The Complainant is V&S Vin & Sprit AB of Stockholm, Sweden, represented by Von Lode Advokat AB, Sweden.
The Respondent is VCN - Whois Protection Service Panama of Panama City, Panama.
The disputed domain name <absolut-porn.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 6, 2010, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On May 7, 2010, Key-Systems GmbH dba domaindiscount24.com 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” or “UDRP”), 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 May 12, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 11, 2010. 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.
The Complainant is a Swedish company founded in 1917, which manufactures and distributes alcoholic beverages for resale on the Swedish market and exports alcoholic beverages to countries all over the world. The Complainant owns and produces ABSOLUT VODKA, which has been introduced in the United States of America in 1979 and is today the fourth largest premium spirit worldwide. Absolut Vodka is available in 126 markets and achieved sales of 10.7 million nine-liter cases in 2007.
The Complainant is the registered owner of hundreds of trademarks containing or consisting of “Absolut”, including Community registration no. 001521681 ABSOLUT, filed on January 31, 2000, Swedish trademark no. 198709850 ABSOLUT, filed on December 9, 1987; and US trademark registration no. 3163067 ABSOLUT, filed on November 14, 2003 (hereinafter referred to as the “ABSOLUT Marks”). The ABSOLUT-Marks have been found to be well-known by numerous previous Panels (cf. V&V Vin&Sprit AB v. Wallin, WIPO Case No. D2003-0437 (<absolut-erotik.com>); V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926 (<absolut-porno-star.com>); V&S Vin&Sprit AB v. Karel Hajek, WIPO Case No. D2004-0960 (<absolutperversion.com>); V&S Vin & Sprit AB v. Absolut Skishop, WIPO Case No. D2006-0383 (<absolut-skishop.com>); V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992 (<absolutsexxx.com>); V&S Vin&Sprit AB v. Coreswood Limited, WIPO Case No. D2006-0594 (<absolut-escort.com>)).
Furthermore, the Complainant is registered owner of hundreds of domain names containing or comprising the ABSOLUT trademark, including <absolut.com>.
The disputed domain name was registered on November 10, 2006 and is used in connection with a website providing adult material.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the ABSOLUT-Marks from which it only differs by the addition of the generic word “porn”, the character
“-” and the TLD “.com”, which do not prevent a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it has no business or any other connection or affiliation with the Complainant, as the registration and use of the disputed domain name is likely to confuse Internet users into believing that the Respondent's website is somehow sponsored by, approved by or affiliated with the Complainant, and as the Respondent's use of a well-known trademark along with a word with sexual connotations, leading to a website containing adult material, tarnishes the ABSOLUT Marks.
(3) The domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have been aware of the well-known ABSOLUT Marks when registering the disputed domain name. The Complainant further contends that the registration and use of a well-known trademark in the disputed domain name is itself sufficient evidence of bad faith registration and use, that the Respondent's motivation in registering the disputed domain name is to capitalize on the Complainant's goodwill and to draw an increased number of Internet users to its own website for commercial gain, and that the use of the domain name for an adult website is prima facie evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
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 the complainant's trademark; 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.
The disputed domain name fully incorporates the Complainant's well-known ABSOLUT-Marks.
The additional word “porn” in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “porn” (cf. Research in Motion Limited v. Thomas J Buck/CSMJBS Entrprises - Private Registration, WIPO Case No. D2008-1065 (<blackberryporn.net>); AOL LLC v. NA a/k/a Kateryna Chernychenko, NAF Claim No. 1177320 (<icqporn.net>); 3M Company v. 3M Company c/o Domain Name Administrator, NAF Claim No. 1106749 (<3mporn.com>); General Media Communications, Inc. v. Challenge Services, Inc. c/o Dave Wright, NAF Claim No. 508942 (<penthouseporn.com>)).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between 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; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a 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 trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights to or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
The fact that “absolut” maybe seen by some to be a generic word in many languages does not automatically lead to rights or legitimate interests of the Respondent. The ABSOLUT Marks are well-known internationally and have acquired a very strong secondary meaning over more than three decades of intensive use and advertising. Furthermore, the Respondent did not assert or rely on any of its own rights or legitimate interests in the disputed domain name based on its generic meaning, and failed to prove any rights to or legitimate interests in the disputed domain name on any other basis.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the ABSOLUT Marks for the following reason: The Complainant is well-known internationally and has sold products under the ABSOLUT Marks since 1979. Given the distinctiveness of the ABSOLUT Marks and the high profile of the Complainant and its marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant's rights in the ABSOLUT-Marks.
As to bad faith use, by fully incorporating the ABSOLUT-Marks into the disputed domain name and by using the website at such domain name in connection with a commercial website providing pornographic content, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. Furthermore, the fact that a respondent has used a well-known trademark in connection with a pornographic website has been held to amount to registration and use in bad faith by previous panels (cf. National Spiritual Assembly of the Bahá'ís v. Buy This Name, WIPO Case No. D2001-1302; America Online, Inc v. East Coast Exotics, WIPO Case No. D2001-0661; America Online, Inc v. Viper, WIPO Case No. D2000-1198). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <absolut-porn.com> be transferred to the Complainant.
Dated: June 25, 2010