WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Brooklyn Brewery Corporation v. Ellen Fisch
Case No. D2015-1639
1. The Parties
Complainant is The Brooklyn Brewery Corporation of New York, New York, United States of America ("United States"), represented by McDermott Will & Emery LLP, United States.
Respondent is Ellen Fisch of Hewlett, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <brooklynale.com> (the "Domain Name") is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2015. On September 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 12, 2015. On October 12, 2015, Respondent informed the Center via email that it had not filed a Response because it had no interest in pursuing the matter.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 21, 2015. 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
According to Complainant (and the allegations are not contradicted by Respondent), Complainant is the largest brewer in the State of New York and among the largest 20 brewers in the United States. Complainant has been brewing and selling beer under the brand "Brooklyn" since 1987. Complainant holds several registrations with the United States Patent and Trademark Office for BROOKLYN-formative marks such as BROOKLYN BREWERY and BROOKLYN BRAND LAGER (the "BROOKLYN Marks")..
Respondent registered the Domain Name in February 2011. The Domain Name resolves to a parking page, where the Domain Name is offered for sale and where several hyperlinks appear. Among the links are "Beer," "Party Tent Rentals Prices," and "Event Furniture Rental." It is alleged, and neither disputed nor found to be implausible, that Respondent derives pay-per-click revenue from these links.
5. Parties' Contentions
Complainant asserts that it has satisfied the three elements required for a transfer of the Domain Name under the Policy.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant holds rights, through registration and use, in the BROOKLYN Marks. Further, the Panel concludes that the Domain Name is confusingly similar to that mark. The addition of the word "ale" to the BROOKLYN Marks does not diminish the confusing similarity between the mark and the Domain Name. Indeed, the word "ale" – a type of beer – probably reinforces the confusing similarity.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a 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.
Complainant has not authorized Respondent to use its BROOKLYN Marks in a domain name or otherwise. Respondent has not come forward with any assertion, much less evidence, of any bona fide basis for having registered the Domain Name, and the Panel on this record can discern no such right or legitimate interest.
The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of a Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv). Because of the word "ale" in the Domain Name, the Panel finds it more likely than not that Respondent had Complainant's BROOKLYN Marks in mind when registering the Domain Name. The Panel also finds it more likely than not that Respondent derives income from the seemingly commercial hyperlinks featured at the website to which the Domain Name resolves. Accordingly, on this record, the Panel concludes that Respondent has intentionally sought to attract, for commercial gain, Internet users to its website by means of a Domain Name confusingly similar to Complainant's well-established BROOKLYN Marks.
The Panel concludes that Complainant has established paragraph 4(a)(iii) of the Policy.
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 <brooklynale.com> be transferred to Complainant.
Robert A. Badgley
Date: October 21, 2015