Complainant is The Brooklyn Brewery Corporation of Brooklyn, New York, United States of America, represented by McDermott Will & Emery LLP, United States of America.
Respondent is Private Registration at Account Privacy of Tampa, Florida, United States of America / Jeffrey Matthews Ltd of Brooklyn, New York, United States of America, represented by ESQwire.com PC, United States of America.
The disputed domain name <brooklynbeer.com> is registered with Nettuner Corp. DBA Webmasters.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2015. On July 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 27, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 29, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced August 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2015. The Response was filed with the Center August 23, 2015.
The Center appointed Lorelei Ritchie, Georges Nahitchevansky and The Hon Neil Brown Q.C. as panelists in this matter on October 14, 2015. The Panel finds that it was properly constituted. Each member of 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.
Complainant is a brewery based in Brooklyn, New York, in the United States. Since 1987, Complainant has been operating under the trade name and mark BROOKLYN BREWERY. Complainant owns several registrations for marks in the United States, including for BROOKLYN BREWERY, and design, United States Registration No. 3,186,499 (issued 2006); BROOKLYN BRAND, United States Registration No. 3,186,501 (issued 2006); BROOKLYN BREWERY, United States Registration No. 3,186,503 (issued 2006); BROOKLYN BRAND LAGER, and design, United States Registration No. 4,364,893 (issued 2013); and BROOKLYN WILD STREAK, United States Registration No. 4,544,629 (issued 2014). All of Complainant's registrations were issued with a Trademark Act Section 2F claim of acquired distinctiveness.
Complainant's Brooklyn Brewery has been discussed in various articles in the United States media, including the Washington Post (1997), the New York Times (2002), the Los Angeles Times (2003), and the Daily News (New York) (2003). Complainant also owns the registration for the disputed domain name <brooklynbrewery.com> (registered 1996), which it uses to inform potential consumers of its brewery products and services.
Respondent registered the disputed domain name <brooklynbeer.com> on January 10, 2004. Respondent's address of record is in Brooklyn, New York. The URL associated with the domain name is linked to a website which contains sponsored ads, including links to various beer and brewery companies. Respondent has no affiliation with Complainant and no license or authorization to use Complainant's marks.
Complainant contends that (i) <brooklynbeer.com> is identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant refers its marks as its "Brooklyn marks." Complainant states that it sold "hundreds of thousands of barrels of beer under the Brooklyn marks" in the years 1987 to 2003, and during this same time period spent millions of dollars in advertising and promotion, while making USD 10 million in revenue. As noted, during this time period, Complainant's Brooklyn Brewery services and products were featured in several articles in the United States media. Complainant further states that its business has since grown considerably, with annual revenue now exceeding USD 60 million per year. Complainant's beer is now sold in 26 states and 20 countries.
Complainant contends that with its level of sales, and since Respondent is based in Brooklyn as well, Respondent must be aware of Complainant and its Brooklyn marks. Complainant contends that Respondent is not using the website associated with the disputed domain name to link to beers specific to Brooklyn, nor to comment on "Brooklyn beer," but rather generally to link to Complainant's competitors in the beer and brewery industry, which does not show rights or legitimate interest, but rather indicates Respondent's bad faith.
Respondent contends that (i) <brooklynbeer.com> is not identical or confusingly similar to Complainant's trademarks; (ii) Respondent has rights or legitimate interests in the disputed domain name; and (iii) Respondent did not register and is not using the disputed domain name in bad faith.
Respondent contends that the disputed domain name is not sufficiently similar to any mark in which Complainant has rights. Respondent contends that Complainant does not own rights to the term "Brooklyn" by itself nor to the combined term "Brooklyn Beer."
Respondent submitted the declaration of its principal, Lawrence Fischer. Respondent contends that there are other breweries in Brooklyn, besides Complainant's Brooklyn Brewery, and that there have been for quite some time before Complainant ever used or registered its marks. Respondent further contends that, as Complainant's marks are registered with claims of acquired distinctiveness, and several have disclaimers of various terms, the term "Brooklyn" is merely descriptive of beer. Respondent contends that the terms "Brooklyn" and "beer" are common, dictionary terms, which Respondent is using in a legitimate manner with his pay-per-click website, which links are auto-generated by Google. The Fischer declaration further contends that Respondent owns other domain names that consist of common, dictionary terms, Respondent states that he registered the disputed domain name without intent to profit from Complainant's rights in Complainant's marks.
Respondent contends that Complainant owned the registration for the disputed domain name from 1999 until 2002, and allowed it to lapse. Respondent contends that Complaint's knowledge of Respondent's lack of bad faith is further shown by the fact that Complainant did not object when Respondent registered the disputed domain name in 2004 or for over ten years thereafter. Rather, Respondent contends that this is a case of reverse domain name hijacking.
Preliminarily, the Panel notes that both of the parties filed supplementary filings. Although there is no provision in the rules for filing supplementary papers except in response to notifications of deficiency by the Center, the Panel finds the additional information useful and has considered all submissions herein. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038 (transferring the domain name <best-of-ishares.com>).
This Panel must first determine whether the disputed domain name <brooklynbeer.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. Although Complainant does not own a mark for the terms "Brooklyn" alone or for "Brooklyn beer," Complainant does own rights to the mark "Brooklyn Brewery," which has the same first term, as well as the same connotation and commercial impression, as the disputed domain name <brooklynbeer.com> with the latter adding the non-source-identifying Top-Level Domain,".com".
UDRP panels have found for complainants on this first element where they demonstrate rights in a term that is highly similar in commercial impression to the terms in the disputed domain name. See WIPO Overview of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2; and La Quinta Worldwide, L.L.C. v. PrivacyProtect.org / Pantages Inc., WIPO Case No. D2011-1530 (transferring the domain name <quintainns.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interest" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
UDRP panels have found that "[i]t is well settled that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the trade mark of a complainant, provided it has not been registered with the [c]omplainant's trade mark in mind." See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case. No. D2005-0241 (denying transfer of the domain name <elephants.com>); carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. 2004-0047 (denying transfer of the domain name <carsales.com> and finding respondent's warehousing of domain names to constitute a legitimate business interest). Respondent uses the URL associated with the disputed domain name to resolve to a pay-per-click web page from which it offers sponsored links. As Respondent notes, these links are generated by Google. The evidence shows that the advertisements include those for competitors of Complainant in the beer and brewery industry. The Panel finds that the website is not being used in a truly descriptive manner since the advertisements are not specific to beers or breweries from Brooklyn.
Accordingly, although the combined terms "Brooklyn" and "beer" in the disputed domain name are descriptive, the Panel finds that Complainant has demonstrated Respondent's lack of rights or legitimate interest, which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents'] web site or other on-line location, by creating a likelihood of confusion with [Complainant's] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents'] web site or location or of a product or service on [the] web site or location."
The Fischer affidavit attests that Respondent registered the disputed domain name in 2004 without intent to profit from Complainant's rights in Complainant's marks, a point that the Panel finds plausible in light of the evidence provided. As Respondent points out, Complainant does not own registrations for the term "Brooklyn" by itself, nor for "Brooklyn Beer," nor does Complainant appear to have common law rights to such marks, particularly as Complainant's registrations all claim section 2F, which indicates that the term "Brooklyn" is merely descriptive of Complainant's beer and brewery services. The Panel also notes that Complainants existing trademark registrations were all issued after Respondent's registration of the disputed domain name in 2004. Although Complainant formerly owned the disputed domain name from 1999 through 2002, Complainant did not object for over ten years after Respondent registered the disputed domain name in 2004.
On the balance, the Panel finds that there is insufficient evidence that Respondent registered and has used the disputed domain name in bad faith. Therefore, this Panel finds for Respondent on the third element, in accordance with paragraph 4(a)(iii) of the Policy.
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard:
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.
As stated previously, Complainant began use of its Brooklyn Brewery mark in 1987 and owned the registration for the disputed domain name from 1999 through 2002. Respondent registered the disputed domain name in 2004. The Panel has found that the disputed domain name shares the same first term, and is similar in connotation and commercial impression to Complainant's Brooklyn Brewery mark. Furthermore, the Panel has found that Complainant has used that mark since prior to the date that Respondent registered the disputed domain name. Accordingly, the Panel finds that Complainant did not initiate this UDRP proceeding in bad faith or primarily to harass Respondent.
The request for a finding of reverse domain name hijacking is denied.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: October 28, 2015
The generally accepted attitude of UDRP panels to applications for findings of Reverse Domain Name Holding ("RDNH") is that UDRP panels should be loathe to make such findings merely because the case has not succeeded, but that the power should be exercised where, as paragraph 15(e) of the Rules provides, the complaint has been brought in bad faith, for example in an attempt at RDNH or primarily to harass the domain name holder. RDNH itself is defined in the Rules as using the Policy in bad faith, so the motivation of a complainant in bringing the complaint and whether it can fairly be described a bad faith on the part of the complainant is the paramount consideration in whether the finding should be made or not. This Panel joined in expressing that view and in finding for RDNH in the unanimous decision in E-Renter USA Ltd. v. Domain Hostmaster, Customer ID: 55391430909834, WhoIs Privacy Services Pty. Ltd. / Domain Administrator, Vertical Axis Inc, WIPO Case No. D2015-0784, which relied on a similar approach in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309 and also joined in the unanimous decision to that effect in Wallace Media Pty Ltd v. CyclingTips CA, WIPO Case No. D2014-1384 where a similar view was expressed. On the other hand I have declined, as have other panellists, in making a finding of RDNH where a complainant has been motivated by nothing but a desire to defend its trademark on legitimate grounds, even if the case has failed.
In the present case, there is evidence that Complainant has gone beyond that latter motivation and has in fact been actuated by bad faith in bringing the Complaint. Not only were there clear grounds reasonably apparent at the time the complaint was filed that the Complaint could not succeed, but Complainant was put on notice in the Response that this was so, a point relied on in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151, where the panel said:
"Under these standards, Complainant's actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainant's mark was limited to a narrow field, and that Respondent's registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complaint, but also, Respondent put Complainant on express notice of these facts and that any further attempt to prosecute this matter would be abusive and would constitute reverse domain name "hijack[ing]." Complaint, Annex 2. Complainant's decision to file its Complaint in the face of those facts was in bad faith. Accordingly, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking."
In the present case, Complainant's allegation that Respondent registered the disputed domain name in bad faith was untrue and must have been known to be untrue at the time the Complaint was filed. It was untrue because not only must it have been known that there was no evidence of bad faith registration, but this was doubly so because Complainant itself was the registrant of the disputed domain name before Respondent registered it. Complainant allowed the registration to lapse and become available for others to buy it and when this happened and Respondent acquired the disputed domain name, Complainant took no action for 11 years to retrieve the domain name until it filed the Complaint.
Complainant's prior ownership of the disputed domain name was not revealed in the Complaint. Respondent put this squarely to Complainant by pleading in the Response that Complainant had "allowed the Disputed Domain to expire that yet took no action against Respondent for over 11 years." The Response was supported by a Declaration from the principal owner of Respondent that it had acquired the disputed domain name when its owner allowed the registration to lapse and that the disputed domain name had been deleted and offered up for purchase. Complainant filed a supplementary submission, but its only apparent response on this issue was to say that it was "only one factor in the bad faith analysis."
No doubt it is only one factor, but the absence of an explanation for the lapse in registration of the disputed domain name, allowing another party to buy it and then not to take any action to retrieve it for 11 years, shows that it was not bad faith on the part of Respondent that motivated Respondent to register the disputed domain name, but Complainant's own actions in allowing the disputed domain name to be offered for sale to anyone who wanted to buy it. To allege bad faith against a respondent in those circumstances is not being frank and open with the panel and is itself an act of bad faith, the essential element in the definition of RDNH.
Accordingly, although agreeing with the ultimate decision of the Panel in dismissing the Complaint, this Panelist would also find that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
The Honourable Neil Anthony Brown QC
Date: October 29, 2015