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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

V&S Vin & Sprit AB v. Absolut Skishop

Case No. D2006-0383

 

1. The Parties

The Complainant is V&S Vin & Sprit AB, Stockholm, Sweden, represented by Melbourne IT Corporate Brand Services AB, Sweden.

The Respondent is Absolut Skishop, Avoriaz, France, represented by Cabinet Pollien-Giraud & Associйs, France.

 

2. The Domain Name and Registrar

The disputed domain name is <absolut-skishop.com>. It is registered with Gandi SARL.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2006. On March 28, 2006, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On March 29, 2006, Gandi SARL 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 contacts. The registrar confirmed that the Registration Agreement is provided by Gandi in the English and French languages. 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 April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 30, 2006. On April 14, 2006, Respondent’s counsel sent a letter to the Center, in French, disputing the Complaint. On April 20, 2006, the Respondent’s counsel sent an e-mail to the Center, also in French, stating that since the Complaint was drafted in English, the Respondent could not provide a full answer. On April 21, 2006, the Center answered in French, quoting paragraph 11 of the Rules concerning the language of the proceedings. The Center further mentioned that the proceedings would be held in English, but that an answer in French would be accepted. The Center also mentioned that the Panel would have full discretion to request a translation of any documents, if necessary. No further communications were received from the Respondent or its counsel.

On May 1, 2006, the Center notified the Respondent’s default.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on May 16, 2006. 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 Swedish company founded in 1917, with a share capital of SEK 500,000,000. It manufactures, imports and distributes alcoholic beverages for resale on the Swedish market as well as exports alcoholic beverages all over the world.

The Complainant is the owner of several trademarks consisting of or containing the word “Absolut”. Amongst numerous others, it is the owner of the following trademarks:

- Community trademark ABSOLUT, nr. 001521681, filed on January 31, 2000, in classes 6, 14, 16, 18, 21, 24, 28, 29, 30, 32, 33, 41 and 42.

- Swedish trademark ABSOLUT, nr. 211697, filed on December 9, 1987, in class 33.

- French trademark ABSOLUT, nr. 1 493 030 filed on October 10, 1988, in class 33.

In 2001, ABSOLUT was ranked as the 93rd most valuable trademark asset in the world by the magazine Business Week, based on a ranking made by the branding consultancy firm Interbrand. In 2002, the trademark ABSOLUT was also ranked as nr. 1 on Forbe’s list of top luxury brand according to marketing performance. In 2003, the magazine Impact ranked ABSOLUT as the 3rd best selling trademarks for premium spirits all categories on a worldwide basis, with sales in excess of 7 millions of nine-litre cases of vodka per year.

The Complainant sent two cease and desist letters to the Respondent, on June 10, 2004, and February 28, 2005. There is no indication that the Respondent answered to these letters.

The Respondent is a French company located in Avoriaz, renting, selling and buying sports goods and equipment. The Respondent registered the domain name on October 11, 2000. The domain name resorts to a web page where the Respondent advertises its products and services, in French and in English.

 

5. Parties’ Contentions

A. Complainant

Concerning the first ground under the Policy, the Complainant submits that the domain name is confusingly similar to trademarks in which it has rights.

The Complainant contends that the dominant part of the domain name comprises the word “Absolut”, which is identical to its registered and well-known trademark. In addition, it submits that “Skishop” is a generic term that lacks distinctive character. Therefore, users are bound to be confused and relate the domain name to the Complainant, by mistakenly believing either that the domain name is owned by the Complainant or that there is some sort of commercial relationship between the parties.

The Complainant stresses that its trademark is a well-known trademark, registered and extensively used in more than 100 countries and registered as a domain name in about 500 gTLDs and ccTLDs worldwide. The Complainant cites several decisions issued by WIPO Panels in previous UDRP proceedings, stating that the trademark ABSOLUT is a well-known mark.

Concerning the second ground under the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name.

It points out that the Respondent does not own any registered trademark or trade name corresponding to the domain name. It also mentions that the Respondent did not receive any licence or authorization of any kind from the Complainant to use the trademark ABSOLUT.

In addition, the Complainant submits that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the ABSOLUT trademark, since the latter is a famous trademark worldwide. In this respect, the Complainant notes that the domain name was registered subsequent to the registration of the trademark ABSOLUT. It also points out that the Respondent does have a French company registration for “Absolut Sports” which, however, does not entail any exclusive rights to “Absolut” in combination with other words.

Finally, the Complainant states that the domain name is resolved to a commercial web site, offering ski equipment for sale and hire. Therefore, the Respondent is making commercial use of the domain name, misleadingly diverting consumers and tarnishing the Complainant’s trademark.

Concerning the third ground under the Policy, the Complainant claims that the Respondent registered and used the domain name in bad faith.

In particular, the Complainant submits that by using a well-known and reputed trademark to generate traffic to its web site, the Respondent acted in bad faith. According to the Complainant, the value and goodwill of the Complainant’s trademark cannot have been unknown to the Respondent at the time of registration of the domain name. Registration and use of the domain name is a case of opportunistic bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, in a letter to the Center dated April 14, 2006, counsel for Respondent mentioned that the Respondent commercializes, rents, sells and buys sports goods and equipments. It pointed out that this activity has no relationship with the products for which the Complainant’s trademark are registered and, therefore, there can be no confusion for the consumers. In addition, the Respondent alleged that it is not engaging in any unfair practice and that the addition of the word “Skishop” is a mere description of its activity.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of numerous trademarks consisting of or containing the word “Absolut”, registered throughout the world, including in Sweden, France and as Community Trademarks.

Concerning the second issue, the Panel finds that the domain name is confusingly similar to trademarks owned by the Complainant. Numerous prior panels have held that when a domain name wholly incorporates a complainant’s registered mark, this may be sufficient to establish confusing similarity for purposes of the Policy (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). This is especially the case where the word that is added to the Complainant’s trademark is not distinctive (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246; Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717).

In the present matter, the word “absolut”, which is identical to the Complainant’s trademarks, clearly is the dominant part of the domain name. The addition of the word “skishop”, which merely describes the Respondent’s activity (as the latter admitted in the proceedings), does not alter the overall impression that the domain name is related to the Complainant’s trademark.

In addition, in the light of the fame of the ABSOLUT trademark, which the Complainant established in the proceedings, there is a considerable risk that the public will either perceive the Respondent’s domain name as a domain name owned by the Complainant, or will be under the impression that there is some kind of commercial relationship between the parties.

Therefore, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name.

It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

There is no evidence that the Respondent owns any trademark corresponding to the domain name or to the word “Absolut”. In addition, there is no indication that the Complainant has licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Further, there is no evidence that the Respondent has been commonly known by the domain name.

The Respondent operates a ski-related business and rents and sells sports equipment. There is no doubt that this is a commercial activity undertaken with intent for commercial gain.

The Respondent does use the domain name in connection with an offering of goods or services. However, there is no indication on record that it already used the domain name before he had notice of the dispute, on June 10, 2004, at the latest. In any event, for the reasons set out below in section C, the Panel considers that the offering of goods and services under the domain name is not bona fide.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:

“(i) by using the domain name, you [Respondent] 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 web site location.”

In addition, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).

On the basis of the statements and documents submitted, the Panel is satisfied that the domain name was registered and used in bad faith, for the following reasons.

The Complainant has produced evidence establishing that its ABSOLUT trademark is well-know and that the Respondent should have been aware of its existence at the time it registered the domain name. Based on the submissions and documents produced, the Panel finds that, by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s trademark mark as to the source, sponsorship, affiliation, or endorsement of its web site.

The Respondent’s claim that its activity is unrelated to the products for which the Complainant’s trademarks are registered is ill-founded. Indeed, the Policy does not require that the products and/or services in connection with which the domain name is used be identical or similar to the goods and/or products for which the Complainant’s trademark is registered.

Therefore, the Panel finds that the Respondent registered and used the domain name in bad faith.

 

7. Decision

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, <absolut-skishop.com>, be transferred to the Complainant.


Fabrizio La Spada
Sole Panelist

Dated: June 8, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0383.html

 

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