional materials, and that the provided diary is an example of these. The Respondent further requested that the case be presented to a new Panel.

Further Discussion and Findings

The Panel has now considered the material provided by the Respondent and forwarded to it by the Center. The Panel finds it is appropriate to deal with this matter by way of the present Addendum, and sees no reason why, due to a mere inadvertent omission by the Center, this case should be decided by a new UDRP Panel.

The Panel notes that the material provided by the Respondent appears to be a black diary or yearly planner of black synthetic material bearing on its cover the words “EFFEN 2007” and “www.effen.com”. The inside cover sheet bears the words “With the best Compliments from Adam Hyatt” and includes further contact details, such as “ADAM@EFFEN.COM”. While the Panel finds that the diary warrants its consideration, if the Panel had had the diary before it in making the above Decision, such consideration would not have changed the outcome. This is so for the following reasons. While the provided material does establish that the Respondent has made at least some use of the markings “EFFEN” and “www.effen.com” at some point by way of printing these on a diary, it does not of itself establish that the Respondent was using the disputed domain name in connection with a bona fide offering of goods prior to receiving notice of the current dispute. Apart from the fact that the diary does not establish, as claimed by the Respondent, that it has been produced in “thousands” of complimentary copies, this 2007 diary does not establish that the Respondent has been using the name “Effen” since 1999, as was claimed by the Respondent, or at any other time prior to the Complainantís obtaining trademark rights. The Panel also notes in this regard the complete absence of any supporting material indicating for example production runs, costs, marketing, sales and/or distribution over time for any of the claimed products. The Panel has noted the Respondentís claim that it was unable to provide additional evidence due to severe flooding in Bangladesh, and that the due date for submission of the Response was extended on this claimed basis. However, apart from the fact that no evidence of such claims has been provided, other ways of confirming the claimed commercial activities (such as through customers) presumably would have been available. The only piece of supporting material that has been provided by the Respondent is incapable of fixing any of its claims at a particular point in time. Accordingly, the Panel does not consider on balance that the Respondent has succeeded in answering the Complainantís case, based on a trademark registered by the Complainant in 2003, that it lacks rights or legitimate interests in the disputed domain name.

The Panel reiterates its finding that the Respondent has no rights or legitimate interests in the domain name, and that it was registered and is being used in bad faith.

Decision

The Sole Panelist accordingly reaffirms the Decision in favor of the Complainant and reaffirms the requirement that the registration of the domain name be transferred to the Complainant.


Brigitte Joppich
Sole Panelist

Dated: September 7, 2007