V&S Vin & Sprit Aktiebolag (publ)
v. Pride Not Profit, Inc.
Claim
Number: FA0504000452057
Complainant is V&S Vin & Sprit Aktiebolag (publ) (“Complainant”),
represented by Joanne Ludovici-Lint, of McDermott Will & Emery LLP, 600 13th Street, NW, Washington, DC 20005. Respondent is Pride Not Profit, Inc. (“Respondent”), 8205 Santa Monica Blvd.,
Suite 1-390, West Hollywood, CA 90046.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <absolutglaad.org>, registered with Network
Solutions, LLC.
The
undersigned certifies she has acted independently and impartially and to the
best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 8, 2005.
On
April 12, 2005, Network Solutions, LLC confirmed by e-mail to the National
Arbitration Forum that the domain name <absolutglaad.org> is
registered with Network Solutions, LLC and that Respondent is the current
registrant of the name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions,
LLC 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 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@absolutglaad.org by e-mail.
Respondent
requested that it be allowed an additional ninety days to respond to the
Complaint. Respondent’s ninety day
extension request exceeded the twenty day maximum set forth pursuant to
National Arbitration Forum Supplemental Rule 6 and was filed without the
requisite extension fee. Thus,
Respondent’s extension request was denied.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 5, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 <absolutglaad.org>
domain name is confusingly similar to Complainant’s ABSOLUT mark.
2. Respondent does not have any rights or
legitimate interests in the <absolutglaad.org> domain name.
3. Respondent registered and used the <absolutglaad.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
V&S Vin & Sprit Aktiebolg (publ), has produced and sold vodka
throughout the world under the ABSOLUT mark.
In 1981, Complainant introduced a unique advertising campaign to promote
its ABSOLUT vodka, wherein Complainant’s advertisements prominently feature the
ABSOLUT mark in block text followed by a common word (i.e. “fashion”). This advertising campaign has earned
numerous awards and substantial recognition, and has been ranked by Advertising
Age magazine as the seventh best advertising campaign of the twentieth
century. As a result, the ABSOLUT mark
has acquired immense international fame and Complainant’s ABSOLUT vodka is the
third largest international spirit brand in the world.
Complainant has
registered the ABSOLUT mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 1,302,003 issued October 23, 1984; 1,642,971 issued April
30, 1991; 1,660,515 issued October 15, 1991).
Complainant also owns registrations for the ABSOLUT mark in approximately
130 other countries throughout the world.
Respondent
registered the <absolutglaad.org> domain name on December 18,
2004. Respondent’s domain name resolves
to a website that criticizes the Gay and Lesbian Alliance Against Defamation.
Respondent’s <absolutglaad.org>
domain name incorporates disparate parties’ marks and interests. Specifically,
the Gay and Lesbian Alliance Against Defamation’s GLAAD mark is implicated by
way of Respondent’s domain name. Due to practical difficulties inherent in the
UDRP, cooperative complaint initiation is unlikely and infeasible. Because
Complainant initiated this dispute prior to any other interested party,
Complainant has the opportunity to acquire the domain name, while seeking to
protect its ABSOLUT mark from an infringing use. However, due to the procedural
complexities presented by the current dispute, the following issue must be
addressed: that Complainant seeks acquisition of the subject domain name in
good faith, and will forfeit its interest in the contested domain name if the
other represented mark is infringed upon following a transfer of the domain
name registration to Complainant. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(finding that the complainant’s continuing control of the
<viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name was contingent upon good faith possession, and the
complainant would forfeit its interest in the domain name if it infringed on
the other represented marks); see also G.D. Searle v. Dunham, FA 123901
(Nat. Arb. Forum Oct. 9, 2002).
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.
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 has
established rights in the ABSOLUT mark through registration with the USPTO and
with various international trademark authorities. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive). The respondent has the burden of refuting
this assumption. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark.
Respondent’s <absolutglaad.org> domain name
incorporates Complainant’s ABSOLUT mark in its entirety and merely adds the
GLAAD mark and the generic top-level domain “.org.” Such minor additions are insufficient to negate a finding of
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See G.D.
Searle & Co. v. Paramount Mktg.,
FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other
well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”); see
also BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical
to the complainant’s well-known and registered BMW trademarks); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <absolutglaad.org> domain
name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp.
v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
using the <absolutglaad.org> domain name, which is confusingly
similar to Complainant’s ABSOLUT mark, to operate an editorial website that
features essays criticizing the Gay and Lesbian Alliance Against
Defamation. Such use is not a use in
connection with 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 Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18,
2001) (finding that establishment of a website containing criticism is not a
legitimate use of the <davidweekleyhome.com> domain name because the
disputed domain name is confusingly similar to the complainant’s DAVID WEEKLEY
HOMES mark); see also E. & J. Gallo Winery v. Hanna
Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a
legitimate free speech/complaint site does not give rights to use a famous mark
in its entirety); see also Direct Line Group Ltd. v. Purge I.T.,
D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name
and adoption of it in a domain name is inherently likely to lead some people to
believe that the complainant’s are connected with it).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s ABSOLUT mark. Thus, the
Panel finds that Respondent lacks rights and legitimate interests in the <absolutglaad.org>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <absolutglaad.org> domain name with actual or
constructive knowledge of Complainant’s rights in the ABSOLUT mark due to
Complainant’s registration of the mark with the USPTO as well as the immense
international fame that the mark has acquired.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see
also Exxon Mobil Corp. v.
Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the respondent had
actual and constructive knowledge of the complainant’s EXXON mark given the
worldwide prominence of the mark); see
also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
Furthermore,
Respondent is using the <absolutglaad.org> domain name to operate
a website featuring content criticizing the Gay and Lesbian Alliance Against
Defamation. Because the domain name is
confusingly similar to Complainant’s ABSOLUT mark, Internet users may infer a
connection between Complainant and the views and opinions expressed at
Respondent’s website. Thus,
Respondent’s use of the confusingly similar domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s
complaint website did not compete with the complainant or earn commercial gain,
the respondent’s appropriation of the complainant’s trademark with a view to
cause “damage and disruption to [the complainant] cannot be right, still less
where the use of the Domain Name will trick internet users intending to visit
the trademark owner’s site into visiting the registrant’s site” in holding that
the disputed domain name was registered in bad faith); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
bad faith where the respondent knowingly chose a domain name, identical to the
complainant’s mark, to voice its concerns, opinions, and criticism).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <absolutglaad.org> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 16, 2005
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