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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
V&S Vin&Sprit AB v. Oliver Garcia
Case No. D2002-1081
1. The Parties
The Complainant is V&S Vin&Sprit AB of Stockholm, Sweden ("the Complainant").
The Respondent is Mr. Oliver Garcia of Barcelona, Spain ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <absolutsexo.com> ("the Domain Name").
The registrar is Core Internet Council of Registrars of Geneva, Switzerland ("the Registrar").
3. Procedural History
The Complaint was filed with the World Intellectual Property Organization, Arbitration and Mediation Center ("the Center") by e-mail on November 26, 2002, and by hard copy on November 27, 2002, ("the Complaint"). The Center acknowledged receipt of the Complaint on November 28, 2002.
On the same day, the Center sent to the Registrar a request for verification of registration data. On December 2, 2002, the Registrar confirmed being the registrar for <absolutsexo.com>. The Registrar further indicated Respondent’s address details as the registrant and administrative contact and "Hostmaster ProXad" as technical contact. On December 3, 2002, the Center received communications from the Respondent indicating that he would only understand French or Spanish, but not English. By e-mail of December 3, 2002, the Center drew the Respondent’s attention to the fact that pursuant to information received from the Registrar, the language of the registration agreement for the disputed Domain Name was English. Accordingly, as specified in Paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the language of the procedure and all communications with the Center should be in English.
On December 3, 2002, the Center verified that the Complaint satisfied Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied that this is the case.
On December 4, 2002, the Respondent was notified in accordance with Paragraph 2(a) of the Rules and the administrative proceedings commenced. The Center received an email communication from the Complainant on December 16, 2002, containing a communication from the courier service stating that although the address of the Respondent in Spain was correct when DHL tried to deliver the mailing, Respondent’s brother refused it, asserting that his brother Oliver no longer lived at this address. By e-mail of December 16, 2002, the Respondent rejected this allegation and indicated that he lived with his brother, but was on a journey in Japan when the DHL delivery was attempted. He mentioned that his brother would not be authorized to receive deliveries in his name. This last communication from Respondent was written in English although the Respondent previously asserted not to be able to correspond in this language. Since no formal response was received from the Respondent within the time limit set, the Center sent, on December 26, 2002, a Notification of Respondent Default to the Respondent.
On January 7, 2003, the Center informed the parties that Dr. Thomas Legler had been appointed as Sole Panelist ("the Panel") for the administrative procedure and that he had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel.
4. Factual Background
A. The Complainant
The Complainant is V&S Vin&Sprit AB, a Swedish joint stock company founded in 1917, that is active in the global alcohol market. Figures for the year 2000 show that the Complainant is one of the world’s largest players in this field in terms of sales’ volume. The Complainant distributes vodka under the trademark ABSOLUT in the United States since 1979, and in Sweden and other parts of Europe since 1980-1981. Pursuant to various documents submitted by the Complainant, ABSOLUT has been ranked in 2001, as the 93rd most valuable trademark asset in the world and the 3rd best selling trademark for premium spirits.
The Complainant also submits evidence (Annexes 3 and 7) showing that ABSOLUT is a trademark and a domain name registered in many countries.
The Complainant indicates that it contacted the Respondent as soon as it discovered the Domain Name. A first letter was sent by normal mail on April 9, 2002, and a second letter by courier service on April 15, 2002. Moreover, e-mails were sent on August 27, 2002, and September 10, 2002, (see Annex 8). The Respondent has not answered any of the letters or e-mails. Since they have not been returned to the Complainant, it seems that the Respondent has received them.
The trademark ABSOLUT was registered in Spain in 1986. The Domain Name however was only registered on January 23, 2001.
Little is known about the Respondent since it did not file any response for the administrative procedure. However, as it follows from some e-mail communications with the Center, the Respondent indicated its real name and address details when it registered the Domain Name. This coincides with Complainant’s indication that all its mailings have been received by the Respondent. As Respondent’s website under the Domain Name shows (Annex 10), the Respondent must be active in the field of web-based pornographic offerings.
5. Parties’ Contentions
The Complainant indicates that the dominant part of the Domain Name contains the word "absolut" which is identical to the registered trademark of the Complainant. It asserts that the addition of the suffix "sexo" does not have any impact on the overall impression of the dominant portion of the name, which is "absolut". Accordingly, the Domain Name is, pursuant to the Complainant, confusingly similar to the Complainant’s trademark.
The Complainant adds that there is a considerable risk that the common public would perceive the Respondent’s Domain Name either, as a domain name owned by the Complainant or that there would be some kind of commercial relationship with the Complainant. The Complainant also fears that its trademark will be tarnished and the goodwill and the image of its trademark diluted if the Respondent continues to run its website under this Domain Name.
The Complainant also refers to V&S Vin&Sprit AB v. Canal Prod. Ltd., WIPO Case No. D2002-0437 (July 30, 2002), where the Panel found that the Domain Names <absolut-sexe.com>, <absolut-sexo.com> and <absolut-x.com> were considered to be confusingly similar with the Complainant’s trademark.
Regarding the Respondent, the Complainant indicates that it has found no listed company in Spain under the name "absolutsexo" nor any registered trademarks corresponding to the Domain Name. It asserts that there is no connection or cooperation between the Complainant and the Respondent and no license has been given to the Respondent to use its corporate trademark.
The Complainant alleges that the word "absolut" has no meaning in Spanish and that it is difficult to logically understand why the Respondent chose the Domain Name <absolutsexo.com>. Furthermore, it is very unlikely that the Respondent was not aware of the trademark ABSOLUT when it registered the Domain Name, since the awareness of ABSOLUT is very high in Spain (Annex 9). The Complainant fears that the combination of the non English word "absolut" together with the word "sexo" gives the impression that there exists some kind of connection between the trademark ABSOLUT owned by the Complainant and the owner of the Domain Name. With a reference to Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079 (April 20, 2000), the Complainant asserts that the Respondent cannot be considered to be making a non-commercial or fair use of the Domain Name "since the only reason to use the trademark as a domain name or a meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark."
The Complainant sees bad faith in Respondent’s act in the following facts:
- the Respondent registered a domain name containing a famous trademark (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No: D2001-1384 (January 3, 2002)),
- the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant’s famous mark as to the source, sponsorship, affiliation of a product or a service on the website (Paragraph 4(b)(iv) of the Policy and National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a, Chargersgirls.net, WIPO Case No. D2000-0118 (April 17, 2000)),
- there is evidence of bad faith when a site is pornographic in nature (among others, Nokia Corporation v. Nokia girls.com a.k.a IBCC, WIPO Case No. D2000-0102 (April 18, 2000)),
- the use of the name "absolut" as a part of a domain name, offering pornographic products and services tarnishes Complainant’s mark,
- the Respondent has failed to respond to the Complainant’s letters, (see, among others, Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468 (July 27, 2000)).
The Complainant therefore requests the Administrative Panel to issue a decision that the Domain Name shall be transferred to the Complainant.
B . Respondent
As indicated above, the Respondent did not file any Response since, according to its e-mail communications to the Center, it is not able to express itself in English, which is the language of the procedure.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and;
(iii) the domain name has been registered and is being used in bad faith.
A. Identity or confusing similarity with a mark in which the Complainant has rights.
Based on the documents submitted by the Complainant (Annex 3), the trademark ABSOLUT has been registered in many countries, in particular in class 33. As it follows from the evidence submitted by the Complainant, the Panel accepts that the trademark ABSOLUT has to be considered as a well-known trademark.
The strong element within the Domain Name is of course not the common term "sexo" which is the Spanish expression for "sex", but the the term "absolut" which is – written without an "e" at the end - unknown to the English or Spanish language. The similarity test has therefore to concentrate on this element.
The Panel found that "absolut" is in fact a common term of the Swedish language meaning "absolute" or "absolutely". Consequently, the use of the Swedish expression "absolut" together with the Spanish term for sex, is a very unusual combination. Put into the context that "Absolut" is a well-known trademark, the Panel concludes that there is a sufficiently high risk that people, looking at the Domain Name, will recognize Complainant’s mark, although there is no hyphen between "absolut" and "sexo" as it was the case in V&S Vin&Sprit AB v. Canal Prod. Ltd., WIPO Case No. D2002-0437 (July 30, 2002).
Hence, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.
A. Legitimate rights or interests in respect of the Domain Name.
Pursuant to Paragraph 4(c) of the Policy, any of the following circumstances may demonstrate the Respondent’s rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii):
(i) before any notice of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for a commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under the given circumstances, the Panel has to verify whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services in the sense of Paragraph 4(c)(i) of the Policy.
Contrary to Complainant’s opinion, running an adult sex site is in itself perfectly legal (although it may be seen, by some people, as morally questionable) and may therefore constitute a bona fide offering of goods or services (see Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079 (April 20, 2000). However, in the present case, the Respondent uses a well-known trademark as part of its Domain Name. Such use cannot be considered as bona fide.
Moreover, the Respondent did not file a Response and the Panel has therefore no indication of Respondent’s intentions when choosing and registering the Domain Name. It would have been interesting to know, for instance, why Respondent (being a Spanish citizen) registered the Domain Name using the Swedish term "absolut" instead of the corresponding Spanish expression "absoluto". Indeed, the latter expression would have made more sense in view of the second part of the Domain Name which is the Spanish term for "sex".
Regarding Paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondent’s name is "Garcia" and that he can therefore not be "commonly known by the Domain Name". Moreover, the Respondent did not submit any evidence that he is the owner of a company having the Domain Name as its corporate name and that it is commonly known by such name.
Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of Paragraph 4(c) of the Policy.
C. Registration and use in bad faith.
The Panel first holds that there are no circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its out of pocket costs (Paragraph 4(b)(i) of the Policy).
However, the fact that the trademark ABSOLUT is famous and that Respondent was probably aware of this (since this product is also well distributed in Spain) or should have noticed this fact if he would have carried out a trademark search, is an element indicating bad faith.
The Panel has also the impression that Respondent tries to profit from the well-known character of ABSOLUT to attract, for commercial gain, Internet users to its website insofar as he counts on the fact that people may be curious to know what "ABSOLUT" has to do with sex (National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a, Chargersgirls.net, WIPO Case No. D2000-0118 (April 17, 2000); Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079 (April 20, 2000); Nokia Corporation v. Nokia girls.com a.k.a IBCC, WIPO Case No. D2000-0102 (April 18, 2000)). This risk is in the Panel’s view sufficiently high to admit a likelihood of confusion in the sense of Paragraph 4(b)(iv) of the Policy. Moreover, linking the Domain Name to a pornographic site tarnishes Complainant’s well-known mark.
The Panel finally adds that the facts that Respondent did not react to Complainant’s communications and did not file a Response comfort the Panel in its finding of bad faith. Indeed, a domain name registrant of good faith would have defended itself and explained to the Panel why he has chosen this Domain Name. In this regard, the Panel notes that the Respondent first insisted – contrary to his contractual agreement – that the language of the procedure should be French or Spanish and then ended up not replying – except for an e-mail communication in English.
In the light of the foregoing, the Panel concludes and decides that the Domain Name <absolutsexo.com> shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: February 4, 2003