Michael Machat v. Jaden Thompson a/k/a
Vaden Vampes
a/k/a Vampes Domains by Proxy
Claim Number: FA0508000542036
PARTIES
Complainant
is Michael Machat (“Complainant”),
represented by Susan L. Pollyea of Law Office of Michael Machat,
9107 Wilshire Blvd., Suite 425, Beverly Hills, CA 90210. Respondent is Jaden Thompson a/k/a Vaden Vampes a/k/a Vampes Domains by
Proxy (“Respondent”), Gothicastle, London, SW1, GB.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <vampiredrinks.com>, <vampirevodka.com>, <vampyrevodka.com>
and <vampes.com>, registered with Enom, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Mr.
Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), which was adopted by
the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(“Rules”) as approved on October 24, 1999, as supplemented by the National
Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
Complainant
submitted a Complaint to the National Arbitration Forum ("Forum")
electronically on August 17, 2005; the National Arbitration Forum received a
hard copy of the Complaint together with Exhibits A‑M on August 18, 2005. In response to a request in a letter dated
August 26, 2005 from the Forum setting forth various deficiencies in the
Complaint, the Complainant filed an Amended Complaint with the Forum on August
30, 2005 together with additional Exhibits N‑P.
On
August 17, 2005, Enom, Inc. ("Registrar") confirmed by e‑mail
to the National Arbitration Forum that the <vampiredrinks.com>, <vampirevodka.com>, <vampyrevodka.com>
and <vampes.com> domain names are registered with Enom, Inc. and
that Respondent is the current registrant of all the names. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to resolve
domain‑name disputes brought by third parties in accordance with the
Policy, and that the disputed domain names will remain in a locked status.
On
August 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
20, 2005 by which Respondent could file a Response to the Complaint, was
transmitted by the Forum 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@vampiredrinks.com, postmaster@vampirevodka.com,
postmaster@vampyrevodka.com and postmaster@vampes.com by e‑mail.
A
timely Response was received and determined to be complete on September 6, 2005.
Between
August 17, 2005 and September 27, 2005, Respondent sent a considerable amount
of e‑mail correspondence to Complainant and also copied it to the
Forum. None of this correspondence
complied with Supplemental Rule 7 of the Forum.
On September 12, 2005, pursuant to Complainant’s request
to have the dispute decided by a single‑member
Panel, the National Arbitration Forum
appointed Mr. Peter L. Michaelson, Esq. as Panelist and set a deadline of September 26, 2005 to receive the decision
from the Panel.
In light of unexpected time conflicts experienced by the
Panel which amounted to exceptional circumstances, the Forum, at the Panel's
request, extended the deadline for the decision to October 10, 2005.
RELIEF SOUGHT
Complainant
requests that all the disputed domain names be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Confusing similarity/identicality
Complainant contends that the disputed
domain names are identical or confusingly similar to Complainant’s VAMPIRE
marks.
Specifically, Complainant notes that, once the gTLD
(generic top level domain) ".com" is ignored, the remaining portions
of each of the disputed domain names <vampiredrinks.com>
, <vampirevodka.com> and <vampyrevodka.com> incorporate
Complainant's VAMPIRE or VAMPYRE mark, followed by the generic word
"drinks" or "vodka".
Such generic words are simply insufficient in themselves to add
requisite distinctiveness to those domain names in order to adequately prevent
user confusion from occurring.
Given
this, Complainant believes that Internet users who see these names will likely
think that these names are variations of Complainant's VAMPIRE marks,
particularly when these names are used in connection with vodka and other
drinks.
As
to the disputed <vampes.com>
domain name, Complainant contends that this name incorporates a variation of
Complainant's VAMP mark, through which Internet users would likely think that
the domain name is a plural form of the mark, hence causing confusion. Complainant points to an audio recording on
Respondent’s web site that announces, “welcome to the companies of Vampes,”
pronouncing “vampes” with a silent “e”.
The change from the mark VAMP to a plural form in the disputed domain
name <vampes.com> is a form of
typosquatting, through which Respondent is attempting to capitalize on
typographical errors made by Internet users who attempt to reach Complainant's
web site.
Furthermore,
Complainant contends that confusion with the VAMPIRE marks is all the more
likely inasmuch as Respondent, through its web site, is offering for sale
beverages, namely a “VAMP Vodka Energy Drink”, “Vampes Drinks”, “Vampes Wine
and Beer,” and “Vampes Red Vodka” (Complainant’s VAMPYRE vodka is a red colored
beverage), clothing and other merchandise.
Complainant further contends that Respondent, in its web site (hard‑copies
of various pages of which are annexed to the Complaint), has adopted the same
web site color scheme as Complainant of red print and images on black
backgrounds, and also displays bottles and cans of beverages that have the same
trade dress as Complainant’s products.
In
addition, Complainant contends that an online third‑party review of
Complainant’s VAMP drink followed by comments posted by other third parties (a
copy of the review and comments is annexed to the Complaint) illustrate actual
confusion. In that regard, several of
the comments mistakenly refer to Complainant's products as being packaged in a
“bloodbag”, which is apparently how Respondent's products are advertised on its
web sites.
Hence,
Complainant submits that Respondent's use of identical or confusingly similar
domain names and web sites with highly similar visual elements is intended to
mislead and confuse Internet users into believing that there is some
affiliation, connection, sponsorship, approval or association between
Respondent and Complainant, when, in fact, none exists. Respondent is neither a licensee nor is it
affiliated with Complainant in any manner.
Lastly,
Complainant states that he is particularly concerned inasmuch as links on
Respondent’s web sites lead to web pages (hard‑copies of selected pages
are annexed to the Complaint) containing gory, pornographic images depicting
semi‑nude women and men dripping with blood, covered with blood, licking
blood, sucking dead “human” body parts and pointing a blood covered gun at the
viewer. “FETISH GORE HORROR EROTICA”
boasts one of Respondent’s web pages.
In contrast, Complainant’s customers seek classy, upscale, fashionable,
fine quality products and appreciate the fanciful, tongue‑in‑cheek
humor of the VAMPIRE marks and marketing of Complainant’s products. The VAMP mark connotes a beautiful,
desirable and seductive young woman. In
fact, Complainant’s surveys of his customers indicate that a majority of
consumers of Complainant's VAMPIRE, VAMP, and VAMPYRE branded beverages are
young, economically upscale women.
Complainant’s consumers are certain to find Respondent’s gory pictures
repellant and disturbing, completely negating the pleasant associations which
Complainant seeks to create in promoting the pairing of VAMPIRE wine with food
and providing recipes for mixed drinks using VAMPYRE vodka.
The
confusion of Respondent's images with Complainant’s products on the part of
consumers seeking to access Complainant’s web sites, but finding Respondent’s
sites instead, injures the goodwill established by the VAMPIRE marks and
potentially results in lost revenue for Complainant.
Therefore,
Complainant concludes that, for each of the disputed domain names, it has met
the requirements of paragraph 4(a)(i) of the Policy.
2.
Rights and legitimate interests
Complainant contends that Respondent has no rights or
legitimate interests in any of the disputed domain names pursuant to
paragraph 4(a)(ii) of the Policy.
First,
Complainant points to the fact that Respondent registered the disputed domain
names (in 2003 and 2004) long after Complainant commenced use in commerce of
its VAMPIRE mark in 1988, its VAMP mark in February 2002 and its VAMPYRE mark
in September 2002.
Second, the Complaint contends that Respondent is
not commonly known by the names “vampiredrinks”, “vampirevodka”, “vampyrevodka”, or “vampes”, and does not do business
under any of these names. Furthermore,
Respondent is not associated in any way with Complainant, nor has ever been
authorized or licensed to use Complainant’s VAMPIRE marks or any domain name
incorporating any of those marks or a variation thereof.
3.
Bad faith use and registration
Complainant
contends that Respondent has registered and is using all the disputed domain
names in bad faith, hence in violation of paragraph 4(a)(iii) of the Policy,
and specifically in violations of paragraphs 4(b)(ii) and 4(b)(iv).
Specifically,
Complainant asserts that Respondent had constructive notice of Complainant’s
rights in the VAMPIRE marks prior to registering the <vampes.com> domain name, and both constructive and actual
notice of Complainant’s marks prior to registering the remaining three disputed
domain names. Specifically, Respondent
registered these three domain names after corresponding with Complainant in a
series of e‑mails (copies of which are provided with the Complaint),
which are dated and summarized as follows:
(1) March 13, 2004:
Respondent enclosed pictures of Complainant’s VAMP, VAMPIRE, and VAMPYRE
products and a model wearing a shirt bearing the word “VAMPES”, and asked if
Complainant would like to open a chain of nightclubs with Respondent in London,
New York and Paris, to be called “Vampes”.
The nightclubs were to feature Complainant's drinks and Respondent's
models.
(2) March 15, 2004:
Respondent referenced a telephone call with Complainant in which Complainant
declined Respondent’s offer and advised Respondent of Complainant’s rights in
the VAMP, VAMPIRE and VAMPYRE marks.
Respondent offered to “cancel” his “idea to do Vampes.com wine,” saying
he would just “stick to the Vodka” and launch a “Vampes.com” perfume. He acknowledged that the VAMPIRE mark in
connection with wine belongs to Complainant and indicated that a third party’s
<vamps.com> web site and another entity’s plans to open a “Vamps” club in
England were both “a direct violation” of Complainant’s trademark rights. Respondent urged Complainant to “merge” with
him in his plan to develop a hair studio, models, accessories, television
series, movies and distribution of Complainant’s wines, so that together they
could control the entire field.
(3) March 18, 2005: Respondent complained that he had not
received a response from Complainant to his March 15 e‑mail, but
reassured Complainant that “we are not going to bother with wines but stick to
the Vampes Vodka range.”
(4) March 26, 2004: Respondent stated that since Complainant
is apparently not going to reply or work with him, Respondent will now be
selling “Vampe beer” and vodka in the U.K.
He concluded that a copy of the e‑mail had been sent to his legal
representatives, “should anything untoward happen to the safety of myself and
the people who work for me. I am sure i could recruit as many mafia contacts
here in the UK as you do in the USA, so please dont believe that i will be
intimidated . . .[D]ont set foot on my island with your products . . . .”
(5) June 7, 2004:
Respondent wrote: “If youre vampire vodka ever comes to my island ENGLAND, I
will have the lot of you sorted. youve
been warned. now we will continue with
vampire wine, 2 can play at this game.”
As indicated in the e‑mails, Respondent was aware of
Complainant’s VAMPIRE marks, but in spite of that knowledge registered and used
the disputed domain names; hence indicative of bad faith. Complainant is aware of no plausible
explanation as to why Respondent selected the disputed domain names, other than
to trade on Complainant’s goodwill built up in his marks, and it is difficult
to infer or imagine a legitimate use to which Respondent could put the
names. Motivated by commercial gain,
Respondent has intentionally attempted to attract Internet users to his web
sites by creating a likelihood of confusion with Complainant’s VAMPIRE marks as
to the source, sponsorship, affiliation, or endorsement of his web sites and of
products offered on the web sites, evidencing bad faith registration and use in
contravention of paragraph 4(b)(iv) of the Policy.
As to
paragraph 4(b)(ii), Complainant contends that Respondent registered the
disputed names in order to prevent Complainant from reflecting its VAMPIRE
marks in other domain names and, by having engaged in a pattern of such
conduct, demonstrated bad faith registration and use. In that regard, Respondent registered over 140 domain names, some
of which copy or incorporate well-known names and marks of other entities (e.g., LenWiseman.com and LenWiseman.info
(Len Wiseman is a film director and writer, best known for the movie Underworld), MarciaShulman.com (Marcia
Shulman is a casting director for Buffy
the Vampire Slayer), DavidGreenwalt.com and DavidGreenwalt.info (David
Greenwalt is a television series writer, director and executive producer of Buffy the Vampire Slayer and Angel), and JoelSchumacher.com (Joel
Schumacher is a director and screenwriter of Phantom of the Opera)). A
reverse WHOIS print‑out of 95 domain names that are or have been
registered to Respondent appears with the Complaint. A list of 45 additional domain names that Respondent posted on
his web site for sale or lease also appears with the Complaint.
B. Respondent
While
not specifically responding to each of the allegations made by Complainant,
Respondent raised several points in its defense, which to the extent pertinent
are listed as follows.
First,
Complainant has been aware of Respondent's sites for many years now as those
sites have been registered for a long time.
In light of that, Respondent states, "And we now are wondering why
he is now attempting to steal our domains from us with absolutely no right
whatsoever in our business."
Second,
Respondent states, with respect to his having sold vodka under the VAMPIRE and
VAMPYRE marks prior to Complainant having done so and the manner through which
his vodka was sold, and his sales of wine branded under the VAMPIRE and VAMPYRE
marks:
We also notice that we had the vodka
range BEFORE Mr Machat. This is
why we registered the domains BEFORE HIM . . . .
So he is in fact stealing our idea for
vodka which can be proved from the archive at WebArchive.org web site yet we do not find this a threat in any way
as our products are entirely 2 different types. His vodka is in a bottle and ours in a bag. If this went to court
Mr Michat, knows as well as we do, we can prove we had Vampire/Vampyre Vodka
range idea before him. When we spoke on
the phone nearly 3 years ago we stopped selling wine as a courtesy to his
request and only re‑started it again when we realised you had copied our
vodka idea (emphasis in original).
Third,
Respondent asserts that Complainant previously instituted legal proceedings
against others, now including Respondent, who refused to sell domain names
including the term VAMPIRE or VAMPYRE to Complainant:
We have since found out that Mr Machat has
also attempted this recently with the owner of VAMPIRES.com who had to employ a lawyer to get rid of him. He was hassling the owner because he
wouldn’t sell the domain for $500 so instead tried a legal
complaint/lawsuit. He is also currently
doing this now with us AND the owner of VAMPYRE.com.
. . . [A]pproximately 2 and a half years
ago when he [Complainant] telephoned me [Respondent] and told me that if
my VAMPES company would be interested in selling his products in England, then
we may be able to work something out. Nothing ever came of that, so we presumed
he had changed his mind.
He also spoke of his unhappiness that we
had the domain VampireDrinks.com which
has been registered for a long time also and asked if he could purchase it from
us. We refused!
. . . [D]espite the fact he owns
VampireWine.com and never at the time had the initiative or foresight to
register VAMPIREDRINKS.com is not
our fault. It is his fault (emphasis in
original).
Fourth, various bottled drinks, including
some from Respondent, that bore the VAMPIRE mark existed as early as the
1980's, of which Complainant was well aware.
And Mr Machat was not even the original
owner of Vampire.com, he purchased
it himself from a 3rd party.
There have also been several makers of Vampire drinks well before Mr
Machat bought his company. Please see DRACULA.de to see a full list of other
manufacturers and Vampire / Dracula drinks.
For example
DRINKS FROM THE 1980’s
More and different products pre‑dating
Mr Machats or VAMPES products can be viewed at ebay.com on the following links
. . . Please view them here
EBAY ITEM NUMBER 5609081541 AND ITEM NUMBER
5609902621 (emphasis in original).
In that
regard, Respondent also points to a VAMPIRE branded wine imported in 1991 by
"Tri‑Vin Imports" of Mount Vernon, New York. An empty bottle of which was recently
offered for sale on eBAY as item number 6210049531.
Fifth,
as to the other domain names which Respondent registered and some of those
specifically referenced by Complainant, Respondent states:
Our Feinds.com department DOES register available domains as does many
other companies with a view to providing an internet service to a relevant
company so I am not sure what his point is in that argument. It is a perfectly legal action and is in no
way infringing on intellectual property laws as long as the site is not being
used for a similar field of business.
As a lawyer Mr Machat, should also know this and really should read up
on cyber‑piracy laws as he evidently knows very little. The sites he has listed are mainly clients
such as TheNightShadeclub.com,
former client ANZA‑LEISURE.com
(cigarette card company now at AnzaCards) ArmWars.com,
for a close friend of ours Mr Neil
Pickup who is the world champion arm wrestler, buzzbombs from the brandyciderwine company (who make our drinks for us) or former models of ours such
as RebekkaRaynor.com so this is now
slander from him too.Most of these domains have since expired (emphasis in
original).
C. Additional Submissions
Between
August 17, 2005 through September 27, 2005, Respondent sent a considerable
number of e‑mails to Complainant which he also copied to the Forum. Although the vast majority of this
correspondence was threatening to Complainant, insulting, comical or just
utterly irrelevant to the dispute, this Panel, as it is inclined to do
particularly in situations as here where the submitter is not represented by
counsel, has nevertheless reviewed and considered all of it.
Given
the amount and nature of this correspondence, the Panel will not summarize any
of it here. For simplicity, the
relevant points raised in that correspondence appear, as appropriate, in the
contentions above and/or the findings below.
FINDINGS
A copy of the
WHOIS registration records for the disputed domain names is annexed to the
Complaint. This record indicates that
Respondent registered <vampes.com>
on October 11, 2003, <vampiredrinks.com>
and <vampirevodka.com> on June
9, 2004, and <vampyrevodka.com>
on June 12, 2004.
A. Complainant's VAMPIRE Marks
Complainant currently owns various U.S.
and foreign counterpart trademark registrations for the terms VAMPIRE and VAMP
and has provided a hard‑copy printout of the records of his U.S. marks
from the publicly accessible Trademark Electronic Search System (TESS) provided
by the U.S. Patent and Trademark Office and a copy of the registration
certificates for the counterpart foreign marks. The pertinent details for the
U.S. marks are as follows:
1. VAMPIRE
(block letters)
Registration
Number: 2,263,907; registered: July 17, 1999
This mark was
registered for use in connection with "wines" in international class
33. In conjunction with these goods,
this mark claims a date of first use of February 10, 1988 and a date of first
use in commerce of October 31, 1989.
2. VAMP (block letters)
Registration Number: 2,681,906;
registered: January 28, 2003
This mark was
registered for use in connection with "soft drink colas; fruit drinks;
fruit flavored soft drinks; pop soft drinks; energy drinks, namely, sports
drinks" in international class 32.
In conjunction with these goods, this mark claims a date of first use
and a date of first use in commerce of February 5, 2002.
B. The parties
Complainant,
through his exclusive licensee, Cupid Wines, Inc., has sold in excess of
1,000,000 units yearly of Complainant's VAMPIRE, VAMP and VAMPYRE branded
products in North America alone, with additional quantities worldwide. These products have been featured in the DVD
movie Blade Trinity, starring the actor Wesley Snipes, on an episode of
the television series Viva La Bam, on the MTV web site and on CNN
Headline News. In addition, these
branded products have been featured in articles and reviews in numerous
newspapers and magazines, including USA Today, Rolling Stone, Spin,
Maxim, Elle and InStyle.
Copies of a representative sampling of articles in newspapers,
magazines, and books, as well as beverage advertisements that all feature the
VAMPIRE marks appear with the Complaint.
Complainant owns various domain names that
incorporate the VAMPIRE marks, including: <vampirewine.com>,
<vampire.com>, <vampirevineyards.com>, <vampirevinyards.com>,
<vampirewines.co.uk>, <vampirewine.co.uk>, <vampfest.com>,
<vampgear.com>, <vampirevodka.co.uk.>, and <vamp‑nrg.com>. Complainant has been conducting business at
his web site at <vampirewine.com> since April 1996, and his web site at
<vampire.com> since August 2000, which serve as Complainant’s online
contact with consumers in the U.S. and worldwide, through which customers can
purchase VAMPIRE wines, VAMPYRE vodka, VAMP energy drinks, VAMPIRE wine club
memberships, posters, corkscrews, decals, shirts, hats, and DVDs, participate
in contests and promotions, and obtain information and recipes featuring the
drinks. Hard‑copy printouts of
various pages from the Complainant’s web site appear with the Complaint.
Complainant
states he has invested considerable time, effort and resources to develop
goodwill in his VAMPIRE marks. He
advertises and markets his products under the marks in a variety of channels
worldwide, such as printed publications, radio, the Internet and
billboards. He has expended significant
resources in advertising and promoting the products under those marks and
diligently policing those marks and their reputation.
As
best understood, Respondent has some connection—though the extent of which is
not apparent from the record and hence unknown to the Panel—to an organization
called "VAMPES" which itself is a Christian‑based organization
rooted in the history of an individual who lived some 500 years ago named Vlad
Tepes.
Respondent
was selling its VAMPIRE branded bottled drinks back as early as the 1980s and
continues to do so. Currently,
Respondent maintains web sites resolvable through the disputed domain names
through which he sells various bottled and packaged drinks. Hard‑copy printouts of various pages
from its web sites, which show these drinks, are provided with the
Complaint. These drinks, branded under
the marks VAMPIRE, VAMP or VAMPE, now include, as best as can be determined from
the record, vodka, a vodka‑based liquor (called "buss bomb"),
beer and tea.
C. Interactions between the parties
During
early to mid 2004, the parties apparently negotiated with each other about
forming a business venture through which, as indicated by the e‑mail
correspondence delineated above, a series of nightclubs called
"VAMPES" was to be jointly opened across London, New York and Paris
by the parties and feature Complainant's products and Respondent's models. Though Respondent apparently proposed this venture,
Complainant refused Respondent's proposal and terminated the negotiations.
During
this time, and as best understood by the Panel—though the record on this matter
is anything but clear—the parties apparently also discussed, or perhaps just
the Respondent proposed to Complainant, the concept of a broader business
relationship between them, possibly involving the use of the VAMPIRE marks by
one of the parties on certain products and/or services, and the use of the same
marks by the other party on other products and/or services, but no agreement
was reached and those discussions just collapsed.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The Panel finds that confusion is likely to arise as a
result of Respondent’s use of the disputed domain names.
Two of the disputed domain names <vampiredrinks.com> and <vampirevodka.com>, are formed by
appending a generic term, specifically “drinks” or "vodka," to
Complainant’s VAMPIRE mark, and then following the result with the generic top-level
domain (gTLD) ".com". The
third name, <vampyrevodka.com>, incorporates a phonetically
equivalent term, vampyre, to Complainant's mark VAMPIRE, followed by the
generic word "vodka" and the ".com" gTLD. The fourth name, <vampes.com>,
appears to be a plural form of Complainant's VAMP mark, followed again by the
gTLD ".com". The addition of
any gTLD is completely ignored in assessing identicality/similarity under
paragraph 4(a)(i) of the Policy.
Inasmuch as the modifications made to the
corresponding marks to form all of these names are rather minor, the Panel will
treat all these names collectively, i.e., all four names will either rise or
fall together.
It is now very well‑established in
UDRP precedent, including numerous decisions previously rendered by this Panel,
that minor variations, such as adding short letter or number groups or even
generic words to a mark, are insufficient in and of themselves, when used in
forming a domain name that results from modifying the mark, to confer requisite
and sufficient distinctiveness to that name to avoid user confusion. “Vodka" and "drinks" are
certainly such generic words. See,
e.g., The Cheesecake Factory Inc. v. Say Cheesecake, D2005‑0766 (WIPO Sept. 12, 2005); Napster, Inc. v. Vinscani, D2005‑0531 (WIPO July 19, 2005); Caesars Entm’t, Inc. v. Nova Internet Inc, D2005‑0411 (WIPO June 22, 2005); Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004‑0824 (WIPO Jan. 18, 2005); Lockheed Martin Corp. v. Teramani, D2004‑0836 (WIPO Dec. 1, 2004); Nat’l Collegiate Athletic Ass’n v. Brown, D2004‑0491 (WIPO Aug. 30, 2004). This result follows from a
simple comparison of the disputed domain names against Complainant’s marks.
Further, with respect to <vampyrevodka.com>, a change in
the spelling of the formative portion of the domain name from
"vampire" to its phonetic equivalent "vampyre" amounts to a
de minimus variation that simply fails to avoid causing user
confusion. See, e.g., Pfizer Inc., A Delaware Corp. v. Phizer's
Antiques, D2002‑0410 (WIPO July 3, 2002); Pfizer Inc., A Delaware Corp. v. RE THIS
DOMAIN FOR SALE ‑ EMAIL, D2002‑0409 (WIPO July 3, 2002). Adding the generic word "vodka" to
the phonetic equivalent term "vampyre" to yield the disputed domain
name <vampyrevodka.com> still
fails to impart distinctiveness to that name sufficient to dispel user
confusion. A similarly de minimus
variation results by modifying the mark "vamp", by the addition of
the letters "es", into the plural form "vampes".
User confusion, should it occur, would
undoubtedly cause Internet users intending to access Complainant’s web site,
but who were to reach Respondent’s site resolvable through any of the disputed
domain names, to think that an affiliation of some sort exists between
Complainant and Respondent or its third‑party transferee (to the extent
Respondent were to transfer any of the names), when, in fact, no such
relationship would exist at all. See
also, e.g., Cheesecake Factory,
Napster, Caesars Entm’t, Lockheed v. Skunkworx,
and Lockheed v. Teramani, supra; Register.com, Inc. v.
Reile, FA 208576 (Nat. Arb. Forum Jan. 27, 2004); Caesars World, Inc. v. Japan
Nippon, D2003‑0615 (WIPO
Sept. 30, 2003); Leiner Health
Servs. Corp. v. ESJ Nutritional Prods., FA 173362 (Nat. Arb. Forum Sept. 16, 2003); Am. Family Life Assurance Co. of Columbus v.
defaultdata.com, FA 123896
(Nat. Arb. Forum Oct. 14, 2002); AT&T
Corp. v. Abreu, D2002‑0605 (WIPO Sept. 11, 2002); L.F.P., Inc. v. B and J Props., FA 109697 (NAF May 30, 2002); Frampton v. Frampton Enters., Inc., D2002‑0141 (WIPO
Apr. 17, 2002); Spence‑Chapin
Servs. to Families and Children v. Wynman, FA 100492 (Nat. Arb. Forum Dec. 10, 2001);
Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum
July 6, 2001); MPL Commc’ns,
Ltd. v. 1WebAddress.com, FA 97092 (Nat. Arb. Forum June 4, 2001);
Am. Home Prods. Corp. v. Malgioglio, D2000‑1602 (WIPO
Feb. 19, 2001); Surface Prot. Indus.,
Inc. v. The Webposters, D2000‑1613
(WIPO Feb. 5, 2001); Dollar Fin.
Group, Inc. v. VQM NET, FA 96101 (Nat. Arb. Forum Jan. 25, 2001);
eBAY Inc. v. G L Liadis Computing, Ltd., D2000‑1463 (WIPO Jan. 10, 2001); Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000); Pep Boys Manny, Moe and Jack of CA v. E‑Commerce Today, Ltd.,
AF‑0145 (eResolution May 3, 2000).
Therefore, the Panel finds that each of
the disputed domain names sufficiently resembles Complainant’s VAMPIRE marks as
to cause confusion; hence, Complainant has shown sufficient similarity between
all the disputed domain names and Complainant’s marks under paragraph 4(a)(i)
of the Policy.
The Panel finds that Respondent has
rights and legitimate interests in all the disputed domain names and
specifically under paragraph 4(c)(i) of the Policy.
Proving similarity is not sufficient in
and of itself to establish a prima facie case under paragraph 4(a) of
the Policy. Apart from proving bad
faith use and registration under paragraph 4(a)(iii), Complainant must also
prove, under paragraph 4(a)(ii) and for each of the disputed domain names, that
Respondent lacks rights and legitimate interests in that name. Given that the underlying facts, e.g.,
salient documents and other evidence, are more often than not within the
exclusive control and possession of a respondent, an extremely heavy and
perhaps impossible burden may well be placed on a complainant if he is required
to provide detailed proof of illegitimacy on behalf of his respondent. Recognizing this and as a reasonable
alternative, numerous decisions, including by this Panel, have simply shifted
the burden of proof to the respondent, particularly as here where allegations
of bad faith have also been made, to adequately prove that its use of the name
is legitimate. In the absence of such a
showing, the panel may then infer that the respondent's use lacks legitimacy
and possibly evinces bad faith. See, e.g., in an analogous context of shifting
a burden to a respondent to show that no reasonable alternatives exist to it
for its use of a challenged domain name as an address of a complaint site, Spence‑Chapin; Meijer, both cited supra; Universal City
Studios, Inc. v. Burns, D2001‑0784 (WIPO Oct. 1,
2001). See generally Dollar Fin. Group, eBay Inc., v. G L Liadis Computing, Ltd., supra; Playboy Enters. Int’l,
Inc. v. Rodriguez, D2000‑1016 (WIPO Nov. 7, 2000); MSNBC Cable, LLC v. Tysys.com, D2000‑1204 (WIPO Dec. 8,
2000). Here, Respondent has met its
burden.
Complainant points to fact that
Respondent registered the disputed names after Complainant commenced use of its
marks in commerce. This is totally
unavailing. The operative time point
referenced in paragraph 4(c)(i) of the Policy is not the date on which a
complainant commenced use of its mark but rather the date on which a respondent
received notice of the dispute. In that
regard, paragraph 4(c)(i) states that a respondent can show it has rights or
legitimate interests in a domain name if "before any notice to you 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" (emphasis added).
While trademark rights for a federal
registration start accruing from the date the mark was first used in commerce
(whether, in the case of use‑based marks filed under section 1(a) of the
Lanham Act, the actual date of first use in commerce, or, in the case of intent
to file marks filed under section 1(b) of the Lanham Act, the constructive use
date, i.e., the filing date of the underlying trademark application), this date
precedes, sometimes significantly so, the date on which a respondent received
notice of a dispute involving that mark.
The Policy recognizes that a mark and an arguably identical/confusingly
similar domain name can concurrently exist throughout a relevant marketplace
and the Internet without the name constituting actionable cybersquatting of the
mark. It is only after a dispute arises
over use of the name by a respondent and, most importantly, the respondent continues
to use the name in spite of having received notice of the dispute that
actionable cybersquatting arises under the Policy and to which the Policy is
targeted and provides a remedy. The
respondent's actions in merely recognizing or even admitting that another party
owns a mark does not rise to the level of a dispute. To do so, the owner of the mark must take affirmative action to
inform the respondent of the owner's rights in the mark, must object to
continued use by the respondent of that mark and communicate such objection to
the respondent, i.e., put the respondent on "actual" notice of the
dispute. Obviously, what will
constitute affirmative action, sufficient communication and, generally
speaking, actual notice in any given situation is best left to a factual
determination on a case‑by‑case basis. See, e.g., CafePress.com v. Fragomele, FA 428848 (Nat.
Arb. Forum Apr. 27, 2005).
Therefore, the fact that Respondent
registered the disputed domain names in the 2003‑2004 timeframe which is
some 15 years after Complainant asserts he started using the VAMPIRE mark both
in intra‑state and inter‑state commerce (1988 and 1989,
respectively) is irrelevant.
Unfortunately, the record appears sorely remiss in clearly delineating
the date on which Complainant first voiced its objections to Respondent over
Respondent's continued use of the disputed domain names that incorporated
Complainant's VAMPIRE mark. However, as
a worst case (earliest) date, this Panel can safely assume, from the record
before it, that date to have been in early 2004 when the parties first began
direct negotiations with each other, negotiations that ultimately collapsed.
When viewed in the context of Respondent
having been notified as early as 2004 of the dispute, Respondent has provided
credible and convincing evidence, which Complainant has neither denied nor even
attempted to refute, showing that Respondent used the VAMPIRE mark in bona
fide sales of branded wines back as early as the 1980's and continued to do
so with respect to wine and other beverages.
Given this, it simply stands to reason that Respondent's use of the mark
commencing at such an early date and continuing to the present well predates
any notice he had of the dispute with Complainant and evinces Respondent's
rights and legitimate interests to all the disputed names, thus satisfying
Respondent's burden under paragraph 4(c)(i) of the Policy.
Accordingly, Respondent has met the
requirements of paragraph 4(c) of the Policy.
In light of the Panel’s finding that
Respondent has rights and legitimate interests in all the disputed domain
names, then all issues as to whether, under paragraph 4(a)(iii) of the Policy,
Respondent's actions amounted to bad faith use and registration of the names
are now moot and hence will not be considered any further.
DECISION
Consequently and in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by
Complainant is hereby DENIED.
Peter L. Michaelson, Esq., Panelist
Dated: October 6, 2005
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