justeriniandbrooks.com

trademark no.

specification of goods and services

date registered

JUSTERINI & BROOKS

UK 579,075

Class 32:
De-alcoholized wines.

Class 33:
Wines, spirits and liqueurs.

17.11.1937

JUSTERINI & BROOKS

US 356,957

Class 33: Whisky

17.05.1938

JUSTERINI & BROOKS

CTM 628,701

Class 33: Wines, spirits and liqueurs.

15.05.1999

The Complainant is also the proprietor of other registered trademarks and trademark applications consisting of "JUSTERINI & BROOKS" which are listed in Annex G to the Complaint.

The domain name justeriniandbrooks.com was registered by the Respondent on June 24, 1999 through Register.com, Inc. Register.com is responsible for hosting the domain name and for hosting the website operated at www.justeriniandbrooks.com initially by the Respondent and subsequently substituted by a default home page provided by Register.com.

Additionally, the Complainant has made a number of contentions as summarized below.

The Complainant claims notoriety in the sign JUSTERINI & BROOKS for whisky and other alcoholic products. It asserts that, through continuous sales, advertising and promotion, JUSTERINI & BROOKS whisky has become the world’s second best-selling whisky and is one of the world’s top spirits brands by sales. Annex I to the Complaint comprises a small selection of advertising material showing the distinctive bottles and labeling for JUSTERINI & BROOKS or "J&B" whisky currently used by the Complainant. On each bottle, the sign JUSTERINI & BROOKS features prominently. Therefore, in addition to its registered trademarks in the United States and elsewhere (as set out above), the Complainant submits that it has common law trademark rights in and to the sign JUSTERINI & BROOKS in the United States and in many other countries. The sign JUSTERINI & BROOKS is highly distinctive.

JUSTERINI & BROOKS or "J&B" Whisky is sold in approximately 218 markets worldwide. A table showing worldwide and United States sales figures for JUSTERINI & BROOKS whisky from 1995 to 2000 is provided as Annex J to the Complaint. In the year ended 30 June 2000, the Complainant evidently sold over 6 million 9-litre cases worldwide and nearly 500,000 9 litre cases in the US. A table showing worldwide and US promotional and advertising expenditure from 1998 to 2000 is provided as Annex K to the Complaint. In the year ended 30 June 2000, the Complainant claims to have spent over Ł7 million on advertising and promotion in the USA and over Ł73 million worldwide.

The Complainant submits that the evidence of worldwide sales and marketing expenditure provided as Annexes J and K demonstrates that the JUSTERINI & BROOKS sign is exclusively associated with JUSTERINI & BROOKS products and the Complainant. The Complainant submits that the evidence provided of worldwide trademark registrations consisting of or containing JUSTERINI & BROOKS or "J&B", and the evidence herein of the Complaint’s reputation in JUSTERINI & BROOKS is relevant to the determination of this Complaint. The ".com" top level domain is not exclusively associated with United States entities or United States interests. Generally, any person in any jurisdiction (subject, of course, to any laws of such jurisdiction which may affect capacity of a resident to undertake such registration) may register a ".com" domain name and any person in any jurisdiction may access a website linked to a ".com" domain name.

The Complainant submits that the domain name in issue is identical to or alternatively confusingly similar with US Trademark No. 356,957. The only difference between the two signs is the way that the word ‘and’ is represented: being written as ‘&’ in US Trademark 356,957 and ‘and’ in the domain name in dispute. Further, as ‘&’ is not permitted to be used in a domain name, it is submitted that the two signs must be taken to be identical. When the words ‘Justerini & Brooks’ are used on the web-site originally resolved to by the domain name, ‘and’ was replaced by ‘&’ as shown in the copy at Annex L of the Complaint. The Complainant also submits that the domain name is identical to or alternatively confusingly similar with the sign JUSTERINI & BROOKS in which the Complainant submits it has common law trademark rights.

The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name in issue as, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it is not one which another trader would legitimately choose unless that trader sought to:

- create an impression of an association with the Complainant;

- create an impression of an association with JUSTERINI & BROOKS products;

- attract business from the Complainant;

- misleadingly divert members of the public; and/or

- damage the reputation and business of the Complainant.

The Complainant has not licensed or otherwise permitted the Respondent to use the JUSTERINI & BROOKS trademark or any other trademark incorporating "J&B". The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating JUSTERINI & BROOKS. The Complainant has submitted this Complaint as soon as possible after discovering the domain name in issue was registered by the Respondent. For these reasons, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

The Complainant submits that the domain name in issue was registered and is being used in bad faith by the Respondent.

The Complainant submits that the domain name in issue was registered by the Respondent in bad faith for two reasons. First, by virtue of the widespread use and reputation of the JUSTERINI & BROOKS trademark, members of the public in the United States and around the world would mistakenly believe that the registrant of the "www.justeriniandbrooks.com" domain name was the Complainant or was in some way associated with the Complainant. The Complainant submits that the Respondent must have been aware that in registering the domain name he was misappropriating the valuable intellectual property of the owner of the JUSTERINI & BROOKS trademark.

Secondly, the Complainant doubts that the Respondent ever intended to use the domain name in issue in good faith (assuming that is possible, which the Complainant denies).

The Complainant submits that the Respondent is using the domain name in bad faith for two reasons. First, until suspended by Register.com "justeriniandbrooks.com" resolved to the web site as shown in Annex L to the Complaint. The said web-site contained three matters, which were obviously designed to damage the reputation and business of the Complainant:

- the picture of an elderly woman giving an offensive gesture;

- the use of offensive language; and

- the hyperlinks to pornographic web-sites: Playboy; Playmate and Penthouse.

It is submitted that the only plausible reason why the web-site was created in this manner is to attract the attention of Justerini & Brooks Limited and to try and force Justerini & Brooks Limited into making an offer to buy the domain name from Mr/Ms Kolm. This would appear to be reflected in the incomplete address given by Mr/Ms Kolm which includes the words "Make an offer Kolm" as part of the address.

The second reason why the Complainant contends that the Respondent is using the mark in bad faith is that the web-site states:

Not only does this statement promote the excessive consumption of alcohol – something which is actively discouraged by United Distillers & Vintners, it also is clearly intended to confuse people who visit the site into believing that the web-site is connected to the Complainant. The signs JUSTERINI & BROOKS and ‘J&B Rare’ are also used on the web-site and this will add to the confusion.

Therefore, having regard to all the facts and circumstances, the Complainant submits that the domain name in issue was registered, and is being used, in bad faith.

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described above, the Complainant requests that "justeriniandbrooks.com" [sic] be transferred to the Complainant.

No Response to the Complaint was received from the Respondent.

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested 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.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must assess the Complaint on its merits.

This requires the Complainant to satisfy the Panel on two points. Firstly that the domain name is identical or confusingly similar to a trademark or service mark claimed by the Complainant and, secondly, that the Complainant does indeed have rights in the mark.

The first point may be established by comparison of the domain name and the claimed mark having regard to the context and circumstances in each particular case.

In the present case, the Complainant claims rights in the mark "Justerini & Brooks", and the domain name is "justeriniandbrooks.com". As the Complainant has observed, the distinctive part of the domain name, justeriniandbrooks, (save for the substitution of "&", which would not be a valid character in a domain name), is identical to the registered trade marks identified above. Accordingly, the Panelist considers that the domain name is essentially identical to the Complainant's mark.

The Complainant's entitlement to enforceable rights in a registered mark can readily be established and independently verified by reference to the official Trade Marks Register. The Complainant provided a copy of the US registration certificate and evidence to confirm that the US registration is in force and in the name of the Complainant. The Panelist has checked the Register records available on line to confirm that the UK and Community (CTM) registrations also remain in force and have not been surrendered or revoked.

The Complainant in fact listed a number of other registrations of "Justerini & Brooks" and a large number of other registrations of "J&B". However, this information did not assist the Complainant's case because the lists did not come from official sources, so that it was not possible to verify the ownership and currency of the listed registrations. (The "J&B" marks were not directly relevant to the domain name in any event.) In the Panelist's view, it is reasonable to expect that the standards to be applied to supporting evidence in cases brought under the Policy should be equivalent in form and extent to that which would be required in an opponent's evidence-in-chief in a trademark opposition brought on corresponding grounds. For example, the Community Trade Marks Office has issued helpful guidelines entitled "INFORMATION ABOUT EVIDENCE" as an Annex to a notice on "Substantiation of Earlier Rights in Opposition Proceedings" (available as a .pdf file at http://oami.eu.int/pdf/

marque/oppo3.pdf). These guidelines specify how to prove particulars required in an opposition case. In relation to prior registrations, the requirements include proof of ownership and validity and state expressly that "extracts from private records or databases are not acceptable". Acceptable proof may take the form "of extracts of records or official databases … either in paper or electronic form, provided they contain all the particulars of the registration."

However, the Panelist is satisfied that the Complainant has applicable rights in US and UK and CTM registrations listed above. Under the UK Trade Marks Act 1994, Section 72, registration provides prima facie evidence of validity and hence of the registered proprietor's entitlement to the rights conferred under Section 9 of the TMA1994.

The Complainant has also made the case that "Justerini & Brooks" is a uniquely distinctive name worldwide, and that the Complainant has sufficient reputation to support a claim to unregistered common law rights in the name, both in the US and the UK at the least.

Consequently, the Panelist is satisfied that the domain name "justeriniandbrooks.com" is identical or confusingly similar to a trademark in which the Complainant has rights. The requirements of Paragraph 4(a)(i) of the Policy are therefore met.

Paragraph 4(c) of the Policy helpfully provides some guidance as to some factors, which, if present may serve to demonstrate a legitimate interest in a domain name. Conversely, the absence of such factors may therefore be indicative of a lack of such an interest. The relevant indications are:

(i) before any notice to you [the 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 (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.

The evidence shows that the Respondent, had made no demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services. The domain name did in fact resolve to a web page which referred in a misleading and potentially damaging manner to the Complainant's name and products - hardly a bona-fide use.

The Panelist found that there are a number of other active websites including "justerini" and "brooks" in the domain name - all of which are operated, as would be expected, by the Complainant. These include: www.justerini-and-brooks.co.za; www.justerini-and-brooks.com; www.justerini-brooks.co.uk; www.justerini-brooks.co.za; www.justerini-brooks.com; www.justeriniandbrooks.co.za; www.justerinibrooks.co.za; www.justerinibrooks.com.

On the evidence, the Panelist agrees with the Complainant's submission that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it is not one which another trader would legitimately choose unless that trader sought to:

- create an impression of an association with the Complainant;

- create an impression of an association with JUSTERINI & BROOKS products;

- attract business from the Complainant;

- misleadingly divert members of the public; and/or

- damage the reputation and business of the Complainant.

Even now that Register.com has removed the Respondent's web page (which also carried a Register.com banner advertisement) and replaced it with Register.com's own default page, the Panelist considers it still misrepresents by implication that Register.com has some connection with the Complainant (e.g. as a service provider) - Register.com's page says "We recently registered our domain name at register.com", which plainly is not true of Justerini & Brooks Limited. No doubt Register.com would seek to rely on indemnity provisions (for what they may be worth) in their contract with the Respondent to insulate them from liability for the misrepresentation which is surely still made when a user seeking or expecting to find the Complainant by typing in "justeriniandbrooks.com" finds himself redirected to Register.com's default web page. In these circumstances, however, whilst the services offered by Register.com are no doubt entirely legitimate in themselves, the Panelist believes that this cannot legitimise the use of the domain name at issue in this case. Rather, insofar as the Complainant could have reasonable grounds for complaint that Register.com is benefiting from an implied association with the Complainant, which is implicitly confusing and misleading, it reinforces the view that the Respondent is certainly not using the domain name for bona fide purposes. In the Panelist's view, in this situation, it would be more accurate and appropriate if service providers like Register.com were to make it clear on any such substitute web page that the domain name is in fact the subject of a dispute and that Register.com has no association or connection with the Registrant (Respondent) or the Complainant (assuming that is actually the case) other than as the agent which recorded the registration of the domain name at the Registry.

The question of the possible, legitimate interests in a disputed domain name was one of the many relevant issues addressed at length in the leading UK case British Telecommunications & Ors. v. One in a Million Ltd. & Ors. in the Court of Appeal (the full Court of Appeal judgement is available at http://www.nic.uk/news/legal/oiam-appeal-judgement.html. In the judgement, Aldous L.J. wrote, in consideration of whether a [domain] name may be an illegitimate instrument of fraud:

"In my view there can be discerned from the cases a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. […] If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place…"

In the Panelist's analysis, the domain name in this case is one which, by reason of its similarity to the Complainant's name and mark, will inherently lead to passing off, such that it would be a potential instrument of fraud if used in any manner by any person, company or organisation other than the Complainant or with the Complainant's authority.

The Panelist therefore also concludes that the Respondent has no rights or legitimate interests in the domain name and the requirements of Paragraph 4(a)(ii) of the Policy are met.

Paragraph 4(b) of the Policy states, specifies, without limitation, that the following are evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

As Aldous L.J stated in the One in a Million case (supra) first in relation to Marks & Spencer in that case:

"The placing on a register of a distinctive name […] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered."

And in relation to the other plaintiffs:

"The trade names were well-known "household names" denoting in ordinary usage the respective [Plaintiff]. The appellants registered them without any distinguishing word because of the goodwill attaching to those names. It was the value of that goodwill, not the fact that they could perhaps be used in some way by a third party without deception, which caused them to register the names. The motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents. The value of the names lay in the threat that they would be used in a fraudulent way. The registrations were made with the purpose of appropriating the respondents' property, their goodwill, and with an intention of threatening dishonest use by them or another. The registrations were instruments of fraud and injunctive relief was appropriate just as much as it was in those cases where persons registered company names for a similar purpose."

In the Panelist's opinion, the evidence in this case is more than sufficient to demonstrate the Respondent's bad faith use and registration of the domain at issue, consistent with Paragraphs 4(b)(i) and (iv) of the Policy. The Panelist agrees with the Complainant's submission that the only plausible reason why the Respondent registered the domain name and created its web-site was evidently to attract the attention of Justerini & Brooks Limited and to try and force the company into making an offer to buy the domain name from the Respondent. This is amply demonstrated by the Respondent's use of a false postal address, which expressly invites anyone investigating the registration to "Make an offer Kolm".

This is just another variation of the sort of illegitimate conduct which was condemned by the Court of Appeal in the One in a Million case (supra).

The Panelist concludes that the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.

As an observation, the Panelist considers that in situations like this, it is clearly unsatisfactory that the real identity and locus of bad-faith registrants like "jokolm" and "JCR co." can be hidden behind a false address even though Register.com presumably had information which would have enabled the Respondent to be properly identified for Register.com's own billing purposes [e.g. a verified credit card billing address] when the domain name was registered, so that it should not have been necessary to undertake further enquiries to track down the Respondent/Registrant's actual identity. Register.com's Registration Agreement contains the provision that "willfully providing inaccurate or unreliable information or willfully failing to update information promptly will constitute a material breach of this Agreement that will be sufficient basis for cancellation of your domain name registration". It is to be hoped that now Register.com is aware of the use of a false registration address by "jokolm" aka "JCR co" aka "Colmenar" it will be diligent about enforcing this particular provision of its agreement against any other registrations which may have been made by this Respondent through Register.com.

In cases like this it is also very unsatisfactory that Registrar.com's WHOIS reportedly does not show the actual Registrant's details, so that a Complainant cannot even find out who the recorded Registrant may be until after a Complaint has been filed. This does not promote the resolution of disputes without recourse to formal proceedings and only serves to assist the unscrupulous Registrant. It is further unsatisfactory that Register.com's WHOIS does not enable identification of all the registrations which a Respondent may hold. (In contrast, it is possible, for example, to search to a limited extent by a Registrant's name on the Network Solutions WHOIS). Such a facility assists in consideration of whether a Respondent in a particular case has exhibited a pattern of conduct which would support a conclusion of bad-faith registration, or conversely, if no such pattern is evident, may support a Respondent's claim to the contrary. It is readily possible to identify online the registered owner of any trade mark on the UK or US registers and all other trade mark registrations also held in that party's name, for example, and the Panelist sees no reason why it should not generally be possible to identify the formal Registrant (even if only a nominee agent for service, provided the nominee agent has valid contact details) of any domain name and all other domain names registered to that Registrant by any Registrar.

In the present case, for the reasons explained in Section 6 above, the Panelist concludes that each of the requirements of Paragraph 4(a) have been met. Accordingly, the Panelist requires that the domain name registration "justeriniandbrooks.com" be transferred to the Complainant.

Keith F.Gymer
Sole Panelist

Dated: December 11, 2000