WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jack Daniel’s Properties, Inc. v. Imanez/jackdanielsgifts.com

Case No. D2007-1443

 

1. The Parties

The Complainant is Jack Daniel’s Properties, Inc. of California, United States of America, represented by Seyfarth Shaw of Los Angeles, California, United States of America.

The Respondent is Imanez of Essex/jackdanielsgifts.com, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <jackdanielsgifts.com> is registered with Tucows Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2007. On October 3, 2007, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On October 3, 2007, Tucows Inc. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2007. The Response was filed with the Center on October 27, 2007.

The Center appointed John Swinson as the sole panelist in this matter on November 6, 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 the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the owner of the JACK DANIEL’S whiskey brand.

The Complainant has registered a trademark in the United States Patent and Trademark Office for JACK DANIEL’S. It has also registered a trademark for JACK DANIEL’S in the Britain and Northern Ireland Trademarks Registry and other countries. In both the United States Patent and Trademark Office and the Britain and Northern Ireland Trademarks Registry, the trademark has been registered in a number of classes, including Class 33 (whiskey), Class 25 (caps, jackets, aprons, sweaters, belts, shirts, t-shirts, overalls and jeans), Class 21 (serving trays, drinking glasses, jugs, decanters, flasks, cups, sponges, pitchers and coasters) and Class 34 (matchsafes not made of precious metals, matches and lighters).

The Complainant and its predecessors-in-interest have licensed the JACK DANIEL’S trademark extensively for use in connection with a wide variety of collateral and gift merchandise, which has been sold and distributed in the United States of America, the United Kingdom of Great Britain and Northern Ireland and many other countries.

The Respondent registered the disputed domain name <jackdanielsgifts.com> on May 8, 2002.

Correspondence

A number of letters were exchanged between the Complainant and the Respondent between the period of September 2005 and July 2007. This correspondence can be summarized as follows:

September 30, 2005, the Complainant to the Respondent –

The Complainant asserted ownership of the JACK DANIEL’S trademark and expressed concern about the use of the trademark on the Respondent’s website. The Complainant requested that the Respondent make a number of changes to the background of the website and provide a broader disclaimer that the site is not affiliated with or endorsed or sponsored by the Complainant.

October 24, 2005, the Respondent to the Complainant –

The Respondent replied that it considered the disclaimer already on the website to be sufficient to comply with legislation. The Respondent indicated a willingness to make the requested changes to the background of the website and advised that it would consult with its web designers.

November 11, 2005, the Complainant to the Respondent –

The Complainant raised for the first time the issue of the domain name and requested that changes be made to the domain name to eliminate a direct reference to the Complainant’s trademark.

February 2, 2006, the Complainant’s Authorized Representative to the Respondent –

The Respondent was demanded to transfer the disputed domain name to the Complainant by February 17, 2006.

February, 2006, the Respondent to the Complainant’s Authorized Representative –

The Respondent indicated a willingness to amend the website, but a reluctance to transfer the domain name. The Respondent requested that it be permitted to adhere to the “original agreement” that it make the requested changes to the website only.

March 9, 2006, the Complainant’s Authorized Representative to the Respondent –

The correspondence stated that the Complainant could not agree to the Respondent retaining the domain name, as the Complainant must protect its brand and prevent consumer confusion. The Complainant denied the existence of an “original agreement”.

March 31, 2006, the Respondent to the Complainant’s Authorized Representative –

The Respondent argued that the domain name had been available for purchase many years before the Respondent bought it, so the Respondent could only assume that the Complainant did not want it. The Respondent argued that it was unfair to now take the domain name from the Respondent, who had worked hard in making the website successful.

April 27, 2006, the Complainant’s Authorized Representative to the Respondent –

The Respondent was granted a period of three months from May 1, 2006, to implement the changes to the website that had been demanded by the Complainant.

June 7, 2006, the Respondent to the Complainant’s Authorized Representative –

The Respondent stated that it was beginning to implement the changes to the website, but would not change the domain name unless the Complainant indemnified the Respondent for its loss.

February 21, 2007, the Complainant’s Authorized Representative to the Respondent –

An offer of 750 was made for the transfer of the disputed domain name.

March 5, 2007, the Respondent to the Complainant’s Authorized Representative –

The Respondent indicated a reluctance to sell the domain name, but stated that it would do so for the amount of 2,500, which the Respondent had calculated as a reasonable amount to cover costs.

March 21, 2007, the Complainant’s Authorized Representative to the Respondent –

An offer of 1,500 was made for the transfer of the disputed domain name.

March 29, 2007, the Respondent to the Complainant’s Authorized Representative –

The Respondent refused the offer.

June 26, 2007, the Complainant’s Authorized Representative to the Respondent –

An offer of 2,000 was made for the transfer of the disputed domain name.

July 6, 2007, the Respondent to the Complainant’s Authorized Representative –

The Respondent refused the offer.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

The Complainant is the owner of the world-famous trademark JACK DANIEL’S for whiskey.

Jack Daniel’s whiskey was first sold in the United States of America over 140 years ago and has been sold continuously since. It is the United States of America’s best selling whiskey. It has been sold in over 150 countries around the world, including the United Kingdom of Great Britain and Northern Ireland where the Respondent is located.

Jack Daniel’s whiskey has also been advertised extensively. A print advertising campaign has been running continuously in the United States of America since 1955.

The Respondent registered the disputed domain name in 2002, long after the JACK DANIEL’S trademark was registered and had become well-known in the United States of America and the United Kingdom of Great Britain and Northern Ireland. The disputed domain name was first resolved to an operating website some time in 2005. The Complainant first learned of the registration and use of the disputed domain name in 2005.

The Respondent’s website offers a variety of what appears to be licensed goods bearing the JACK DANIEL’S trademark, as well as other unbranded and branded products. Some of the goods sold by the Respondent bear the trademarks of the Complainant’s competitors, such as JIM BEAM, BUDWEISER and GUINNESS.

The disputed domain name is identical or confusingly similar to the Complainant’s “JACK DANIEL’S” trademark for the purposes of the Policy.

The domain name contains three elements:

(1) the JACK DANIEL’S trademark used in its entirety without the apostrophe;

(2) the generic term “gifts”, which identifies a class of products sold by the Complainant’s licensees under the trademark; and

(3) the gTLD “.com”.

A gTLD has no significance and must be disregarded in assessing confusing similarity.

The domain name reflects the Complainant’s trademark, and the generic term “gifts” does not serve to make the resulting domain name dissimilar from the trademark. The term “gifts” is inextricably linked to the Complainant’s products, which only strengthens a finding of confusion.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has never licensed or authorized the Respondent to use the Complainant’s trademark and the Complainant has never designated the Respondent as an authorized reseller of licensed goods bearing the JACK DANIEL’S mark.

The Respondent purports to be a reseller of genuine goods produced by the Complainant’s licensees. The Respondent may claim that its sale of these genuine goods permits it to register and use the disputed domain name. However, the Respondent’s conduct does not give it any rights or legitimate interests in the disputed domain name on the basis that it resells certain licensed merchandise bearing the JACK DANIEL’S mark.

The Respondent uses the Complainant’s trademark in the disputed domain name to induce Internet users to visit its website and consider purchasing not only licensed Jack Daniel’s merchandise, but also numerous other gifts bearing the trademarks of some of the Complainant’s competitors. This is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent registered and is using the disputed domain name in bad faith.

The Respondent is using the disputed domain name to intentionally divert Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant’s trademark. The Respondent’s illegitimate use of the Complainant’s mark to sell products of the Complainant’s competitors is a clear indication of bad faith.

The Complainant corresponded with the Respondent from September 2005 to July 2007 in an effort to resolve this matter, without success. There is no indication in any of the correspondence that the Complainant approved of or acquiesced in the Respondent’s registration and use of the disputed domain name. In all correspondence, the Complainant demanded that the Respondent cease use of the disputed domain name and transfer it to the Complainant, but the Respondent failed and refused to do so.

The passage of time from registration of the disputed domain name to the initiation of the proceeding, or from the Complainant’s first awareness of the use of the disputed domain name to the initiation of the proceeding is irrelevant. “If the requirements of a valid complaint are established, the Policy does not provide any defense of laches”. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Tax Analysts v. eCorp, WIPO Case No. D2007-0040. If any equitable doctrines may apply under the Policy, the Respondent cannot show that it will suffer injury or harm as a result of the Complainant’s delay in initiating the proceeding while attempting to settle the underlying dispute.

B. Respondent

The Respondent replies as follows:

The Respondent is an e-Commerce company trading in the United Kingdom of Great Britain and Northern Ireland.

The Respondent is selling Jack Daniel’s officially licensed products incorporating the Complainant’s trademark. The Respondent cannot be accused of an infringement for selling the correct packaged product or for using wording in an attempt to improve sales of the “famous Jack Daniel’s brand”.

The disputed domain name was set up to describe exactly what was sold on the Respondent’s website. Prior to the Complainant’s letter of September 30, 2005, the Respondent’s website purely promoted Licensed Jack Daniel’s Giftware. It was the Complainant’s letter that prompted the Respondent to add other products to the website in an effort to distinguish the website from the Complainant. The Respondent also changed the layout of the website as requested by the Complainant.

The Respondent’s website does not sell alcohol, which is the Complainant’s main business activity. It also does not sell in the United States of America, which is the Complainant’s main business region.

The Respondent’s website includes a disclaimer: “This site is not directly affiliated to any of the Brands we promote”.

The Respondent is of the opinion that the Complainant, in its letter dated September 30, 2005, by implication gave the Respondent permission to continue using the disputed domain name as long as the Respondent complied with the Complainant’s requests to change the website layout.

The Respondent has gone to considerable effort and expense to change the layout and design of the website as requested by the Complainant. Throughout this matter, the Respondent has tried within reason to accommodate the wishes of the Complainant. The Respondent even offered to sell the disputed domain name to the Complainant at a significant loss to the Respondent.

The Respondent purchased the disputed domain name in good faith and has worked hard to promote it and has invested heavily in its success.

The Respondent has not been prepared to submit to the Complainant’s unreasonable demands to simply sign over the Respondent’s business to the Complainant.

 

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant has a registered trademark of JACK DANIEL’S in the United States of America and the United Kingdom of Great Britain and Northern Ireland. The Panel finds that the Complainant has trademark rights in JACK DANIEL’S.

The next issue is whether the disputed domain name is identical, or confusingly similar, to the JACK DANIEL’S mark.

The domain name <jackdanielsgifts.com> is not identical to the JACK DANIEL’S trademark. However, it is confusingly similar for the purposes of the Policy. The disputed domain name incorporates in its entirety the JACK DANIEL’S trademark. It is a minor and insignificant difference that the domain name does not incorporate the apostrophe in the trademark.

Multiple panels have held that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish confusing similarity, despite the addition of other common descriptive words to such marks: Tiffany and Company, Tiffany (NJ) Inc. v. Janet White, WIPO Case No. D2003-0456; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The content of the Respondent’s website is irrelevant in the finding of confusing similarity. The test for confusing similarity is a comparison between the trademark and the disputed domain name to determine the likelihood of confusion (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

Finally, the gTLD “.com” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMAZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):

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

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”. (Policy, paragraph 4(c)).

For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent.

The Complainant has not granted the Respondent any license or other authorization to use its trademarks in relation to the disputed domain name. The Respondent has also failed to show that the Respondent is commonly known by the disputed domain name so as to satisfy paragraph 4(c)(ii) of the Policy.

The question is whether paragraph 4(c)(i) of the Policy applies to the facts of this dispute. There is no dispute that the Respondent uses the website under the disputed domain name to offer for sale licensed Jack Daniel’s goods and merchandise. The issue is whether the Respondent’s offering of goods may be considered bona fide.

Previous panels have held that to be bona fide, the offering should meet several minimum requirements (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095):

(1) The Respondent must actually be offering the goods or services at issue.

(2) The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

(3) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sale agents.

(4) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in the domain name.

In this case, the Panel finds that the Respondent’s conduct easily satisfies elements one, three and four of the above test.

As regards element one, the Respondent is actually offering the goods at issue.

As regards element three, the Respondent’s website contains a disclaimer that the site is not directly affiliated to any of the Brands promoted on the website. The Respondent has also apparently gone to considerable effort to remove the JACK DANIEL’S logo and bottle images for the website’s background in order to remove any suggestion that the website is sponsored by or affiliated with the Complainant. The Respondent has not held itself as the Complainant or as the exclusive provider of the Complainant’s merchandise.

As regards element four, there is no evidence that the Respondent has attempted to corner the market in all domain names, as the Respondent has only registered one domain name (the domain name presently in dispute).

The contentious element in the particular circumstances of the present case is element two. It has been established that the Respondent’s website, at present, also offers for sale products of the Complainant’s competitors. However, the above test must be read in light of paragraph 4(c)(i) of the Policy, which contains the qualification, “before any notice to you of the dispute”. The Respondent states that it did not sell the competing products until after receiving the Complainant’s letter of September 30, 2005, and in fact only began selling other products in an attempt to comply with the Complainant’s demands to change the website so as to prevent confusion among Internet users as to the website’s source. Although this may have been a misunderstanding of the Complainant’s request, it is not in this Panel’s view sufficient to turn what was initially a bona fide offering of goods into an illegitimate offering for the purpose of the current UDRP dispute.

The Panel finds, on the facts as presented, that the Respondent registered the disputed domain name with the intention of selling only licensed Jack Daniel’s goods. The Respondent registered the domain name in circumstances in which it had reason to conclude that the trademark holder would not object (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a/ The Power Tool Store, WIPO Case No. D2002-0774). The provided correspondence between the parties reflects the Respondent’s surprise at how the Complainant has objected to the Respondent’s use of the disputed domain name. The Panel acknowledges that the Respondent has apparently gone to considerable effort to comply with the Complainant’s demands throughout the course of their dispute.

The Panel considers that, notwithstanding the sale of certain apparently competing products that there are extenuating circumstances and, there has been no deception of Internet users here. The Respondent uses the website primarily to sell genuine licensed Jack Daniel’s products, and this is reflected in the domain name.

The Panel finds that the Respondent was, before any notice to the Respondent of the dispute, using the domain name in connection with a bona fide offering of goods or services. Accordingly, and without in any way endorsing on an ongoing basis what may be a mistaken offering of certain competing products on the Respondent’s website, on balance the Panel finds that the Respondent nevertheless has a current legitimate interest in the disputed domain name and the Complainant has not made out paragraph 4(a)(ii) of the Policy in this proceeding.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In light of the above finding, it is unnecessary for the Panel to reach a decision on whether the domain name was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) and 4(c)(i) of the Policy, and the Complaint is denied.


John Swinson
Sole Panelist

Dated: November 20, 2007