WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BEV.CON ApS v. Alexander Ott
Case No. D2011-1650
1. The Parties
The Complainant is BEV.CON ApS of Vejle, Denmark, represented by Delacour Dania Law Firm, Denmark.
The Respondent is Alexander Ott of Bermatingen, Germany.
2. The Domain Names and Registrar
The disputed domain names <cult-shaker.com>, <cultshaker.com>, <cult-shaker.org> and <cultshaker.org> (the “Domain Names”) are registered with CORE Internet Council of Registrars (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2011. On September 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 5, 2011, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 7, 2011.
The Center verified that the Complaint together with the amendment to 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 October 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 11, 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.
4. Factual Background
The Complainant is a Danish company. It is a member of the CULT group of companies, the parent company being CULT A/S. The Complainant is the group company charged with the responsibility of holding, licensing and enforcing the group’s intellectual property rights.
The Complainant manufactures a cider-based drink, “Cult Shaker”, which is distributed throughout Scandinavia, Germany and the Netherlands. The Complainant is the registered proprietor of Community Trade Mark No. 001089481 dated February 26, 1999 (registered May 15, 2002), for CULT (word) for various beverages in Class 32 and International Trade Mark No. 926613 dated May 15, 2007, for SHAKER (word) for various goods in Classes 25, 32 and 33. It is also the proprietor of International Trade Mark No. 1047467 dated July 2, 2010, which is a figurative mark in the form of a label design featuring CULT SHAKER as the only text.
It should be noted that while the Complainant makes no mention of it in the body of the Complaint, it appears from the OHIM extract annexed as annex 5 to the Complaint that the Community Trade Mark registration referred to above is currently the subject of a cancellation action.
The Domain Names were all registered in 2003 as follows: <cult-shaker.com> (January 28, 2003); <cultshaker.com> (February 6, 2003); <cultshaker.org> (February 6, 2003); <cult-shaker.org> (February 6, 2003). The Domain Names all resolved to the Complainant’s website at “www.cult-party.com”.
On September 21, 2011, the Complainant’s representative emailed the Respondent drawing the Respondent’s attention to the existence of the Complainant’s trade mark rights and informing the Respondent that it had come to the Complainant’s attention that the Respondent had registered the domain names, <cultshaker.com> and <cult-shaker.com>, and had re-directed them to the Complainant’s website at “www.cult-party.com”. The email sought transfer of those of the Domain Names. However, the Complainant received notification that the email could not be delivered. It subsequently came to the Complainant’s attention that the Respondent had also registered the other two of the Domain Names, namely <cultshaker.org> and <cult-shaker.org>. In addition, the Respondent was found to have registered <bevcon.org>, but notwithstanding that this domain name replicates to a high degree the name of the Complainant, the Complainant has omitted this domain name from the Complaint on the grounds of cost-saving.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names: and
(iii) The Domain Names have been registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant is the registered proprietor of trade mark registrations of the word “Cult”, the word “Shaker” and a figurative mark featuring “Cult Shaker” as a prominent element.
The Panel is satisfied that all four Domain Names, which comprise the words “cult” and “shaker” (with or without a hyphen) and the generic top level domain suffix, are confusingly similar to trade marks in which the Complainant has rights.
The Panel notes that one of the registrations appears to be under attack (see section 4 above), but it is still nonetheless a trade mark in which the Complainant currently has rights.
C. Rights or Legitimate Interests
The Complainant launched its Cult Shaker brand of beverage on a date unknown in 2003, its registration of its CULT trade mark (application filed in 1999) having come through in May 2002. The Domain Names were registered at the end of January/beginning of February 2003.
It is possible that the Domain Names were registered independently of the Complainant’s brand, but it is also possible that they were registered with the Complainant’s brand in mind.
The Complaint is disappointingly short of supporting evidence, but it seems very probable to the Panel that the Respondent was aware of the Complainant’s brand at time of registration of the Domain Names given that (a) the Respondent is a German resident and Germany is one of the territories at which the Complainant’s brand is targeted, (b) the only use known to have been made of the Domain Names is to connect them to the Complainant’s website at “www.cult-party.com”, (c) the Respondent registered a fifth domain name at the same time, which replicates in large part the name of the Complainant (see section 4 above) and (d) the coincidence of dates is highly persuasive.
The Complainant expresses the view that the Domain Names were originally registered without authority by a former distributor of the Complainant and that the Respondent is someone who acquired the Domain Names at a later date. Somewhat surprisingly, the Complainant does not provide any explanation for this view. Which former distributor?
However, the Complainant has made out a prima facie case under this head. The Respondent has a case to answer and there is no answer.
On the evidence before the Panel the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Panel has found thus far that the Domain Names are confusingly similar to trade marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names.
If it is in fact the case that the Domain Names were originally registered by a former distributor of the Complainant but without the Complainant’s knowledge or consent, it could perhaps have been argued by the Respondent (if he is associated with the former distributor) that he had a legitimate interest in respect of the Domain Names, but he elected not to do so. If it was not a former distributor who originally registered the Domain Names, it is difficult to see what justification he can have had for doing so. Equally, if, as the Complainant surmises (without any supporting evidence) that the current registrant is a later acquirer of the Domain Names, then again it is difficult to see what justification the new registrant can have had for doing so.
The Panel cannot be certain what the Respondent’s motives were when registering/acquiring the Domain Names. However, in the view of the Panel it can rarely justifiable to register a third party’s brand name as a domain name, without adornment and knowing it to be a brand of the brand owner yet without seeking the brand owner’s consent. If there were a justification for the Respondent to have done so, the Respondent had the opportunity to provide an explanation by responding to the Complaint. In the absence of any explanation from the Respondent, the Panel finds that the Respondent registered or acquired the Domain Names in bad faith.
When the Panel attempted to reach the Respondent’s website(s) under the Domain Names nothing materialized, merely a blank page. The Domain Names do not appear to be in any active use, although they were once used to resolve to the Complainant’s website.
The Panel is not in a position to know what the Respondent’s plans for the Domain Names. However, in all the circumstances the Panel believes the Complainant to be justified in seeing the Domain Names in the hands of the Respondent as a threat hanging over the Complainant’s head. There is nothing before the Panel to suggest that the Respondent’s intentions are well-meaning. While it is, of course, for the Complainant to prove its case rather than for the Respondent to prove his defence, there is no apparent defence.
In all the circumstances of the case the Panel finds on the preponderance of the evidence that the Respondent’s current non-use of the Domain Names can reasonably be regarded as a threat hanging over the head of the Complainant and, as such, a bad faith use within the meaning of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <cult-shaker.com>, <cultshaker.com>, <cult-shaker.org> and <cultshaker.org> be transferred to the Complainant.
Dated: November 18, 2011