Miller Products Company v. Marc Grozinger
Claim Number: FA0610000823231
PARTIES
Complainant is Miller Products Company (“Complainant”), represented by David R. Cross and Lars E. Gulbrandsen, of Quarles & Brady LLP, 411 East Wisconsin Avenue, Suite 2040, Milwaukee, WI 53202. Respondent is Marc Grozinger (“Respondent”), 8442 Boothbay Circle, Huntington Beach, CA 92646.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldeenglish800.com>,
registered with Bulkregister, LLC.
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 18, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 20, 2006.
On October 23, 2006, Bulkregister, LLC confirmed by e-mail to the
National Arbitration Forum that the <oldeenglish800.com>
domain name is registered with Bulkregister, LLC and that the Respondent is the
current registrant of the name. Bulkregister,
LLC has verified that Respondent is bound by the Bulkregister, 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 October 27, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 16, 2006 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@oldeenglish800.com by
e-mail.
A timely Response was received and determined to be complete on November
15, 2006.
Complainant submitted an Additional Submission to the National
Arbitration Forum that was received on November 20, and this Additional
Submission was timely.
On or about November 21, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant Asserts
Complainant is a corporation organized under the laws of the State of
Wisconsin and is a wholly owned subsidiary of Miller Brewing Company, which is
also organized under the laws of the State of Wisconsin. Complainant is the owner of all the
intellectual property rights, including trademark rights, for the Miller
Brewing Company brands of beverages.
The Miller Brewing Company owns a number of brands of malted beverages,
including Olde English 800.
Additionally, Complainant is the owner of U.S. Trademark Registration
Number 1,883,844, for the trademark OLDE ENGLISH 800, which was registered on
March 14, 1995. The Olde English 800
brand is extremely well known in the general public, and the Miller Brewing
Company spends significant sums of money advertising its products in the United
States and throughout the World.
Respondent registered the <oldeenglish800.com>
domain name on February 13, 1999, which domain name is identical or confusingly
similar to Complainant’s registered trademark, except for the gTLD, which is
irrelevant for purposes of a Policy analysis.
At the time Respondent registered the <oldeenglish800.com> domain name, Respondnet was on
constructive notice of Complainant’s trademark registration for OLDE ENGLISH
800.
At the time the Complaint was filed herein, Respondent had actual knowledge
of Complainant’s right to the OLDE ENGLISH 800 mark by virtue of correspondence
sent to Respondent by counsel for Complainant.
Respondent is not commonly known by the expression OLDE ENGLISH 800 or <oldeenglish800.com>.
The <oldeenglish800.com>
domain name resolves to a website which states: “Coming Soon Olde English 800
Merchandise.”
This use of the domain name creates a likelihood of confusion with
Complainant’s OLDE ENGLISH 800 mark and is an effort to attract Internet users
to Respondent’s website for commercial gain.
Respondent’s registration and use of the <oldeenglish800.com> domain name satisfies the requirements
of ICANN Policy 4(a)(i), fails to satisfy the requirements of ICANN Policy
4(a)(ii) and satisfies the requirements of ICANN Policy 4(a)(iii), justifying
transfer of the <oldeenglish800.com>
domain name to Complainant.
B. Respondent Asserts
It was Respondent’s belief that the brand Olde English 800 was
manufactured by a number of breweries throughout the USA and the <oldeenglish800.com> domain name
was available due to the negative connotations the brand carries. It was not Respondent’s intention to use the
<oldeenglish800.com> domain
name to imply an agency relationship with Complainant. It was Respondent’s intention to establish
an online store that would purchase goods from an authorized Miller Products
Company distributor, Brew City Bear Gear, and sell such goods on the
website. Respondent has not been able
to create a functioning website to accomplish this goal due to personal
reasons.
Respondent would have been willing to negotiate to resolve the matter
if he had been contacted. Respondent
remains willing to transfer the <oldeenglish800.com>
to Complainant in hopes that Complainant would do the brand justice and establishes
an online marketplace. Respondent seeks
reimbursement of expenses incurred in connection with the <oldeenglish800.com> website, including registration,
maintenance of the site, domain hosting, software, software instruction and
time and material for keeping the site on the internet, all in the amount of
$10,500.00.
C. Additional Submissions – Complainant Asserts
Respondent’s lack of knowledge about Complainant’s trademark
registration makes no difference to Complainant’s trademark rights.
Respondent has submitted no proof of any demonstrable preparation for a
legitimate business.
Respondent’s explanation that he spoke with someone who is authorized
to distribute Miller products lacks any documentation. Moreover, even if Respondent himself had
rights to sell products displaying the OLDE ENGLISH 800 trademark, this would
not give him the right to use Complainant’s identical trademark for a domain
name.
Respondent’s offer to transfer the domain name for $10,500 is further
proof of bad faith because it is a demand for compensation in excess of the
documented out-of-pocket costs incurred by Respondent in connection with the
domain name.
FINDINGS
Complainant is the owner of U.S. Trademark Registration Number
1,883,844 for the trademark OLDE ENGLISH 800.
An examination of the USPTO TESS printout provided by Claimant as an
exhibit to its Complaint shows that the trademark application for this mark was
filed on January 14, 1994, the registration issued on March 14, 1995, and the
registration asserts a date for first use of 1966 and a date of first use in
commerce of 1967.
The Olde English 800 brand is extremely well-known in the general
public, and the Miller Brewing Company spends significant sums of money
advertising its products in the United States and throughout the World.
Respondent registered the <oldeenglish800.com>
domain name on February 13, 1999, which was four years after Complainant’s
trademark registration and many years after the date of first use of the mark
in commerce.
At the time Respondent registered the <oldeenglish800.com> domain name, Respondent was on
constructive notice of Complainat’s trademark registration for OLDE ENGLISH
800.
Respondent is not commonly known by the expression OLDE ENGLISH 800 or <oldeenglish800.com>;
Respondent’s name is Marc Ewald Grozinger.
The <oldeenglish800.com>
domain name resolves to a website which states: “Coming Soon Olde English 800
Merchandise.” This website has no other
functionality, and Respondent has made no other use of the domain name.
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 two threshold questions for an ICANN
Policy analysis are whether the Complainant has rights in a trademark and
whether the domain name registered by the Respondent is identical or
confusingly similar thereto.
Rights in a trademark can be shown in several
ways, including by way of a U.S. trademark registration. A trademark registration constitutes prima
facie evidence of its ownership and validity of the mark. See Janus
International Holding Co. v. Rademacher, D2002-0201 (WIPO March 5, 2002) (“Complainant’s trademark registrations
serve as prima facie evidence of its ownership and validity of the Janus
mark.”).
Here, Complainant’s U.S. trademark
registration establishes its ownership of the trademark OLDE ENGLISH 800 and
the validity thereof.
Whether a domain name is identical or
confusingly similar to a trademark is a matter of comparison of the two, while
giving due regard to the unique environment of the Internet where users use
alpha-numeric sequences to reach desired sites. The comparison, then, is at the level of the alpha-numeric
sequences that make up the trademark, on the one hand, and the domain name, on
the other. For purposes of making this
comparison, the absence of spaces and the inclusion of top-level domain names
are irrelevant. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
April 22, 2000) (“[E]limination of the space between the words “fitness” and
“warehouse” to form that name, are differences without legal significance from
the standpoint of comparing “efitnesswarehouse.com” to “FITNESS
WAREHOUSE.” …Similarly, the addition of
the generic top-level domain name (gTLD) “.com” is likewise without legal
significant since use of a gTLD is required of domain name registrant, “.com”
is one of only several such gTLDs, and “com” does not serve to identify a
specific service provider as a source of goods or services.”).
Here, the trademark is OLDE ENGLISH 800 and
the domain name is <oldeenglish800.com>. Removing the irrelevant material from
the domain name results in “olde english 800,” which is in fact identical to
Complainant’s tradmeark.
Complainant does have a trademark in which it
has rights and Respondent’s domain name is identical thereto.
ICANN Policy Section 4(a)(ii) creates
potential safe harbors for a respondent, as is further specified in ICANN
Policy Section 4(c). These safe harbors
are characterized by a respondent having rights or legitimate interests in the
challenged domain name.
Three specific examples are given in ICANN
Policy Section 4(c) of ways in which a respondent may have rights or legitimate
interests in a domain name, although these three examples are not exclusive or
exhaustive. These three specified
circumstances which, if found by the Panel to be proved, shall demonstrate a
respondent’s rights or legitimate interests, and they are:
(i)
before any
notice to respondent of the dispute, respondent’s 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)
respondent has
been commonly known by the domain name, even if respondent has acquired no
trademark or service mark rights; or
(iii)
respondent is
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.
The burden is on a claimant to raise an
objection to a respondent’s rights or legitimate interests, and then the burden
shifts to the respondent to show that it does have rights or legitimate
interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, Oct.
1, 2002) (holding that where the complainant has asserted that the respondent
does not have 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”).
Here, Claimant has carried its burden by
asserting that Respondent lacks rights or legitimate interests in the <oldeenglish800.com> domain
name. It is then incumbent on Respondent to come forward with concrete
evidence rebutting this assertion.
Respondent has not shown that it has been
commonly known by the domain name.
Respondent’s name is Marc Eqald Grozinger.
Respondent has not shown that he is making a
legitimate noncommercial or fair use of the domain name. Respondent is not actually using the domain
name at all. Respondent is merely
holding the domain name. However,
Respondent asserts that his intention is to use the domain name at some point
in the future to sell products, and this Panel finds that this intention is
inconsistent with a noncommercial or fair use of the domain name.
For purposes of the last of the specified
safe harbors, ICANN Policy Section 4(c)(iii), a bona fide use must be
more than merely obtaining a domain name and holding it. See
Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO April 22, 2000)
(“If mere registration of the domain name was sufficient to establish rights or
legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then
all registrants would have such rights or interests, and no complainant could
succeed on a claim of abusive registration.
Construing the Policy so as to avoid an illogical result, the Panel
concludes that mere registration does not establish rights to legitimate
interests in a domain name so as to avoid the application of paragraph 4(a(ii)
of the Policy.”). At the same time, a
respondent is not required to be actually using a domain name in order to
establish a bona fide use, but in order to establish a bona fide
use under this condition the respondent must show “…demonstrable preparations
to use.”
Here, Respondent is merely holding the <oldeenglish800.com> domain
name. The domain name resolves to a
website that says, “Coming Soon, OLDE ENGLISH 800 Merchandise,” and this
website has no other functionality.
Respondent does assert his intention to use the domain name to sell
goods in the future, but more than mere intention is needed to satisfy the
requirement to “…demonstrate preparations to use.”
Respondent has not maintained his burden to
show that he has rights or legitimate interests to the domain name under ICANN
Policy Section 4(c), and as such, Complainant has established that Respondent
does not have rights or legitimate interests in the <oldeenglish800.com> domain name.
Policy section 4(b) provides guidance to
administrative panels about what types of conduct, without limitation, shall be
evidence of bad faith under Policy section 4(a)(iii). These enumerated types of conduct are:
(i)
circumstances
indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of the complainant for
valuable consideration in excess of
your documented out-of-pocket costs directly related to the domain names; or
(ii)
you have
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 you have
engaged in a pattern of such
conduct; or
(iii)
you have
registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv)
by using the
domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a
likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your
website or location.
The classic cyber-squatting situation arises
when a respondent registers a domain name and then attempts to sell it back to
the owner of a related and pre-existing trademark. A hallmark of this type of bad faith conduct is a lack of use
after registration. See Mattel, Inc. v. Jozef 4th, FA 91542
(Nat. Arb. Forum July 15, 2005) (“The panel finds that Respondent’s passive
holding of the <Barbie.org> domain name for a period of more than two
years constitutes bad faith registration and use under Policy ¶
4(a)(ii).”).
Additionally, loss of rights to use a domain
name as the result of nonuse is consistent with the general trademark concept
that a trademark holder must use a mark or lose it. Such concept is found in, among other places, the requirement of
U.S. trademark law for a Section 8 affidavit of continued use, which is
required to be filed during the fifth and sixth years after the anniversary of
the date of registration. See 15 U.S.C. § 1058 and 37 C.F.R. § 2.160 (reference to such a principle of law is allowed by ICANN Rules,
15(a): “A Panel shall decide a complaint on the basis of the statements and
documents submitted an in accordance with the Policy, these Rules and any rules and principles of law
that it seems applicable.” Emphasis
added.)
Here, Respondent has not used the <oldeenglish800.com> domain name
for approximately seven years, from its registration on February 13, 1999 until
this challenge was raised by Claimant.
Such a period of non-use is not inconsistent with a finding of bad faith
and is entirely consistent with a loss for reason of overly long nonuse.
Another hallmark of cyber-squatting is a
demand by the domain name holder for payment in excess of out-of-pocket
expenses incurred in connection with the domain name, as is specified in ICANN
Policy 4(b)(i). See Caterpillar Inc. v. Roam the Planet, Ltd., D2000-0275 (WIPO May
26, 2000) (“The Respondent’s written offer to the Complainant, after the filing
of the Complaint, to sell the domain name to the Complainant for $9,000 is
further indication that the domain name was registered primarily for the
purpose of selling it for a consideration in excess of the documented
out-of-pocket costs; no evidence was produced by Respondent to establish that
the actual cost of registration and maintenance of the domain name could
approach $9,000.”); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30,
2003) (“Respondent’s general offer of the disputed domain name registration for
sale established that the domain name was registered in bad faith under Policy
¶ 4(b)(i).”).
Complainant points out in its Additional
Submission that Respondent has made such a demand, and this demand is found in
Respondent’s Response where he offers to transfer the domain name in exchange
for $10,500.
However, this Administrative Panel disagrees
that such an offer necessarily makes out bad faith. Rather, a distinction must be drawn between an extortive,
before-the-fact demand for payment, the prevention of which is one of the
reasons for the existence of the ICANN Policy, from a responsive,
after-the-fact attempt to engage in legitimate settlement negotiations. The inference of bad faith arising from the
later would be a deterrent to settlement discussions. This is especially true in an instance such as this one, where a
respondent may have accumulated costs over several years, thus incurring an
unexpectedly high amount, and where a respondent may take an expansive view of
the words “…directly related to the domain names…” found in ICANN Policy ¶
4(b)(i). For this reason, this
Administrative Panel declines to find bad faith on these particular facts.
With respect to ICANN Policy ¶ 4(b)(ii), no
evidence has been presented suggesting that Respondent has “…engaged in a
pattern…” of registering domain names “…in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name…”
With respect to ICANN Policy ¶ 4(b)(iii), no
evidence has been presented suggesting that Respondent has “…registered the
domain name primarily for the purpose of disrupting the business…” of Complainant.
For purposes of ICANN Policy ¶ 4(b)(iv), an
Administrative Panel may find bad faith conduct on the part of a respondent
where the respondent has intentionally created a likelihood of confusion as to
the source, sponsorship, affiliation, or endorsement of the respondent as to the
respondent’s website and where the respondent’s website is created for the
purpose of commercial gain. Such a
likelihood of confusion can be created by merely using a domain name that is
identical to the complainant’s mark without authorization. See
Fanuc Ltd. v. Mar. Control Servs., FA 93667 (Nat. Arb. Forum March 13,
2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by
creating a likelihood of confusion with the complainant's mark by using a
domain name identical to the complainant’s mark to sell the complainant’s
products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the responded
acted in bad faith by registering the <fossilwatch.com> domain name and
using it to sell various watch brands were the respondent was not authorized to
sell the complainant’s goods.”). The
requisite intention can be found were the respondent knew or should have known
about the claimant’s trademark rights. See Mattel, Inc., v. Jozef 4th, FA 91542
(Nat. Arb. Forum July 15, 2005) (“Complainant’s rights in the BARBIE mark due
to Complainant’s registration of the mark with the USPTO. The Panel concludes that Respondent’s
registration is evidence of bad faith registration and use under Policy
¶4(a)(iii).”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (holding that “there is a legal presumption of bad faith, when respondent
reasonably should have been aware of complainant’s trademark, actually or
constructively”).
Here, Complainant’s OLDE ENGLISH 800
trademark was a registered U.S. trademark at the time Respondent registered its
<oldeenglish800.com> domain
name, and thereby Respondent had constructive knowledge of Complainat’s
trademark rights, establishing the requisite intention on Respondent’s
part.
Respondent’s use of a domain name that is
identical to Complainant’s domain name coupled with Respondent’s lack of
authority from Complainant establishes the necessary likelihood of
confusion.
Respondent did register its <oldeenglish800.com> domain name
for the purpose of commerical gain, even though that intention has been
delayed.
As such, Complainant has shown Respondent’s
bad faith pursuant to ICANN Policy ¶ 4(b)(iv).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldeenglish800.com>
domain name be TRANSFERRED.
Kendall C. Reed, Panelist
Dated: December 5, 2006
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