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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
V&S Vin&Sprit AhB v. Giovanni Pastore
Case No. D2002-0926
1. The Parties
The Complainant is V&S Vin&Sprit AB, 117 97 Stockholm, Sweden.
The Respondent is Giovanni Pastore, Roma, RM 06100, Italy.
2. The Domain Names and Registrar
The disputed domain names are :
The domain names are registered with Network Solutions, Inc., Virginia, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2002. On October 7, 2002, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On October 9, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2002. The Response was filed with the Center on November 7, 2002.
The Center appointed Francois Dessemontet as the sole panelist in this matter on November 15, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background and Parties’ Contentions
A. The Trademark
Complainant owns many "absolut" trademarks registered around the world. Amongst those are:
- Italian trademark reg. N. 88 037362 "absolut"
- United States trademark reg. N. 002326 "absolut"
as well as approximately 2200 other marks comprising the word "absolut" in those countries as well as in most other countries of the world.
B. The Complaint
In its complaint the Complainant alleges that the disputed domain names are confusingly similar to its trademarks. Further, the Complainant alleges that the Respondent has no right or legitimate interest in the domain names as he has no trademark right to the name "absolut" and as there is no connection or co-operation between the parties. According to the Complainant, the Respondent cannot be considered to be making a non-commercial or fair use of the domain names without intention to mislead and divert consumers for commercial gain or to tarnish the "absolut" trademark.
C. The Response
In his response the Respondent alleges that his domain names are different from the trademark "absolut", that the word "absolut" is a generic word and that this trademark has been registered only for certain limited services. The Respondent alleges that he has legitimate interests in the domain names as he is using them for a bona fide offering of goods and services. Further, the Respondent alleges that there was no bad faith neither at the time of registration nor in the current use of the domain names.
5. Discussion and Findings
Pursuant to the ICANN Policy, Complainant must convince the Panel on the following three criteria:
I. the domain name is identical or confusingly similar to a trademark in which it holds rights;
II. Respondent has no right or legitimate interests in the domain name;
III. the domain name was registered and used in bad faith.
I. Identical or Confusingly Similar Domain Name
The domain names contain the word "absolut", which is identical to the Complainant’s well-known trademark. The words "porno-star", "sesso imagini" and "video-hard" are not distinguishing features.
Almost any addition to a well know trademark is powerless to prevent a connotation with the rightful owner of the trademark. For instance, in WIPO Case No. D2002-0437, the panel found that the additions "-sexe", "-sexo" and "-x" to the second level domain name "absolute" and "absolut" lacked distinctiveness and were not sufficient to give the domain names an individual meaning.
The additions of sexual words in English or in Italian do nothing to deflect the impact on the viewer of the well-known trademark "absolut".
II. Legitimate Interests
The Respondent alleges that the word "absolut" is a generic word, as it is the translation in different languages of the English word "absolute".Further, the Respondent alleges that the Complainant only registered the trademark "absolut" for certain limited services.
The fact that "absolut" is a generic word in many languages does not deter its potency to individualize certain products or services as a trademark in view of its secondary meaning acquired over more than two decades of intensive use and advertising. According to some economic magazines "absolut" is today ranked 3rd best selling trademark for premium distilled spirit brands and 93rd of the top 100 trademark assets in the world. It has also been confirmed by a WIPO panel decision that the trademark "absolut" was well known (see WIPO Case No. D2002-0437).
The trademark "absolut" is well known throughout the world, at least wherever people drink spirits. It is therefore protected against all and any dilution as such trademarks are granted a general scope of protection.
The Respondent does not have any license to use the "absolut" trademark, nor is he a representative of the Complainant.
The Respondent hosts adult sex sites on the disputed domain names. This activity seems not to be illegal and it may constitute a bona fide offering of goods or services. However, the use of the Complainant’s trademark in those domain names is clearly not a bona fide use of the domain name. The use of somebody else’s trademark in a domain name attracts Internet users looking for information, products or services associated with the trademark. Even if a visitor will soon realize that he is not visiting an official website of the rightful trademark owner, the Respondent will already have diverted the visitor attention to his own activities. Such behaviour cannot be considered bona fide offering of goods or services. It creates the confusion or leads to the dilution of a trademark.
III. Bad Faith Registration and Use
At the time he registered the domain names, the Respondent could not in good faith ignore the existence of the Complainant’s trademark.
Circumstances indicating that the Respondent has registered or 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, for valuable consideration in excess of documented out-of-pocket costs, lead to a finding of bad faith.
In the present case, the Respondent offered to sell the disputed domain names to the Complainant for 240’000.- Euro. However, the Respondent first offered to sell the disputed domain names to the Complainant only after the Complainant contacted him. Therefore there can be no finding that the domain names were primarily registered for the purpose of selling them.
The Panel still finds that the price at which the domain names were offered by the Respondent is very much in excess of the out-of-pocket costs for those sites. The Respondent claims that those sites represent for him an income of 10’000.- Euro per month. This certainly represent a great amount of traffic, some of which may come from diverted Internet users. Search engines will also divert traffic aiming at the rightful owner of the "absolut" trademark to the sites of the Respondent.
Use of a domain name in order to attempt to attract, for commercial gain, Internet users to the corresponding web site or other on-line location, by creating a likelihood of confusion with the complainant's trademark is a sign of bad faith. In the present case there is no doubt that some of the Internet traffic directed to the Complainant is being diverted to the websites of the Respondent. Further, there is a great risk of dilution of the Complainant’s trademark.
In the light of the foregoing, the Panel decides that the domain names registered by the Respondent are identical to the corresponding trademark of the Complainant, that the Respondent has no rights to or legitimate interests in respect of those domain names and that the domain names in issue have been registered and are being used in bad faith by the Respondent.
Accordingly the Panel requires that the registration of the domain names <absolut-porno-star.com>, <absolut-sesso-imagini.com> and <absolut-video-hard.com> be transferred to the Complainant.
Dated : December 3, 2002