Mast-Jaegermeister AG v. John Marzlak
Claim Number: FA1004001317337
Complainant is Mast-Jaegermeister
AG (“Complainant”), represented by Katrin
Lewertoff, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jager-bomb.com>, registered with Directnic, Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2010.
On April 6, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <jager-bomb.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jager-bomb.com. Also on April 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jager-bomb.com> domain name is confusingly similar to Complainant’s JAGER BOMB mark.
2. Respondent does not have any rights or legitimate interests in the <jager-bomb.com> domain name.
3. Respondent registered and used the <jager-bomb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mast-Jaegermeister AG, is a well-known leader in the alcoholic beverages industry. Complainant registered the <jager.com> domain name in 1995 and uses this website to promote its products via the Internet. As early as 2002, consumers began to mix a cocktail drink called the Jager Bomb by combining Jagermeister and Red Bull. Complainant subsequently filed trademark registrations with the United States Patent and Trademark Office (“USPTO”) and holds numerous trademark registrations for the JAGER BOMB mark (e.g., Reg. No. 3,465,834 registered on July 15, 2008).
Respondent, John Marzlak, registered the <jager-bomb.com> domain name on December 19, 2004. The disputed domain name resolves to a website that promotes plastic cups that are used with Complainant’s product. The website also features Complainant’s mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the JAGER BOMB mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,465,834 registered on July 15, 2008). The Panel finds Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i) through registration of the JAGER BOMB mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also asserts common law rights in its JAGER BOMB mark through its continuous use since 1995 and the consequent development of secondary meaning in the mark. Complainant has operated the <jager.com> domain name in connection with its business since 1995. In addition, Complainant’s provides evidence that consumers began to mix a cocktail drink called the Jager Bomb by combining Complainant’s product, Jagermeister, and Red Bull since as early as 2002. The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the JAGER BOMB mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1995. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant claims Respondent’s <jager-bomb.com>
domain name is confusingly similar to its JAGER BOMB mark. The disputed domain name incorporates
Complainant’s mark in its entirety.
Respondent also adds a hyphen and the generic top-level domain (“gTLD”)
“.com” to Complainant’s mark in the disputed domain name. These additions do not distinguish
Respondent’s disputed domain name from Complainant’s mark. See Health Devices Corp. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first show Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may interpret Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to respond, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not licensed or authorized to use Complainant’s mark in a domain name. In addition, the WHOIS information lists “John Marzlak” as the registrant of the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent uses Complainant’s JAGER
BOMB mark in the disputed domain name to mislead Internet users into believing
that Complainant has some affiliation with Respondent’s product. Respondent capitalizes on the confusingly
similar domain name to attract Internet users seeking Complainant’s website to
a website offering plastic cups for consumers to use with Complainant’s
product. Therefore, the Panel finds that
such diversionary use of the disputed domain name for Respondent’s own
commercial gain does not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of
the domain name under Policy ¶ 4(c)(iii).
See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii));
see also U.S. Franchise Sys., Inc.
v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the
goodwill surrounding that mark as a means of attracting Internet users to an
unrelated business was not a bona
fide offering of goods or
services).
The Panel finds that Respondent is attempting to pass itself
off as Complainant for profit. Respondent uses Complainant’s mark on its website. The Panel finds that Respondent’s effort to
pass itself off as Complainant is further evidence that Respondent lacks rights
and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant also argues that Respondent intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to the <jager-bomb.com> domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site, and its products. As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s mark. In addition, Respondent uses part of Complainant’s JAGER BOMB mark on its website. The Panel finds Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site for Respondent’s commercial gain. Therefore, the Panel concludes Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant claims that Respondent is using the disputed domain name to pass itself off as being associated with Complainant by displaying Complainant’s JAGER BOMB mark on the resolving website. The Panel finds that this use also supports findings of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <jager-bomb.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 18, 2010
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