World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bacardi & Company Limited v. Kitty Lemmer

Case No. D2011-0940

1. The Parties

The Complainant is Bacardi & Company Limited of Vaduz, Liechtenstein, represented by Studio Barbero, Italy.

The Respondent is Kitty Lemmer of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <martini-love.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2011. On June 1, 2011, the Center transmitted by email to eNom (the “Registrar”) a request for verification in connection with the disputed domain name. On the same date, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.

The Center appointed Petter Rindforth as the sole panelist in this matter on July 15, 2011. 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.

The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is a spirits manufacturer and the owner of a number of trademark registrations for MARTINI, such as:

- International Trademark Registration No. 952994 MARTINI (fig), registered September 27, 2007, in classes 32 and 33, designating Russian Federation;

- International Registration No. 962999 MARTINI TERRAZZA (word), registered December 20, 2007 in classes 32, 33 and 43, designating Russian Federation;

- Russian Trademark Registration No. 215949 MARTINI in Cyrillic characters, registered April 14, 2000, in classes 33, 35, 39 and 42, duly renewed on 2010;

- Russian Trademark Registration No. 46148 MARTINI (fig), of April 02, 1973 in class 33;

- Russian Trademark Registration No. 19296 MARTINI (word) of November 29, 1960 in classes 32 and 33;

- Community Trademark Registration No. 005952643 MARTINI (fig), of April 25, 2008 in classes 32 and 33;

- Community Trademark Registration No. 003505617 MARTINI (fig), of February 04, 2005 in classes 8, 9, 14, 16, 21, 25, 32, 33, 34 and 43.

(Annexes 3.1 to 3.8 of the Complaint: showing copies of the Certificates of Registration).

The disputed domain name <martini-love.com> was registered on May 23, 2009. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant informs that it was founded in 1862 in Santiago de Cuba, and that the Complainant is still privately controlled by the Bacardi family. The Complainant continues to be the largest privately held spirits company in the world. Its companies are also the producers and marketers of a variety of internationally recognized spirits. Its brand portfolio consists of more than 200 brands and labels.

The Complainant is present in more than 100 countries including the United States of America, Mexico, Spain, France, the United Kingdom of Great Britain and Northern Ireland, Germany, Italy and Russia. The Complainant employs more than 6000 people and operates more than 30 production sites around the world.

After a consolidation of the Complainant in 1992, the Complainant acquired the Martini & Rossi group of companies from Italy's Rossi di Montelera family, with trademarks including MARTINI. The MARTINI mark was first established in the mid 1800’s, and the Complainant states that the trademark was and is currently supported by extensive advertising campaigns both on and off-line and that the Complainant has invested substantial amounts of time, money, and other resources to promote, advertise, and otherwise maintain the MARTINI trademark and its associated products and services through television and other media (Copies of some pages published on magazines commercialized i.e. in Russia, provided at Annexes 4.1 to 4.5 of the Complaint).

In order to proactively protect and market the MARTINI trademark on the Internet, the Complainant has registered a considerable number of domain names containing the trademark MARTINI, among them <martini.com>, registered on November 22, 1996, and <martini.ru>, registered on January 12, 1999.

The Complainant concludes that MARTINI is a famous and well-known trademark not only in Russia, where the Respondent is prima facie based, but in many other countries.

According to the Complainant (and shown by Annexes to the Complaint) the disputed domain name currently directs Internet users to a web site promoting a product called “Martini-Love” which the Respondent claims “enhances sexual attractiveness”, “increases the libido” and “will cause any person to agree to the fairer sex of your proposal”, as explained on the home page of the corresponding web site. The product Martini-Love is offered for sale by the Respondent on the corresponding web site in two versions (Standard and Concentrate). Not only the name of the product includes the trademark of the Complainant, but also the images of the bottles of “Martini-Love” reproduce entirely the Complainant’s figurative trademarks, which are clearly recognizable despite the addition of the label “Love” on the bottles therein published. (See Annexes 7.1, 7.2 and 7.3 of the Complaint).

The Complainant informs that immediately upon becoming aware of the Respondent’s registration of the disputed domain name, a reclaim strategy was envisaged. Through external counsels of the Complainant, the product offered for sale on the web site was ordered, and the Complainant ascertained that the product sold by the Respondent via the web site based on the disputed domain name was plain MARTINI Bianco in the bottles typically used by the Complainant for its commercial activities.

The Complainant subsequently instructed its legal representative to send a cease and desist letter to the Respondent’s known email address on March 24, 2011. The email address indicated in the Whois database has been disabled or discontinued as the communication sent by email was returned to the sender with such indication. The postal address as well was incorrect since the Complainant’s legal representative received the notification that the address was unknown. Despite the indication that they “carefully read every message in the customer support and do not leave unanswered a single letter” as indicated in the section Support of the web site, the Respondent failed entirely to reply also to the communication sent via the web interface. The Complainant’s legal representative sent reminders on April 12, 2011, and April 21, 2011, however, the Respondent failed to reply or cooperate. (See Annexes 9.1, 9.2, 9.3, 10, 11, 12.1, 12.2, 13.1 and 13.2 of the Complaint).

The Complainant states that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, as the top level “.com” is merely instrumental to the use of the Internet, and that it is well established that the addition of generic words to a trademark is insufficient in itself to negate the confusing similarity between the trademark and the domain name.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of <martini-love.com>. The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant’s trademarks are distinctive for beverage products and well-known; therefore the Respondent is intentionally profiting from the well-known character of the Complainant’s trademarks to attract Internet users to its web site, misleadingly diverting consumers and tarnishing the trademark MARTINI.

The use of the domain name via a redirection to the web site currently on line where the trademarks of the Complainant are reproduced and its products are offered for sale with deceptive information about their effect to increase sexual attractiveness, is not to be considered a legitimate noncommercial or fair use of the domain name without intent for commercial gain, also in view of the fact that the Respondent is certainly gaining from the sale of such products.

The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark MARTINI. Upon information and belief, the Respondent is not commonly known by the domain name as an individual, business or other organization and MARTINI is not the Respondent’s family name. Furthermore, the Respondent did not address the merits of the cease and desist letters sent by the authorized representative of Complainant.

Finally, the Complainant concludes that the disputed domain name was registered and is being used in bad faith.

In light of the use of the trademark MARTINI since many years in connection with beverage products, also promoted amongst others at the web sites “www.martini.com” and “www.martini.ru” since 1996 and 1999, clearly before the registration of the disputed domain name, and above all considering that the Complainant’s trademark MARTINI is certainly well-known also in Russia, it is apparent that the Respondent was or ought to have been aware of the Complainant’s trademark at the time of the registration.

The disputed domain name is currently redirected to a web site where the trademarks of the Complainant are used without authorization and where products are offered for sale with deceptive information about their possible effects, certainly generating for the Respondent a significant commercial gain and at the same time seriously tarnishing the Complainant’s trademark. (See Annexes 7.1 7.2 and 7.3 of the Complaint)

Furthermore, the Complainant states that the disputed domain name is registered and used with intentional tarnishment of the Complainant's trademark.

The Complainant also refers to the fact that the Respondent has failed to reply to the cease and desist letters, as well as obviously having incomplete and false contact Whois details, are further circumstances evidencing bad faith.

The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is the owner of the MARTINI trademark, registered in a number of countries, including the Russian Federation – the home country of the Respondent.

The relevant part of the disputed domain name is “martini-love”, as it is well-established in previous UDRP cases that the added top-level domain – being a required element of every domain name – is irrelevant when establishing whether or not a disputed domain name is identical or confusingly similar to a complainant’s trademark.

The disputed domain name is not identical to the Complainant’s MARTINI trademark, however it is confusingly similar to it as it consists of the MARTINI trademark added with the generic word “love”, with a hyphen in between the two words. This additional term does not add any distinctive features capable of overcoming a claim of confusing similarity, see Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term), see also eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

The Panel therefore concludes that the disputed domain name <martini-love.com> is confusingly similar to the Complainant’s trade mark MARTINI.

B. Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden of production shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, “the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist”).

The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating the trade mark MARTINI.

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.

There is nothing in the Respondent’s name that indicates it may have become commonly known by the domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the domain name. On the contrary – the Panel finds that the Respondent is using <martini-love.com> to advertise and sell a product that is, in the Panel’s view, obviously a fake version of the Complainants trade mark protected MARTINI beverage product. Such use can never establish legitimate interests.

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

C. Registered and Used in Bad Faith

As the Complainant has described and proved, the trademark MARTINI is well-known and registered in many countries, among them the Russian Federation – the home country of the Respondent.

The fact that the Respondent is using pictures of the Complainant’s products, the bottles and the trademark in exact figurative version, together with other textual elements referring to the Complainant’s MARTINI product, combined with false information and advertisement related to “sexual attractiveness”, etc., clearly indicates that the Respondent registered the disputed domain name with full knowledge of the Complainant’s prior trademark rights, and is in fact also using it in bad faith.

Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry -Succession Saint Exupéry - D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085.

As stated by the Complainant, and further considering the fact that the Respondent has not replied to either the Complainant’s warning letters and e-mails, nor responded to the Complaint, and the specific use of the disputed domain name, the Panel cannot exclude the possibility that disputed domain name <martini-love.com> was registered and used by the Respondent with an intentional tarnishment of the MARTINI trademark. See Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008 “A question might be thought to arise as to whether the website in this case can be regarded as “pornographic”. In the Panel’s view, it does not matter whether or not that precise word is an appropriate descriptor of the website – if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark (in the same way that numerous panels have held that pornographic websites do), the result should be the same. The Panel has no doubt that the website in this case is of a kind that would tarnish the Complainant’s marks if it were confusingly linked to those marks. The website is an “adult” website [...] On any view of it, the “tarnishment” capacity of such a website must be no less than that of a website which might be described as an “orthodox” pornographic website.”)

The Panel concludes that the disputed domain name is both registered and used in bad faith.

7. Decision

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

Petter Rindforth
Sole Panelist
Dated: July 29, 2011

 

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