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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Double Eagle Brands N.V. v. Domain Discreet / Louis P. Bouzianis
Case No. D2009-1399
1. The Parties
The Complainant is Double Eagle Brands N.V. of Willemstad, Curaçao, The Netherlands Antilles, represented by De Brauw Blackstone Westbroek N.V., The Netherlands.
The Respondent is Domain Discreet of Funchal, Madeira, Portugal / Louis P. Bouzianis of Saco, Maine, United States of America, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <ketelonevodka.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2009. On October 21, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On October 21, 2009, Register.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2009, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 28, 2009. 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" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Respondent`s informal communications in reply to the Complaint were received by email on October 28 and November 16, 2009.
The Center appointed Francine Tan as the sole panelist in this matter on November 26, 2009. 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 has trademark registrations for the trademark KETEL ONE for inter alia, alcoholic beverages in the following territories: the United States of America, the European Community and in the Benelux. The Complainant has a website at "www.ketelone.com."
The disputed domain name was registered on April 13, 2004.
5. Parties` Contentions
The bases of the Complaint are as follows:
(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights
The Complainant asserts that the KETEL ONE trademark has been intensively used in commerce worldwide since 1983, including in the United States and in Europe. Considerable time, effort and expense have been expended in advertising, promoting and selling alcoholic beverages and specifically, premium vodka, under the KETEL ONE trademark. In 2005, approximately USD17.9 million was spent on advertising for the KETEL ONE trademark in the United States alone. As a result, the KETEL ONE trademark has become a famous global brand and KETEL ONE is the 8th largest selling brand of vodkas in the United States.
The disputed domain name is phonetically and visually confusingly similar to the Complainant`s registered trademark, KETEL ONE. The additional word "vodka" in the disputed domain name describes the product in respect of which the trademark is used and would thus confirm the incorrect assumption of Internet users that they are visiting the official website of the producer of Ketel One vodka.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
In this regard, there is no evidence that the Respondent is using, or planning to use, the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services. Although the disputed domain name was registered more than five years ago, no actual website is provided at this address. Instead the domain name is held passively. The webpage at "www.ketelonevodka.com" links visitors to a domain name "parking page" featuring pay-per-click (pop up) advertisement and links including those of competing brands.
Further, the Respondent is not commonly known by a name similar to the disputed domain name and the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain or without misleading to divert consumers.
(iii) The domain name was registered and is being used in bad faith
At the time the disputed domain name was registered, the KETEL ONE trademark was already well known worldwide, having been used for almost 20 years, and had by then been registered in many countries throughout the world. As the Complainant and/or its affiliate companies had registered the top level domain names <ketelone.com>, <ketelone.net>, <ketelone.org> and <ketelone.info>, the Respondent should have known of the existence of the KETEL ONE trademark prior to registering the disputed domain name. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the KETEL ONE trademark.
The disputed domain name was clearly registered with the intention to sell it to the official trademark holder of the KETEL ONE brand and this is evidenced by the fact that Mr. L Bouzainis, the former/indirect owner of the disputed domain name sent emails to the Managing Director of the Complainant company on June 13, 2009 and July 5, 2009 to offer to sell the disputed domain name for 10,000 euros.
The Respondent has been intentionally causing initial interest confusion so that visitors hoping to find the Complainant`s official website are led to the Respondent`s domain name "parking page" which only offers unrelated pay-per-click advertisements and links. The Respondent is acting in bad faith by exploiting the reputation and goodwill of the Complainant and its KETEL ONE trademark, particularly in relation to vodkas.
The Respondent did not file a formal Response in the manner prescribed under the Rules but sent an email to the Center on November 16, 2009, in which he stated, inter alia, that the email should "serve as [his] response to the complainant and [the] panel" and that the "intention at the time was to create a fan website, unfortunately some things came up in my life and I did not have the time to set up and maintain the site. I have offered the domain site to Ketel One for $10,000 Euros; but I am unsure weather this offer was presented to Mr. Conjin`s client. Unfortunately, the complainant has incurred more costs as a result."
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant`s trademark or service mark;
(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.
On a preliminary matter concerning the issue of whether a Response can be said to have been filed by Louis P. Bouzianis, the Panel finds that whilst in fact, a response was submitted to the Center, however, the said email of November 16, 2009 fell short of constituting a valid Response that the Panel can consider as it is does not comply with the requirements of the Rules. Rule 5 provides that:
"(a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.
(b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:
(i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name;
(vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and
(viii) Conclude with the following statement followed by the signature of the Respondent or its authorized representative:
вАШRespondent certifies that the information contained in this Response is to the best of Respondent`s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.`; and
(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents."
In the circumstances and in accordance with the Rules, the Panel will proceed to a decision on the basis of the Complaint alone and the Panel may draw such inferences from Respondent`s failure to comply with the Rules as it considers appropriate.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the trademark KETEL ONE which features in the disputed domain name. A principle that has been well established in previous panel decisions is that the addition of a generic or descriptive word does not serve to remove the confusing similarity between the trademark and the domain name where the former is incorporated entirely in the latter. Moreover in this case, the generic word "vodka" is the very product in respect of which the trademark KETEL ONE is used. It therefore renders the disputed domain name all the more confusingly similar to the Complainant`s trademark.
The Panel therefore finds that the first requirement of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances by which a respondent may show that it has rights or legitimate interests in the disputed domain name:
(i) before any notice to you 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 (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 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.
In this case the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name. Many panelists have held under the Policy that using a domain name which is similar to the Complainant`s trademark to direct internet users or consumers to a website, which then redirects onto sites offering products of the trademark owner`s competitors is not a bona fide use of the domain name. There is no evidence that has been tendered by the Respondent to show that he has a right or legitimate interest to the disputed domain name.
Accordingly, the Panel also finds that the second requirement of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel finds that registration in bad faith has been established on the facts. By the time the disputed domain name was registered, the trademark KETEL ONE had already been used for almost 20 years. Further, the fact that links to competitors` products are offered on the Respondent`s website cannot be coincidental and this is all the more so when the disputed domain name contains the reference to the product, vodka.
The circumstances in this case also lend to a finding that use of the disputed domain name has been in bad faith. In particular, the Panel finds that the evidence submitted by the Complainant is such as to indicate that the Respondent has "registered or вА¶ acquired the domain name primarily for the purpose of selling вА¶ or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark вА¶ for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy)"; and/or "by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location" (paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds that the third requirement of the Policy has been met.
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 <ketelonevodka.com> be transferred to the Complainant.
Dated: December 4, 2009