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Arbitration and Mediation Center
Asia Pacific Breweries Limited v. Chris Kwan
Case No. D2003-0920
1. The Parties
The Complainant is Asia Pacific Breweries Limited, of Singapore, represented by Wong & Partners, Malaysia.
The Respondent is "Nil", represented by Chris Kwan, of Malaysia.
2. The Domain Name and Registrar
The disputed domain name <anchorbeer.com> ("the domain name") is registered with Tucows Inc. ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2003. On November 19, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On November 25, 2003, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 28, 2003. The Center verified that the Complaint together with the amendment to 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 proceeding commenced on December 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2003. The Response was filed with the Center on December 21, 2003.
The Center appointed Warwick Smith as the sole panelist in this matter, on January 5, 2004. 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
The Complainant is a brewing company based in Singapore. Its history extends back to 1931, when Malayan Breweries, a joint venture between Fraser & Neave Limited and Heineken N.V. of Holland, was established. The original brewery opened shortly thereafter, and commenced brewing the now-famous Tiger beer shortly thereafter. Malayan Breweries acquired a second brewery, the Archipelago Brewing Company ("Archipelago") in 1941, and added a second brand, Anchor Beer, to its product range. Over the years since then, the complainant has expanded its operations. There were 5 breweries in the 3 countries in the early 1990s, and by late 2003, the Complainant was operating 14 breweries in 8 countries in the Asia/Pacific rim regions (including Singapore and Malaysia).
The Complainant’s 2002 Annual Report appears to show that the Complainant’s two flagship beers are Tiger and Heineken, but it also brews and markets a number of other beers. The report shows that the Complainant’s Anchor beer is brewed in Singapore, Malaysia, Cambodia and China, and is exported to a total of 13 countries. The Complainant’s Anchor beers have won a number of international awards, including various gold and silver medals in competitions dating back to the late 1970s.
In Malaysia, Anchor Beer is marketed by Guinness Anchor Berhad ("GAB"), a corporation in which the Complainant has a 25.5% equity stake. GAB is the sole and exclusive licensee of the Complainant’s trademarks for its Anchor and Tiger brands in Malaysia.
The Complainant has produced examples of some promotional materials it has used to market its Anchor beer brands over the years, including a poster for its Anchor Pilsener beer bearing the words "quality brewed for Malaysia since 1933". The poster features the word "Anchor" very prominently, immediately below a small shield device featuring two crossed anchors. Generally, the documents the Complainant has produced demonstrate that its Anchor beer enjoys a substantial reputation in a number of Asian countries (including particularly Malaysia and Singapore), and that that reputation was established well before April 1999 when the domain name was registered.
The Complainant’s Trademarks
The Complainant has produced a 66 page print-out of a trademark status report dated November 2, 2001, relating to its Anchor beer trademarks. There are a number of registered marks incorporating the word "Anchor", most featuring the word in combination with a device of some sort. However, it appears that the word mark ANCHOR is registered in class 32 for "Beer and Stout", in Brunei, Malaya, Sabah, Sarawak, and Singapore.
There are a number of devices used in the various registered "Anchor" trademarks, including label devices and bottle neck devices, often incorporating the small shield with the two crossed anchors, and always prominently featuring the word "Anchor". Several of these (device) marks feature the two words "Anchor Beer" (e.g. a bottle neck device mark registered in Sabah and in Malaya, in class 32, for "Beer").
The various "Anchor" trademarks are shown variously in the status report as being owned either by the Complainant or its subsidiary Archipelago (which, according to the Complainant’s 2002 Annual Report, is not a trading entity).
The Complainant has produced trademark registration certificates for various "Anchor" trademarks in Malaysia, including some specific registrations in the Malaysian State of Sabah (being the apparent domicile of the Respondent according to the Whois search conducted by the Complainant). It is not necessary to refer to all of these marks, but it appears sufficiently from what has been produced that the ownership in Malaysia of the word mark ANCHOR in class 32, was assigned to the Complainant on June 29, 1996. The word mark ANCHOR DRAUGHT, registered in class 32 for beer and stout in October 1977, was assigned to the Complainant on June 29, 1996. A device mark, prominently featuring the word "Anchor" above the crossed-anchors shield device and the words "EXTRA STRONG BEER", was registered by Archipelago in December 1978 and assigned to the Complainant on June 29, 1996.
Overall, either the Complainant or Archipelago has procured trademark registration for marks prominently incorporating the words "Anchor", in numerous countries around the world, including European countries such as France and the United Kingdom.
The Complainant’s Domains and Websites
The Complainant has not offered any evidence of websites operated by it. However, it appears from the response that the Complainant owns a number of "Tigerbeer" domains, and has websites "under construction" at <anchorbeer.com.sg> and <anchorbeer.com.my>. Again according to the response, the Complainant has not availed itself of the <anchorbeer.biz> domain, nor the corresponding .info domain.
The Respondent in its response says that the Complainant’s registration of the domain <anchorbeer.com.sg> predated the Respondent’s registration of the domain name.
The Respondent and the Domain Name
The Respondent "Nil" is not a person or other legal entity – the domain name is owned by the person named by the Registrar as the administrative contact, namely Mr. Chris Kwan of Sandakan, Sabah, Malaysia. The person named as the technical contact for the domain name, Kwan Khai Hee, appears to be the same person as Chris Kwan, although Kwan Khai Hee’s address provided by the Registrar is an address in New South Wales, Australia.
The Complainant says that Mr. Kwan is a Malaysian citizen. He was an Internet strategist, a former lecturer at the University of Malaya, a former Investment Banker, and the founding chairman of the Malaysian Internet Society chapter. It appears that Mr. Kwan is also a director (and the sole shareholder) of an Australian-registered corporation called Ecorp.Nu Pty Limited ("Ecorp"). Ecorp is an Internet project management company dealing in software, Internet advertising, and e-commerce strategies.
According to a page from the website at "www.barcodeticket.com" (a website associated with the Respondent) downloaded in November 2001, Ecorp was set up in June of 1999, and then carried on work as an independent contractor. It claimed to have up to 7 programmers working for it at any one time, "from all over Asia". The Internet page stated that Mr. Chris Kwan was then finishing his PHD in e-commerce at Sydney University.
The domain name was registered on April 4, 1999. The evidence shows that it is presently linked to a website operated by Mr. Kwan or Ecorp, at "vixa.com". A page from that website (downloaded by the Complainant on September 11, 2003) shows that Vixa is a discount domain name registrar, providing services such as online registration and renewal of domain names, checking on domain name availability, website design development, and other services and solutions in the e-commerce field. The website at "vixa.com" quotes prices in the currencies of Australia, Malaysia, and Singapore, as well as in United States dollars. "Vixa.com" is said to be "part of the growing Ecorpnu Alliance, registered in New South Wales, Australia". The September 2003 "vixa.com" web page states "we have moved our admin to Malaysia", and goes on to provide correspondence addresses in New South Wales Australia and (the Respondent’s address) at Sandakan, Malaysia.
The Complainant also produced a web page, apparently downloaded in December of 2001, showing that the domain name was then linked to the website at Register.com. The Register.com web page to which the domain name then resolved, was prominently headed with the words: "COMING SOON!", followed in smaller type by the words: "This domain name was recently registered at register.com which is pleased to present the following additional services: …". Immediately below that, the Internet browser was asked: "Want This Domain Name?", and beside that there was a place for the browser to insert an offer amount and click on the words "Make Offer".
The same web page from the Register.com site advised that the following domains were also then available: <anchor-beer.com>, <anchorsbeer.com>, and <anchors-beer.com>.
A Whois search on the domain name, apparently also conducted in early December 2001, included the following: "Sponsoring Reseller; for Technical Support with respect to this domain contact: Ecorp …".
Although it is clear that the Complainant was aware by no later that December 2001 that the Respondent had registered the domain name, it apparently did not then challenge the Respondent’s right to do so. Indeed, there does not appear to have been any contact at all between the Complainant and the Respondent before this proceeding was commenced.
5. Parties’ Contentions
1. Any form of trademark infringement, passing off, unlawful appropriation or dilution of the Complainant’s Anchor Beer trademarks will cause irreparable harm and damage to the Complainant’s reputation and goodwill.
2. The domain name is identical or confusingly similar to one or more of the Complainant’s "Anchor" trademarks in which it has rights. The absence of a space between the words "anchor" and "beer" in the domain name, does not make any material difference.
3. The Respondent does not carry out any activity using the words "anchor beer". Neither of those words has any connection with the Respondent’s name or the services described on the website at "vixa.com".
4. The Respondent has attempted to sell the domain name through register.com, by soliciting offers through a web location linked to the domain name (a reference to the 2001 Register.com web page produced by the Complainant). The description of Ecorp as a "sponsoring reseller" of the domain name (in the 2001 Whois printout) is further evidence of the Respondent’s intention to sell the domain name.
5. Investigation into the activities of Mr. Chris Kwan/Kwan Khai Hee, and Ecorp, do not reveal any rights or legitimate interests the Respondent might have in the domain name.
6. The Respondent’s real interest in the domain name has been to:
a. Resell, rent or otherwise transfer the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; or
b. prevent the Complainant from reflecting the trademark in a corresponding domain name; or
c. misappropriate the Complainant’s goodwill and reputation through the use of the domain name; or
d. hold the Complainant at ransom under threat of potential passing-off; or
e. dilute the distinctiveness of the Complainant’s trademark; and/or unlawfully interfere with the Complainant’s trade or business and/or economic interest.
7. The domain name was registered and is being used in bad faith, for the following reasons:
a. Neither the Respondent nor its administrative or technical contact appear to carry on any business using the name "Anchor Beer", whether in Malaysia or elsewhere.
b. The Complainant does carry on business using its ANCHOR BEER trademarks in various parts of the world, including Malaysia. That brand is exceptionally well known in Malaysia, because of the extensive promotional activities and sales undertaken by the Complainant over the years. In those circumstances it would be highly unlikely and unbelievable for the Respondent to say that it had no knowledge of the Complainant’s ANCHOR BEER mark.
c. The Respondent’s website at the domain name does not display any descriptive or distinctive matter related to the Respondent. Instead, the website is being used by "vixa.com", a domain name registration service provider associated with (or affiliated to) the Respondent.
d. The 2001 solicitations to make an offer to purchase the domain name indicate that the Respondent is or was attempting to sell the domain name.
e. The website linked to the domain name is a dormant, or inactive, website.
The dormant or inactive nature of the website is an indicator of the domain
name being registered and being used in bad faith. (The concept of a domain
name "being used in bad faith" is not limited to positive action –
inaction is within the concept (citing WIPO
Case D2000-0003: Telstra Corporation Limited v Nuclear Marshmallows,
and WIPO Case D2000-0400: CBS Broadcasting
Inc v. Dennis Toeppen)).
f. The foregoing acts and conduct of the Respondent have been calculated to deceive and mislead or are likely to deceive and mislead the trade and public into a belief that the domain name is that of the Complainant or is otherwise associated, affiliated, or connected with or to the Complainant.
g. The Respondent’s actions and conduct have deprived the Complainant of the right and opportunity to have its trademark comprised in a domain name which is international in character.
h. The Respondent’s said actions and conduct have left it with an instrument of deception which may be used to perpetrate a legal wrong. If the Respondent is allowed to activate, use or deal with the domain name, there will be a false association of the domain name with the Complainant, and that would cause confusion among the trade and public and cause the Complainant’s name to lose its distinctiveness and hence devalue the Complainant’s goodwill and reputation in the name.
i. The Respondent’s actions and conduct will cause a dilution of the Complainant’s ANCHOR BEER trademarks.
j. The Respondent has passed off (or attempted to pass off, or is likely to pass off or enable the passing off of), the domain name as and for a domain name of the Complainant.
k. The Respondent has passed of (or attempted to pass off, or is likely to pass off or enable the passing off of), its trade and business as being connected with or associated with the Complainant’s trade and business.
l. The Respondent’s acts may constitute infringements of the Complainant’s international registered trademarks.
m. The Respondent’s actions and conduct constitute an unlawful interference in the trade and business and/or economic interests of the Complainant.
Domain Name Identical or Confusingly Similar
1. The Complainant has failed to point out which of its trademarks is said to be identical or confusingly similar to the domain name.
2. The Complainant has advised (for the purposes of paragraph 3(b)(xiii) of the Rules), that the Complainant will submit, with respect to any challenge that may be made by the Respondent to a Panel decision, to the jurisdiction of the Courts, at the location of the principal office of the Registrar. That principal office is in Canada. The Complainant has no marks in Canada or the United States of America or has abandoned or cancelled its registrations in Canada and the United States, and has no rights in those jurisdictions.
3. The Complainant has acquired ownership of some of its registered marks by way of assignment in gross from the previous registered proprietor. An assignment in gross does not result in a valid transfer of trademark rights stripped of their goodwill. The Complainant has provided no evidence of the terms of assignment showing that the assignments have been other than assignments in gross.
4. The Complainant failed to take appropriate action to enforce its alleged rights for more than 4 years after the domain name was registered in April 1999. An implied consent to a confusingly similar use of a mark can result in the deemed abandonment of that mark.
5. It is not commonly known that the Complainant’s products are marketed in the USA or Canada (at least not as at the critical April 1999 filing date for the domain name) – while users in Malaysia or Singapore who were aware of the Complainant’s "Anchor" products might expect any website at <anchorbeer.com.my> to belong to the Complainant, they would not expect a website at the domain name (i.e. without the country-specific suffix) to be associated with the Complainant. The fact that a website can be accessed anywhere in the world does not mean, for trademark purposes, that the law should regard the relevant mark as being used everywhere in the world (citing Flowers Inc v. Phonenames Limited, UK Court of Appeal, judgment May 17, 2001).
6. The United States Patent and Trademark Office ("the USPTO") has over 600 recorded marks consisting of the word "Anchor" in combination with another word. Further, the mark ANCHOR is registered in the United States of America in Class 32, to Anchor Brewing Corporation, a corporation unrelated to the Complainant (and which also holds the domain name registration for <anchorbeers.com>).
7. There is no evidence of any actual confusion (not even "initial interest confusion" of the kind referred to in Brookfield Communications, Inc v West Coast Entertainment Corp, Court of Appeals, Ninth Circuit (174F.3d 1036, 1999). The Respondent has not to date received any emails or mail from any third party mistakenly presuming that the Respondent was representing the Complainant, and (although the Complainant has for years operated a website under construction at <anchorbeer.com.sg>) the Complainant has provided no record of consumer confusion arising from the Respondent’s registration of the domain name. Further, there have been only four occasions between March 2003, and October 2003, when a user has typed in the words "anchorbeer.com" and arrived at the Respondent’s "vixa.com" website. The facts show that the domain name is largely unknown, and could not be confusing to the majority of people.
8. A Google search for "anchor beer" (two words) does not show any entry for the domain name. A Google search run on "anchorbeer" showed the domain name as last on the list, with the Complainant’s website under construction at <anchorbeer.com.sg> listed first.
9. A more substantial test for confusion can be found in the case Data Concepts, Inc v. Digital Consulting, Inc, 150F3d 620, 627-628, Sixth Circuit Court of Appeals, 1998. Considering the various factors enumerated by the Court in that case, there is no confusion. First, the Complainant does not have a strong ANCHOR mark, especially having regard to the cancellation or abandonment of its former USA registration and the fact that an unrelated corporation in the United States is the registered proprietor of ANCHOR in Class 32 for beers, and owns the <anchorbeers.com> domain. Secondly, the goods or services offered by the Respondent (domain name registration service and reseller for Tucows) are very different from the Complainant’s "Anchor" products. Thirdly, there has been no evidence of actual confusion, and, fourthly, the parties’ marketing channels are different (the Complainant’s Anchor beer has never been sold online, although the Complainant has had the use of the domain <anchorbeer.com.sg> since 1998). A sophisticated purchaser would not be confused into thinking that there was some affiliation between the Respondent and the Complainant, and buyers would not accidentally purchase the Respondent’s products. Fifthly, the Respondent’s intention in selecting the mark was bona fide, relating to the prospective use of the domain name to offer beer memorabilia by auction format, vanity email services, a moderated "alcoholic anonymous" forum, a forum for pub owners to offer best prices for meetings of beer drinkers, and so on.
10. The Complainant has lost its trademark rights by one or more of the following equitable defences available in trademark infringement litigation – laches, estoppel or acquiescence. That is because the Complainant has abandoned its registered trademark in the United States of America, and failed to take action in respect of the domain name in the period since the domain name was registered on April 4, 1999. Further, the Complainant has made no attempt to secure registration of <anchorbeer.net> or other top level variations, nor given the Respondent notice of the claims now being made. In contrast, the Complainant has registered domain names incorporating its "Tiger" brand in numerous TLDs. The domain <anchorbeer.com.my> was only registered by the Complainant on June 27, 2003, although <anchorbeer.com.sg> had been registered by it on August 27, 1998.
11. In summary, on the "identical or confusingly similar" point, the Complainant had no rights, or had given up any previously existing rights, to "Anchor Beer", whether by abandonment or cancellation in the relevant jurisdictions, by the time the domain name was registered. The Complainant’s differential treatment of its Tiger and Anchor brands reveal that it had no intention to protect the Anchor brand, even though it had the opportunity to do so. In the alternative, the Complainant has failed to show the manner of confusion or likelihood of confusion alleged, and in particular has not identified which of its various "Anchor" marks is said to be identical or confusingly similar to the domain name.
Rights or Legitimate Interests in respect of the Domain Name
1. The Respondent has rights derived from the registration agreement. The Complainant must show that there has been a breach of that agreement to extinguish those rights.
2. Between August 2001 and November 2002, Register.com offered an anonymous "make an offer" system, which enabled Internet users to make offers for domain names which were already registered to other registrants. The 2001 Register.com web page produced by the Complainant was downloaded during this period. Register.com’s "make an offer" system was not targeted to specific domain names, and, during the relevant period, an offer could be made for any domain name appearing in a Register.com Whois record. Therefore, the 2001 Register.com web page downloaded by the Complainant does not provide evidence of the Respondent soliciting offers to purchase the domain name, or that the Respondent registered the domain name with the intention of selling it to its rightful owner or a competitor of the owner.
3. Further, the registration of the domain name was migrated to the Registrar on March 30, 2001. After that date, Register.com was not the registrar and could not represent the domain name. However, Register.com’s DNS was still being used for parking the domain name, so that the domain name may have been linked to some website beyond the Respondent’s control.
4. The reference in the 2001 Whois printout to Ecorp as "Sponsoring Reseller", did not mean that Ecorp or "vixa.com" was acting as a reseller of the domain name. The word "reseller" was used for the purpose of distinguishing a reseller of domain name services, from a true registrar approved by ICANN. ("Vixa.com" is not an ICANN-approved registrar, but merely resells the Registrar’s services.)
5. The examples cited at paragraph 4(c) of the Policy are without limitation – other circumstances may be sufficient to show a right or legitimate interest in a domain name. Specifically, a Respondent’s "rights or legitimate interests" under paragraph 4(a)(ii) of the Policy need not be in the form of trademark rights or personal name rights.
6. The linking of the domain name to a website featuring a domain name registration service, is a non-infringing use of the domain name. The type of goods/services offered at the "vixa.com" site is very distant from the goods in which the Complainant asserts trademark rights.
7. The Complainant has the burden of proving that the Respondent has "no rights or legitimate interests" in the domain name. The Complainant has failed to discharge that burden of proof.
8. The Respondent’s original intention in registering the domain name, was to provide services including vanity mail, an anonymous drinkers’ forum, health FAQ, and a system (for use by online sellers of goods or services) involving the protection of purchasers’ credit card details from misuse, by the allocation of randomly selected numbers, which would be communicated to and known by only the seller and the purchaser. The Respondent dubbed this system "ANCHOR" (an acronym for "Anti Child Order Routine"). The Respondent says "as we could not register <anchor.com>, the "beer" was added later to target the beer sector and to distinguish it from other existing "ANCHOR" US trademarks."
9. The Respondent has made a bona fide effort to use the domain name, and had made demonstrable preparations to do so, before it had any notice of the present dispute. Annexed to the response is a document which is a "snapshot of our codes for <anchorbeer.com> which can be seen were developed as early as 2000. These files are Active Server Pages used to operate the website Anchorbeer’s auction routine for beer memorabilia." The fact that the coding has not been completed reflects the times following the tech bubble crash.
10. The Respondent has built many websites from registered domain names, and is in the business of creating proprietary website and ecommerce solutions. It has not demonstrated any pattern of offering domain names for sale.
11. The Respondent’s present use of the domain name as a "forwarder" to the "vixa.com" website commenced before any notice of the present dispute, and constitutes a bona fide offering of goods or services (citing Shirmax Retail Limited v. CES Marketing Group Inc (eResolution Case No. AF-0104)).
Domain Name not Registered or Used in Bad Faith
1. The Respondent did not know of the Complainant’s existence when it registered the domain name. It ran a trademark check in the USPTO which returned one hit showing only a "dead" trademark. The Respondent concluded that the owners had abandoned the mark or were themselves no longer in existence. There was no mention of the Complainant in the USPTO documentation.
2. The Complainant has not proved that the Respondent knew of the Complainant’s trademarks or the alleged reputation of its Anchor beer. (As the Respondent put it in Appendix 19 to the Response): "The Complainant has not proven this point and as mentioned the Respondent rightly or wrongly assumes this as a dead mark per USPTO trademark search. The Respondent is not aware of the Complainant’s marks in Malaysia, Singapore nor in other exotic places nor of the Complainant’s existence. The Respondent is not in the beer business nor ordinarily resides in Malaysia." The Malaysian address for the domain name was mainly used as a mail drop, as Mr. Kwan travels abroad most of the time for business and it is convenient to have a mail drop rather than having to change addresses all the time.
3. The Registrant’s name "Nil" is an acronym standing for "New Ideas List", which is associated with a computer folder of the Respondent named "NIL" which stores all the Respondent’s ideas and proposals or work in progress. Most people would not relate the name "Nil" as being associated with the Complainant on viewing the Whois records.
4. There is no evidence of the domain name having been registered with intent to sell to the Complainant or a competitor of the Complainant.
5. The concept of dilution requires actual dilution of a famous mark. The Complainant has not proved that its "Anchor" marks are famous.
6. The Complainant has produced no evidence in support of the potential passing off contention.
7. The Complainant provides no evidence of the allegation of unlawful interference with the Complainant’s trade, business, or economic interests. Although the Complainant has an Internet address at <anchorbeer.com.sg> which pre-dates the registration of the domain name, there is no evidence of the Complainant having sold any Anchor beer through that Internet address. Nor is the Respondent in the same business as the Complainant.
8. Inaction constituting bad faith – the Telstra and Toeppen cases – those cases do not assist the Complainant. The non-use in those cases was associated with other actions taken by the respondents to circumvent the policy. Also, the domain name in this case does resolve to an active website (at "vixa.com"), and that constitutes "action" rather than inaction. Further, while the trademarks in the Telstra case were well-known, in this case the Complainant’s alleged marks are not that well-known, and it has no marks in the United States or Canada. In this case too, the registration addresses for the domain name are correct and reachable; there is no evidence of false contact details.
9. There is no evidence of intention to deceive or mislead the public by providing the link to the website at "vixa.com". Any reasonable person would quickly see that a beer manufacturer such as the Complainant could not be involved in domain name registration. Further, the Complainant’s own decision to use a website in the country domain, .com.sg, indicates that the Complainant is aware that consumers would identify it as a Singapore-based company.
10. The registration of the domain name has not deprived the Complainant of the opportunity to have its trademarks comprised in a corresponding domain name. The Complainant has registered <anchorbeer.com.sg>, and elected not to acquire the top level domain <anchorbeer.biz>. The Complainant clearly was aware of its ability to register the domain name at the time it registered <tigerbeer.com>, but elected not to do so – its failure to do so is fatal to its present claim that it has been deprived of a right to obtain the name.
11. There is no evidence of trademark infringement in the registration or use of the domain name.
12. (Specifically referring to paragraph 4(b)(iv) of the Policy):
(i) There is no proof of any "likelihood of confusion".
(ii) A website that is offering domain name service registration would find it difficult to deceive a potential customer that it is one affiliated with or endorsed by the Complainant, when no words or suggestion to that effect are made on the website.
(iii) Even if the Complainant were to use its <anchorbeer.com.sg> website, that would not create any confusion, because a domain name with the .sg suffix would mean that the customer would be sure that it had the right source.
(iv) "Intentionally attempted to attract" – such an intention could only be formed if the Respondent knew of the trademarks and reputation of the Complainant’s brand. The Complainant has not proved this point. Further, the selection of a domain name alone would be insufficient to attract users if that had been the Respondent’s intention. The Respondent has the skill and means to have done much more to attract business by use of the domain name, if that had been its intention.
(v) There would be no likelihood of "commercial gain" for the Respondent in using the domain name to intentionally attract web visitors to the Respondent’s "vixa.com" website. The possibility of commercial gain would have been low enough that it would not have motivated the Respondent to intentionally use the domain name to attract domain name registration business at "vixa.com". The Respondent’s proposed use of a website to market beer memorabilia and so on is not working yet, so the Respondent has merely "parked" the domain name by using it as a forwarder to the "vixa.com" website.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the 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.
Paragraph 15(a) of the Rules requires the 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".
Identical or Confusingly Similar – Paragraph 4(a)(i) of the Policy
The domain name is clearly not identical to any trademark or service mark in which the Complainant claims rights. The issue under this paragraph of the Policy is whether the domain name is confusingly similar to one or more marks owned by the Complainant.
On the evidence produced, the Panel is satisfied that the Complainant is the owner of the word mark ANCHOR in Malaysia in class 32. The Panel is also satisfied that the Complainant is the owner of numerous other marks in that class prominently incorporating the word "Anchor", with or without attached devices, in many other countries (but not including the United States or Canada). Apart from those numerous registered marks, the Panel is also satisfied that, by April 1999 when the domain name was registered, the Complainant had established common law rights in the ANCHOR mark for its "Anchor" beer, in a more limited number of countries (including Malaysia and Singapore).
In the Panel’s view, the domain name is confusingly similar to the Complainant’s
ANCHOR marks. First, the word "Anchor" is the dominant part of the
domain name. The word "beer" is simply descriptive of the beverage,
and, as noted by the learned Panelist in the <ansellcondoms.com> case
(Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty,
Ltd., WIPO Case No. D2001-0110), the
addition of the word "beer" to the Complainant’s ANCHOR mark serves
only to exacerbate the confusion (beer being the very product the Complainant
markets under its Anchor marks).
The fact that the domain name is now linked to the Respondent’s website at "vixa.com" (a website dealing primarily in the registration and renewal of domain names – far removed from the business of selling beer) does not assist the Respondent. It appears that that particular link was only established in March 2003, nearly 4 years after the domain name was registered, and paragraph 4(a)(i) of the Policy must be capable of being applied in circumstances where a respondent has made no use of a domain name at all. In such cases a detailed consideration of what might have been required to establish a likelihood of confusion in a trademark infringement case, hardly seems apposite. In the Panel’s view, what the Respondent refers to as the "initial confusion" test is the appropriate approach in deciding the issue of confusing similarity under paragraph 4(a)(i) of the Policy. Proof of actual instances of confusion is not necessary.
Even if that were not so, the Panel would regard the Respondent’s stated intention of using the domain name as an address for a website dealing with the sale of beer memorabilia, the arranging of meet-ups for beer drinkers, and "Links to famous beer companies" (Appendix 15 to the Response), as being too close to the nature of the Complainant’s business to eliminate the confusion caused by the similarity of the domain name to the Complainant’s ANCHOR marks.
The Respondent has made a number of other submissions under this head, some challenging the Complainant’s rights in its trademarks (e.g. the claim of laches, estoppel or acquiescence, and the claim that the Complainant may have achieved its registered proprietorship in some cases by invalid assignments in gross). Such claims can be dealt with shortly: it is beyond the scope of an administrative proceeding such as this to enquire into the (continuing) validity of registered trademark rights. Challenges to such rights should be made in the Courts of the countries where the marks are registered.
The fact that the Complainant may have lost or abandoned trademark rights in the United States or Canada is not relevant. Proof of trademark rights in any country is sufficient for the purposes of paragraph 4(a)(i) of the Policy, and the fact that the Complainant may have elected to submit to the jurisdiction of the Courts of Canada (the local jurisdiction of the Registrar) for the purpose of resolving any challenge to this decision, is irrelevant.
Similarly, what the Complainant might or might not have done by way of marketing its other brands, or registering other domains, is not relevant to the issues under paragraph 4(a)(i). The only issue is whether or not the domain name is identical or confusingly similar to some trade or service mark in which the Complainant has rights. The Panel is satisfied that the Complainant has made out its case under paragraph 4(a)(i) of the Policy.
Right or Legitimate Interest in the Domain Name – Paragraph 4(a)(ii) of the Policy
Although the Policy requires that the Complainant must prove each of the elements
in paragraph 4(a), it is often observed that difficulties are posed for a complainant
in proving a negative, namely that the Respondent does not enjoy some right
or legitimate interest in the domain at issue. The wording of paragraph 4(c)
of the Policy appears to envisage the Respondent taking steps to demonstrate
its right or interest and it is generally accepted that, once a complainant
has proved that the domain name is identical or confusingly similar to its mark
and that it has not authorized the Respondent to use the domain name, the evidential
onus effectively shifts to the respondent to demonstrate that it has some right
or legitimate interest. (See for example the decision in Sony Kabushiki Kaisha
v sony.net; WIPO Case D2000-1074,
where the learned panelist said: "Proving that the Respondent has no rights
or legitimate interests in respect of the Domain Names requires the Complainant
to prove a negative. For the purpose of this subparagraph, however, it is sufficient
for the Complainant to show a prima facie case and the burden of proof
is then shifted onto the shoulders of the Respondent."). The Panel agrees
with that general approach.
In this case, there is no suggestion of the Complainant having authorized the Respondent to use the domain name, and the Complainant has produced sufficient documentation to show that there is no obvious link between the domain name and the Respondent, Mr. Kwan, or the business conducted at the "vixa.com" website. In those circumstances, the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, and it is for the Respondent to show that it has a right or legitimate interest in the domain name.
Before turning to the Respondent’s more substantial argument on that issue,
it is convenient first to deal with the argument that the registration itself
confers the necessary "right" for the purposes of paragraph 4(a)(ii)
of the Policy. The Panel does not believe that submission could possibly be
right. If it were, every cybersquatter would be immune from complaint under
the Policy because it would have a "right" under its registration
agreement. That cannot have been the intention of the Policy, and it seems to
the Panel that the right or legitimate interest which is sufficient for a respondent
to defeat a complaint under the Policy must exist apart from the particular
registration agreement under which the domain has been registered. (See also
Busy Body, Inc. v Fitness Outlet Inc.; WIPO
Case D2000-0127, where the learned panelist reached the same conclusion.)
In this case, the Respondent does not suggest that it has any trademark or trade name rights in the domain name. Nor does it suggest that it has been commonly known by the domain name. There is therefore no need to consider paragraph 4(c)(ii) of the Policy.
The Respondent’s main argument under this paragraph of the Policy is that it had a legitimate reason for selecting the domain name, related solely to its own proposed commercial objectives, and without any regard for the Complainant or its products. Indeed the Respondent says that it had no knowledge of the Complainant or its trademarks when it requested the domain name.
The Respondent’s position is perhaps most conveniently summarized at Appendix 5 to the Response, where the Respondent says:
"Our original intention was to use the domain name for users to offer beer memorabilia by auction routine, vanity email, moderated anonymous alcoholic forum, drinking problem help line, arrange meet-up for beer drinkers by asking venue owners (pubs) to offer the best prices by an auction routine, arrange pub tours, ANCHOR system, all grouped in a portal. Unfortunately we could only manage to develop one of the functions above to date. The name anchorbeer was chosen for our proposed ANCHOR stands for "ANTI CHILD ORDER ROUTINE" system and beer (targeting beer industry) and as we found out that the trademark was cancelled or abandoned in US and Canada as at the registration date, we decided to register it without malice. Our choice is the next obvious since we could not obtain anchor.com. The word "beer" was added to avoid the existing trademarks in "anchor" word found in USPTO."
The reference to the "ANCHOR" system, was a reference to the system devised by the Respondent under which an online seller of goods or services would allocate a random number to a prospective purchaser, which number would be linked on the system to the prospective purchaser’s credit card details. The claimed object of the system was to prevent children taking parents’ credit cards and using them for online purchases without the parents’ authority – a child who had taken its parent’s credit card for that purpose would, under the Respondent’s system, also need to know the randomly-allocated number related to that credit card, before any purchase could be made. The system was apparently intended to proceed on the basis that the child (or other unauthorized person who had access to the credit card) would not also have access to the associated randomly allocated number.
It appears that the Respondent has made application to the USPTO for a patent which is to some extent related to its system – that application was made in September 1999. However, the exact relationship between the patent and the Anti Child Order Routine is not clear to the Panel.
The Respondent has produced a document entitled "Status file of anchorbeer". This appears to be an internal computer document, apparently updated from time to time. It refers to the project "Anti Child Order Routine" with the "Code Name: ANCHORBEEER". The document describes the random number allocation system and refers to "related matters in the September 1999 United States patent application". Under a heading "Backup/Alternatives", the document refers to a general beer portal, including the various matters described above and "Links to famous beer companies and beer critics …". The document reports that, as at February 13, 2001, the Random Number Generator Version 1.2 had been completed, while the Memorabilia Auction Routine was still then a work in progress.
The Status File goes on to report, as at November 9, 1999, problems then being experienced with the Anti Child Order Routine in interfacing with credit card payment systems. Various costs and difficulties are referred to. Then, an entry dated March 1, 2000, reads: "Suggest do other features first to get the site up and running." An entry in this document dated February 13, 2001, reports a problem with the "look and feel" of the "auction memorabilia". The note suggests further looking and testing.
As noted above, the Respondent denies that it had any knowledge of the Complainant or of its products, and in particular says that it had no knowledge of the Complainant’s Anchor beer. The Respondent explains that it is "not in the beer business nor ordinarily resides in Malaysia. " According to the Response, the Malaysian address for the domain name was mainly used as a mail drop, as Mr. Kwan travels abroad most of the time for business.
However, the Panel notes that the Respondent has not disputed the Complainant’s evidence that Mr. Kwan has been a lecturer at the University of Malaya, and the founding Chairman of the Malaysian Internet Society Chapter. It appears that his company Ecorp has employed programmers "from all over Asia", and the "vixa.com" website operated by Mr. Kwan or his company quotes prices in Malaysian and Singaporean currencies. Indeed, a web page from "vixa.com" downloaded in September 2003 states "We have moved our admin to Malaysia". The physical address provided at the website is the address in Sandakan, Malaysia, given by Mr. Kwan as his own address. Not surprisingly in those circumstances, the Respondent or "vixa.com" has been involved in developing a number of websites with apparently Malaysian content – e.g. <malaysiarant.com>, <Sabahlaw.com>, and <sandakan.biz>. The Panel concludes that the Respondent has had, and continues to have, a very substantial connection with Malaysia and Singapore.
One of the Anchor marketing documents produced by the Complainant refers to its Pilsener beer as having been "Quality Brewed for Malaysia since 1933". The Respondent’s stated intentions for the domain name show that it is clearly interested in beer brands and associated memorabilia, and it seems improbable in those circumstances that the Respondent would not have been aware of a beer brewed in his own country for over 60 years.
Quite apart from Mr. Kwan’s own Malaysian connection, the Respondent says that it did run a trademark search in the USPTO before registering the domain name, and that that search did show that the word mark ANCHOR PILSENER BEER had been registered to Archipelago in class 32 for beer, until the mark was cancelled in February 1986. A Singapore address was provided for Archipelago. It seems the Respondent also ran a trademark search in Canada, and ascertained that an application made by Malayan Breweries (Singapore) Pte Limited to register a mark apparently including the words "Anchor" and "Archipelago" (with a device) for beer, had been made in 1983 and abandoned in 1985. Notwithstanding the Malayan and Singaporean references, it appears that the Respondent elected not to check for registrations in those or any other jurisdictions.
The Respondent has also produced a USPTO search on the word mark ANCHOR in class 32, which shows that the mark ANCHOR is registered in the United States in that class for "beer, porter, ale, lager, and various other beverages." The registered proprietor is Anchor Brewing Company Corporation, of California, a corporation with no apparent relationship to the Complainant. It appears that the American company applied to register the ANCHOR mark in June 1988, so details of that particular registration were presumably available to the Respondent when it ran its USPTO trademark search on the word "Anchor" prior to registering the domain name in April 1999.
So it seems probable that the Respondent was aware of the current United States registration for the mark ANCHOR in class 32 for various goods including beer, when it registered the domain name. The Respondent definitely knew that a beer mark incorporating the words "Anchor" and "Beer" had been registered to a Singaporean company in 1986.
It seems to the Panel that the fact that a Singapore company had registered
an "Anchor" mark in the USPTO warranted further enquiry, at least
in Singapore, to ensure that there were no registered "Anchor" marks
which would affect the Respondent’s ability to own and use the domain name.
Once the Respondent was aware of the possible existing use of an "Anchor"
mark in his own region, that possible use should have been checked. Any such
enquiry would have led the Respondent to the Complainant and its numerous "Anchor"
marks. In all these circumstances, the Panel finds that the Respondent knew
or at very least should have known of the Complainant and its Anchor marks at
the time it requested the domain name. (Findings of bad faith can be made in
cases where the panel finds that a respondent "knew or should have known"
of the registration and use of the Complainant’s trademark prior to registering
the domain name – see British Broadcasting Corporation v Data Art
Corporation / Stoneybrook; WIPO Case D2000-0683,
and the cases referred to immediately under the heading "Bad Faith"at
page 6 of that decision. See also the decision in Gloria-Werke H. Schulte-Frankenfeld
GmbH & Co v Internet DevelopmentCorporation and Gloria MacKenzie;
WIPO Case D2002-0056, where the majority
of the panel noted at page 10: "This case turns on whether there is
sufficient factual material for the Panel to infer that in February 2000 [the
month of registration of the at-issue domain name], IDC knew or ought to
have known of the fame of the Complainant’s mark."
The Respondent says that it always intended that any website linked to the domain name would not simply be restricted to providing the Anti Child Order Routine to interested online retailers, but would also target beer drinkers. The auctioning of beer memorabilia, assisting those with a drinking problem, arranging meet-ups for beer drinkers, arranging pub tours, and providing links to famous beer companies, were all stated to be part of the Respondent’s "original intention" for the domain name. To the average Internet browser looking for such a website, there would be no obvious reason why or how such services might be related to the word "Anchor". Possibly that would become apparent on visiting the website (if the Anti Child Order Routine was also marketed at the website), but by then those people interested in the beer-related activities marketed at the site, who also had knowledge of the Complainant’s Anchor beers (or possibly the Californian company’s Anchor beers) would have made the connection between the domain name and the particular brewer of Anchor beer of which they happened to be aware. Internet browsers who were aware of the beer brand would inevitably infer that the website must somehow be endorsed by or associated with the brewer.
In short, the Panel is of the view that the use of a brewer’s trademark as the principal part of a domain name address for a website dealing in beer-related goods or services, could not have been a bona fide use of that trademark. The Panel does not believe it matters that the "ANCHOR" acronym for the Respondent’s so-called Anti Child Order Routine system may have been a genuine acronym, coined by the Respondent to describe that system. That is not the same as having a legitimate interest in the longer expression "anchorbeer". The obvious implication of adding the word "beer" was that the domain name would likely be associated with some beer called "Anchor".
Respondent’s Actual Use of the Domain Name since April 1999
The Respondent has not furnished any evidence as to how the domain name was used in the early stages after it was registered. It appears that the domain name was "parked" with Register.com until some time in March 2003, when it was first used as a "forwarder" to the website at "vixa.com". At least in late 2001, the domain name resolved to a Register.com web page which appeared to encourage Internet visitors to make an offer for the domain name. The Respondent does not say when that state of affairs commenced, or for how long it continued, although the emails produced by the Respondent suggest that that use of the domain name did not commence before August 2001 and would not have continued after November 2002. The Respondent does not specifically state in its response that the domain name was not for sale during that period – the Respondent simply says that the Complainant has not proved that the Respondent was offering the domain name for sale. In the absence of any clear statement from the Respondent to the contrary, the Panel infers that the Respondent was at least aware that an Internet browser keying in the domain name during that period would have been taken to a website which appeared to invite offers to buy the domain name, and that the Respondent was content with that state of affairs.
It follows from what the Panel has said that the proposed use of the domain name for a beer-related website (or demonstrable preparation to do so) would not have been in connection with a bona fide offering of goods or services, and could not therefore have provided an answer to the Complaint under paragraph 4(c)(i) of the Policy.
The only actual use which the Respondent has made of the domain name is as a "forwarder" to the "vixa.com" website. There is no apparent connection between the domain name and any business transacted through the "vixa.com" website, and the Panel is left to infer that (in the absence of any other use to which it might have been legitimately put) the domain name has been used to attract to "vixa.com" web browsers interested in "Anchor" beers. That could not be a bona fide use of the domain name, or a fair or legitimate one for the purposes of paragraph 4(c)(iii) of the Policy.
For the foregoing reasons, the Panel finds that the Respondent does not enjoy any right or legitimate interest in the domain name.
Bad Faith Registration and Use – Paragraph 4(a)(iii) of the Policy
The Respondent has made no use of the domain name for over 4 years, other than the very recent use as a forwarder to the "vixa.com" website. While that may be partially explained by the difficulties the Respondent has described in establishing its Anti Child Order Routine system, and difficulties with the "look and feel" of the memorabilia auction routine, it is a very long time for the domain name to have remained effectively inactive. During that period, the Panel has found (on the balance of probabilities) that the Respondent was aware that offers were being solicited (through Register.com) for the purchase of the domain name, and the Panel has also found that the Respondent’s stated "original intentions" for the domain name could not have resulted in bona fide uses.
In the circumstances, the Panel has come to the view that the domain name would inevitably attract some Internet visitors interested in "Anchor" beers, and that that must have been obvious to the Respondent at the time the domain name was registered. To the extent that any website linked to the domain name provided goods or services relating to beer or beer drinking, the likelihood of confusion would have been exacerbated. Even with the present link to the website at "vixa.com", the Panel is satisfied that the circumstances fall within paragraph 4(b)(iv) of the Policy – the domain name is being used to attract Internet users to the Respondent’s website, and as it is a commercial website that can only have been done for commercial gain (however small). The Panel is of the view that the necessary "likelihood of confusion" as to the source or affiliation or endorsement of the website is sufficiently created when an Internet browser searching for sites associated with "Anchor" beers keys in the domain name. But even if that were not so, the totality of the circumstances in this case persuades the Panel that the domain name was registered and is being used in bad faith – the original decision to register the domain name to "Nil" as registrant was inadequately explained (why use the name of one of the Respondent’s computer files rather than the name of a person or corporation?), and the Respondent has not properly addressed the issue of why and for how long the domain name resolved to a website which solicited offers for the purchase of the domain name. The Panel is not prepared to accept that Mr. Kwan (an experienced Internet professional) was unaware of that soliciting of offers for the domain name, and it was clearly a matter which called for some explanation from him (any offering for sale being potentially inconsistent with the Respondent’s stated intention for the use of the domain name). Add knowledge of third party "Anchor" marks for beer (and the inevitable association some Internet browsers would make between the domain name and those beers), and 4Ѕ years of effective non-use of the domain name, and the Panel is satisfied that there has been a lack of good faith in the registration and use of the domain name. It is not necessary that that bad faith should fall within any of the specific subparagraphs of Paragraph 4(b) of the Policy: those subparagraphs merely provide examples of bad faith registration and use, and do not limit the concept.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <anchorbeer.com> be transferred to the Complainant.
Date: January 20, 2004