The Complainant is the Swedish company, V&S Vin & Sprit AB (publ), Stockholm, Sweden, represented by Fredrik Steigård, Stockholm, Sweden.
The Respondent is Ooar
Supplies, Grimsby, United Kingdom of Great Britain and Northern Ireland, represented
by David Law, United Kingdom of Great Britain and Northern Ireland.
2. The Disputed Domain Name and Registrar
The disputed domain name <absolutxxx.com> (the “Disputed Domain
Name”) is registered with eNom Inc. (“eNom”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2004.
On November 15, 2004, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Disputed Domain Name at issue.
On November 17, 2004, eNom transmitted by e-mail to the Center its verification response with a reference to the “Whois” information on their website “www.enom.com” where the Respondent is listed as the registrant of the Disputed Domain Name and provided the contact details for the administrative, billing, and technical contact.
The Center verified on November 23, 2004, 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 November 23, 2004.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2004. The Response was filed with the Center on December 12, 2004.
The Center appointed Dr. Kamen Troller to sit as sole panelist on the Panel (the “Panel”) in this matter on December 17, 2004.
The Panel finds that it was properly constituted.
The Panel submitted on December 16, 2004, 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 joint stock company founded 1917, and owned by the Swedish government. The company manufactures, imports and distributes alcoholic beverages and is a significant player on the global alcohol market with operations in several countries. Figures from year 2000 show that the Complainant is the world’s eight largest alcoholic beverage distributor in terms of sales volume. The Complainant has approximately 2,200 employees and sales in 2003 amounted to SEK 9.3 billion.
The Complainant is the owner of the trademark “ABSOLUT”, which has been registered in the European Community, in the USA and in several other jurisdictions. The Complainant has also registered the trademark as a domain name in about 500 gTLDs and ccTLDs worldwide, among these: “www.absolut.com”, which is a widely recognized website.
Sales of vodka under the trademark ABSOLUT commenced in the USA in 1979 and in Sweden and other parts of Europe around 1980-1981. The trademark ABSOLUT has become well-known worldwide. In 2001, ABSOLUT was ranked as the 93rd most valuable trademark asset in the world and as number 1 on Forbes list of Top Luxury Brands according to marketing performance. ABSOLUT has also been ranked the 3rd best selling trademark for premium spirits all categories on a worldwide basis according to a market survey made by Impact in 2003, (a copy of which has been submitted as an annex to the Complaint).
The Respondent registered the Disputed Domain Name with eNom on March 28, 2003. The Disputed Domain Name directs Internet users to a pornographic website. The Respondent is the owner of nearly 100,000 websites.
By e-mail dated September 22, 2004, the Complainant informed the Respondent of its rights to the trademark ABSOLUT and stated that the Respondent’s registration of the Disputed Domain Name was considered as an infringement of the Complainant’s trademark.
The Complainant invited the Respondent to resolve the dispute in an amicable way and requested the Respondent to respond before October 15, 2004.
A response was sent to the Complainant on September 22, 2004, in which the Respondent claimed that the Disputed Domain Name did not infringe the Complainant’s trademark and that he was not willing to stop using it.
On November 15, 2004, the Complainant initiated these proceedings.
5. The Parties’ Contentions
A. The Complainant
The Complainant has requested that the Disputed Domain Name be transferred to the Complainant in accordance with Paragraph 4(i) of the Policy.
The Complainant’s allegations can be summarized as follows:
i) Identical or Confusingly Similar
The Complainant states that in several previous UDRP decisions, it has been
confirmed that the trademark ABSOLUT is a well-known trademark. In this respect,
the Complainant cites the V&S Vin & Sprit AB v. Canal Prod Ltd,
WIPO Case No. D2002-0437, page 4, where
the Panel found that: “the Complainant’s trademark is distinctive
and that it is also a very well-known mark.”.Similarly, in V&S
Vin & Sprit AB v. Oliver Garcia, WIPO
Case No. D2002-1081,page 4, it was held: “the Panel accepts
that the trademark ABSOLUT has to be considered as a well-known trademark.”.
Also in cases V&S Vin & Sprit AB v. Mattias Nordin Swesys, WIPO
Case No. DNU2002-0001, page 9 and V&S Vin & Sprit AB v. Giovanni
Pastore, WIPO Case No. D2002-0926,
page 3 the Panel confirmed that the trademark ABSOLUT is to be considered as
a well-known trademark.
The Complainant further argues that according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered).
On this basis, the Complainant contends that the protection of ABSOLUT goes far beyond vodka and goods similar to vodka.
The Complainant also contends that the dominant part of the Disputed Domain Name <absolutxxx.com> comprises the word “Absolut”, which is identical to the worldwide registered trademark ABSOLUT.
The Complainant states that the Disputed Domain Name is nearly identical and/or confusingly similar to the Complainant’s famous trademark ABSOLUT, and that the mere addition of the suffix “xxx” and “.com” does not have any impact on the overall impression of the dominant portion of the name “Absolut”, which is instantly recognizable as one of the most famous trademarks in the world.
The Complainant argues that the website is entirely in English, and it clearly targets an international group of visitors that see the word “Absolut” together with just the term “xxx” and any of these customers are bound to get confused with the Disputed Domain Name of the Respondent and will certainly relate it to the Complainant. With reference to the fame of “Absolut” there is a considerable risk that the common public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The Complainant further argues that the trademark will also be seriously tarnished if it will be connected with the Disputed Domain Name and the websites linked thereto,.
According to the Complainant, by using “Absolut” as a portion of the Disputed Domain Name, the Respondent exploits the goodwill and the image of “Absolut”, which may result in dilution and other damage for the Complainant in its capacity as brand owner.
ii) No rights or legitimate interests of the Respondent
In regard to this Policy requirement, the Complainant states that it has neither found any listed company in the UK under the trade name “ABSOLUTXXX” nor any registered trademarks corresponding to the Disputed Domain Name registered by the Respondent.
The Complainant further contends that the Respondent registered the Disputed Domain Name on March 28, 2003, which is subsequent to when the vast majority of the Complainant’s trademarks proceeded to registration. In support of this allegation, the Complainant has submitted a list of the Complainant’s registered trademarks showing that most of them have been registered in the period between 1983 and 2001.
Specifically, the Complainant states that the Disputed Domain Name was registered after the Complainant registered the trademark ABSOLUT in the UK in 1992, in the US in 2002, and as a community trademark in 2001. In this regard, the Complainant has submitted copies of registration certificates from the trademark registers in these jurisdictions.
The Complainant furthermore contends that ABSOLUT became internationally recognized as a famous mark long before the registration of the Disputed Domain Name.
The Complainant also alleges that there are no indications that the Respondent has conducted any prior business under the name “Absolutxxx” in connection with the bona fide offering of goods and services and that the Respondent has no connections to the word “Absolut”, and that the Disputed Domain Name cannot be said to be a nickname of the Respondent or in any other way identified with or related to any legitimate interest of the Respondent.
The Complainant alleges further that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Absolut”, and that the Respondent therefore cannot claim to have been using “Absolut”, without being aware of the Complainant’s rights to it.
The Complainant contends in this regard that the awareness of ABSOLUT as a trademark for vodka is extremely high worldwide, for example in UK where the Respondent is registered the brand awareness is 90 % according to a brand tracking survey made 2003, by Research International, a copy of which has been submitted by the Complainant.
The Complainant further asserts that there is no connection, co-operation or relationship between the Complainant and the Respondent that would give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s famous trademark ABSOLUT.
Also, the Complainant states that the Respondent has registered the Disputed Domain Name in order to attract Internet users to its pornographic website and is thereby tarnishing the trademark ABSOLUT.
In this regard, the Complainant contends that there is no logical reason for the Respondent’s choice of the Disputed Domain Name, other than to use a famous brand in order to attract visitors to the website in that the word “absolut” has no meaning in the English language, it would be more logic if the Respondent, being a UK citizen, registered the corresponding word in English “absolute” instead of using the Swedish term “absolut” or to choose a domain name with either only sexually related words, which would better reflect the content of the website.
iii) Registered and used in bad faith
In regard to this Policy requirement, the Complainant contends that the trademark ABSOLUT has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
The Complainant emphasizes that the considerable value and goodwill of the mark ABSOLUT cannot have been unknown to the Respondent, and that this knowledge is what made the Respondent register the Disputed Domain Name.
The Complainant alleges that the Respondent’s own actions demonstrate that the Disputed Domain Name was registered and is used in bad faith, in that the fact that the Respondent has registered, without authorization, a domain name that fully incorporates the Complainant’s famous trademark ABSOLUT in itself is evidence of bad faith.
The Complainant also argues that the Respondent should have registered a domain name, which better corresponds to the content of the websites, (e.g. with only sexually associated words), or that the Respondent should have used the English term “absolute” instead of the Swedish term “absolut”
Further, the Complainant alleges that the fact that the Disputed Domain Name resolves to a website promoting pornographic products and services in connection with the well-known trademark ABSOLUT severely tarnishes the Complainant’s trademark, which is also evidence of bad faith use.
With regard to the question of “non-commercial use”, the Complainant contends that the Respondent’s use of the website must be considered to be commercial as it provides links to websites offering sex products and services. Specifically, the links redirect users to the websites “www.adultlingerieuk.com”; “www.bdsm-lingerie.com” and “www.absolutxxx.com/phone-sex/phone-sex.html”, which are owned and managed by the Respondent. In support of this allegation, the Complainant has submitted copies from “Whois” for “www.adultlingerieuk.com” and “www.bdsm-lingerie.com” demonstrating that that these websites are owned by the Respondent and its representative, Mr. David Law respectively.
The Complainant finally contends that paragraph 4(b)(iv) of the Policy does
not require a demonstration that the Complainant has suffered or would be likely
to suffer harm as a consequence of the domain name. It is sufficient to show
that the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to the Respondent’s websites by creating a likelihood of
confusion with the Complainant’s famous mark as to the source, sponsorship,
affiliation or a product or service on the website. In this regard the Complainant
inter alia refers to the decision in case V&S Vin & Sprit AB v. Oliver
Garcia, WIPO Case No. D2002-1081.
B. The Respondent
The Respondent has requested the Panel to deny the remedies requested by the Complainant.
The Respondent’s allegations can be summarized as follows:
i) Identical or confusingly similar
The Respondent emphasizes that the Disputed Domain Name in this matter, as opposed to the domain names, <absolut-sexe.com>, <absolut-sexo.com>, <absolut-x.com>, etc. which were at issue in the previous UDRP decisions, is not hyphenated. A non-hyphenated domain name like <absolutxxx.com> will not result in an increase of visitors to a website searching for the word “absolute” alone.
The Respondent states in this regard that he had no interest in the “absolut” Search Engine Result Page (“SERP”), and that the Disputed Domain Name is not in the top 20 for a search for “absolut” in Google.
The Respondent further states that the trademark ABSOLUT is described in Complainant’s Annex 11 to the Complaint as follows: “The mark consists of the stylized term ABSOLUT shown in the color red….. Applicant claims the color red as a feature of the mark.” The precise mark ABSOLUT (in any colour) is not found anywhere on the website linked to the Disputed Domain Name, nor within the meta tags, the title, the body text or even as an image. The Respondent argues that the only reference to the word “absolut” is as part of the domain name <absolutxxx.com>.
The Respondent explains that the word “absolutxxx” is not found within the meta tags etc. since it is of no interest to him as a search term, in that he is not looking to gain Internet traffic for either “absolut” or “absolutxxx” or any derivative phrase since they have no relevance to the content of his website linked to the Disputed Domain Name. According to the Respondent he is only interested in “porn SERPs”.
The Respondent further alleges that the only place one will find the word “absolutxxx” is as part of the “link structure”, which is not seen by the visitors to the website and that he could host the website at issue on almost any domain name as long as it was “adult” i.e. had the letters “xxx” or the word “porn” within it.
Further, the Respondent argues that in order for there to be an infringement the use of the word “Absolut” on the website must be in a way that results in confusion in regard to the website being owned by or affiliated with the trademark owner before a visitor sees the content of the website.
In this regard, the Respondent contends that the Complainant’s website is about vodka and other spirits whereas his website is about pornography and sex. There is thus nothing about the Respondent’s website that could result in a visitor believing that it is affiliated with the Complainant, he argues.
The Respondent lists some of the Complainant’s marks, ABSOLUT, ABSOLUT VODKA, ABSOLUT CITRON, ABSOLUT VANILIA etc., and indicates that it is unlikely that an Internet user could confuse the Disputed Domain Name when looking for these marks. Furthermore, the Respondent alleges that none of these marks are within the content of the website at issue. According to the Respondent, the closest match is likely “Vanilia” in that there is a phrase spelt “Vanilla Sex” on his website.
The Respondent states that no visitors looking for the Complainant’s website will find their way to his website. According to the Respondent, a search on Google for “absolutxxx” leads to the following search result:
Free Porn Pictures Free - Free Porn, Magazines and Ezines
Free Porn Pictures Free. Free Porn TGPs and Premium Porn Sites. Below
you’ll find links to premium porn sites with links to associated ...
www.absolutxxx.com/free-porn-04.html - 11k - Cached - Similar pages
[ More results from www.absolutxxx.com ]”,
whereas a Google search for “absolut” leads to the following result:
“ABSOLUT.COM - The Official ABSOLUT Website
The official Absolut Vodka Website serves up cocktail
recipes, the ads, the bottle and more.
www.absolutvodka.com/ - 4k - December 10, 2004 - Cached - Similar pages”.
The Respondent emphasizes that of the 900 pages listed when searching for “absolut” in Google not one is from the Disputed Domain Name. Also, the Respondent states that he has checked the logs for the Disputed Domain Name and that not one visitor had found it from a search for “absolut” or “absolut***” (where *** is any word). The site only receives visitors looking for porn, according to the Respondent.
Furthermore, the Respondent disagrees with the Complainant’s statement: “The dominant part of the domain name <absolutxxx.com> comprises the word “ABSOLUT”, which is identical to the registered trademark ABSOLUT.” According to the Respondent, the suffix “xxx” is the most important part of the Disputed Domain Name since the website which it resolves to is about sex. Since the Complainant does not offer sex related services the domain name <absolutxxx.com> cannot be mistakenly affiliated with the Complainant’s trademark, the Respondent maintains.
ii) No rights or legitimate interests of the Respondent
In regard to this Policy requirement, the Respondent argues that he has been using the Disputed Domain Name since registering it in March 2003, after finding it on a list of deleted domain names.
The Respondent explains that at that time the “Page Rank” of a deleted website was transferred to the new owner, which would give the website a “boost in the search engine Google”, which is why he registered the already existing Disputed Domain Name rather than a new domain name such as <absolut-xxx.com> or better still <free-porn-xxx.com>.
The Respondent also explains that most traffic to the Disputed Domain Name is from his websites, which are used to sell lingerie.
Further, the Respondent alleges that until he received the Complaint he had not heard of Absolut Vodka or the company who owns the trademark. The Respondent explains that he had never conducted a trademark search before, but he would not knowingly register a domain that could result in an infringement.
The Respondent also states that he has been “teetotal” for over 15 years and prior to that he was a “lager drinking teenager”. On this basis the Respondent argues that he is not within the demographic circle of those who would recognize the ABSOLUT mark.
The Respondent submits that he had no idea that “absolut” was a Swedish word. He states that he assumed that whoever registered the Disputed Domain Name before him had meant “Absolute XXX”.
The Respondent further argues that a significant amount of Internet users appear
to associate the word “absolut” to pornographic websites or other
“non-Vodka sites”. In support of this allegation, the Respondent
provides statistical information including a list of search result for the word
“absolut” from the following search engine: “www.inventory.overture.com/d/searchinventory/suggestion”.
The Respondent contends that these statistics show that the searching public also sees the word “absolut” associated with other things than vodka, including music, sex, poker etc.
iii) Registered and used in bad faith
In regard to this requirement, the Respondent states that he did not intentionally set out to tarnish the Complainant’s trademark and that it should be clear from the website statistics that the traffic to the Disputed Domain Names is in fact generated by searches for pornographic materials. On this basis, the Respondent contends that he is not “confusing the search engines or their users”.
The Respondent reiterates that a search for “absolut” on Google does not lead to the website linked to the Disputed Domain Name and that since he is not trying to attract visitors looking for the word “absolut”, he is not using the Disputed Domain Name in bad faith.
Finally, the Respondent states that he has no intention of optimizing the website
for the absolut or absolut vodka SERPS, so as long as he owns the Disputed Domain
Name, the Complainant does not have to be concerned with his website taking
traffic intended for the Complainant.
6. Discussion and Findings
A. Procedural Matters
There are no specific procedural matters to be determined.
B. Substantive Matters
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names has been registered and is being used in bad faith.
i) Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of the trademark ABSOLUT.
The Complainant alleges that the Disputed Domain Name <absolutxxx.com> is identical or confusingly similar to this trademark.
The Respondent alleges that there is no risk of confusion between the Disputed Domain Name and the trademark ABSOLUT.
In the assessment of whether a domain name and a trademark are confusingly
similar, all relevant circumstances must be taken into account, in particular,
the degree of oral, visual or conceptual similarity between both terms, the
similarity of the goods or services they are used for, and the distinctiveness
the trademark has either per se or by virtue of the mark’s recognition,
see Dr. Ing. h. c. F. Porsche AG v. The Training Shed, WIPO
Case No. D2003-0644, and Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl,
WIPO Case No. D2001-0079.
The Panel considers that:
The Complainant’s trademark, ABSOLUT, is embodied in and forms a distinctive
part of the Disputed Domain Name. The Panel does not agree with the Respondent
that the suffix “xxx” is the most important part of the Disputed
Domain Name. The addition of the suffix “xxx” and “.com”
to the Complainant’s trademark in the Disputed Domain Name do not prevent
confusion, which is both phonetic and visual. This has been established in many
previous Panel decisions, including the ones cited by the Complainant, see for
instance V&S Vin & Sprit AB v. Canal Prod Ltd., WIPO
Case No. D2002-0437. The disputed domain names in this case were <absolut-sexe.com>,
<absolut-sexo.com> and <absolut-x.com>. The Panel found the domain
names to be confusingly similar with the Complainant’s trademark ABSOLUT
and stated that it agreed “with the Complainant that the additions do
not prevent the impact on the overall impression of the Domain Names that they
have some sort of connection with the Complainant. The additions lack distinctiveness
and are not sufficient to give the Domain Names an individual meaning.”
The Panel also refers to V&S Vin & Sprit AB v. Oliver Garcia,
WIPO Case No. D2002-1081 regarding the
Disputed Domain Name <absolutsexo.com>, where the Panel also found the
domain name to be confusingly similar with the Complainant’s trademark
ABSOLUT.
The Panel further observes that if the suffix “xxx” in fact had
been the most important part of the Disputed Domain Name, as alleged by the
Respondent, the Respondent could have chosen a domain name beginning with these
letters. In this regard the Panel notes the Panel’s decision in PepsiCo,
Inc. v. Amilcar PerezLista d/b/a Cybersor, WIPO
Case No. D2003-0174, where the Panel found that the domain names <pepsix.com>
and <pepsixxx.com> were confusingly similar to the Complainant’s
trademark “PEPSI”. In this case the Panel stated: “The domain
names at issue, are identical or confusingly similar to the trademark PEPSI,
in which the Complainant has rights. The addition of the letters “x”
and “xxx“ and of the suffix “com”, which is the only
difference between the domain names <pepsix.com> and <pepsixxx.com>
and the trademark PEPSI, is an irrelevant distinction, which does not change
the likelihood of confusion.”
The Complainant’s trademark, ABSOLUT is a well-known trademark, as established
in the above-cited previous Panel decisions, see for example V&S Vin
& Sprit AB v. Canal Prod Ltd., WIPO
Case No. D2002-0437andV&S Vin & Sprit AB v. Oliver Garcia,
WIPO Case No. D2002-1081.
Because the Complainant’s trademark is a well-known trademark, it enjoys
a protection which goes beyond vodka and similar beverages, in accordance with
Article 6bis of the Paris Convention for protection of Industrial Property (“PC”)
and Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects
of Intellectual Property Rights (“TRIPS Agreement”), see the Panel’s
decision in Pfizer inc. v. Blue Viagra, WIPO
Case No. D2004-0732 (par. 6.5.10). It is therefore not relevant whether
or not there is a risk of confusion in regard to the goods or services associated
with the Complainant’s trademark and the Disputed Domain Name (as argued
by the Respondent). Nor is it relevant that many Internet users, as evidenced
by the statistics presented by the Respondent, clearly associate the word “Absolutxxx”
with pornographic websites or websites with another content than Vodka. Nor
is it relevant that the website linked to the Disputed Domain Name does not
receive any Internet traffic from visitors looking for Vodka. Due to the fact
that ABSOLUT is a well-known trademark, only the Complainant has the right to
use it, for instance, if it so wishes, in relation to the promotion of the same
goods and services, which the Respondent is using it for. The Panel cites in
this regard Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,
WIPO Case No. D2001-1314, where it was
established that any use of a well-known trademark in a domain name would violate
the rights of the trademark owner. The panel stated that: “given the notoriety
of the Complainant’s Deutsche Bank Mark, any use which the Respondent
would make of any domain name, as here, that incorporated the Complainant’s
Deutsche Bank Mark, or one confusingly similar thereto, would likely violate
the exclusive trademark rights which the Complainant has long held in its mark.”
The Panel emphasizes that it is not the risk of confusion between the Disputed
Domain Name and the websites registered by the Complainant, which is at issue
in this matter. The Panel agrees with the Respondent that, it is not likely
that an Internet search for the word “vodka” or the trademark ABSOLUT
will lead to the Respondent’s website. However, this fact is unimportant.
The important point is that the Disputed Domain Name incorporates the Complainant’s
trademark, and thereby creates a risk that Internet users, who visit the website
linked to the Disputed Domain Name may think that there is some sort of affiliation
with the Complainant or that the Complainant has given an authorization to use
its trademark on a pornographic website or that the Complainant is active in
the field of pornography. See in this regard V&S Vin & Sprit AB v.
Mattias Nordin, WIPO Case No. DNU2002-0001
and Pfizer inc. v. Blue Viagra, WIPO Case No.
D2004-0732.
The Panel does not agree with the Respondent’s argument that there can
only be an infringement of the Complainant’s trademark if the use of the
word, “Absolut”, in the site is created in a way that results in
confusion. The mere fact that the Complainant’s well-known trademark is
used in the Disputed Domain Name amounts to an infringement, as held in Deutsche
Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO
Case No. D2001-1314 and in Pfizer inc. v. Blue Viagra, WIPO
Case No. D2004-0732. It is thus irrelevant in regard to this policy requirement
that the Complainant’s protected word mark or even the word “Absolut”
do not appear on the website linked to the Disputed Domain Name.
Finally, the Panel agrees with the Complainant’s argument that the fact
that consumers, visiting the Respondent’s website, may soon realize that
the Complainant has nothing to do with it, has no bearing on the fact that the
Respondent still already misleadingly has diverted the consumers to the website.
In this regard, the Panel cites the decision in V&S Vin & Sprit AB
v. Mattias Nordin, WIPO Case No. DNU2002-0001,
where the Panel, after having established that the activities could “not
be considered to be a legitimate non-commercial or fair use of the Disputed
Domain Name without intent for commercial gain or to misleadingly divert consumers
to Respondent’s own website” went on to state that: “from
this point of view it is of no relevance that any potential customer visiting
the website “absolut.nu” would very soon realise that the site did
not deal with the activities of Complainant; Respondent has at that stage already
obtained users´ interest for the website and possibly for Respondent’s
own activities.”
Accordingly, in regard to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
ii) Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the Disputed Domain Names by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) 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.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent contends that he does have a right or a legitimate interest in the Disputed Domain Name.
The Panel considers that:
With regard to paragraph 4(c)(i) of the Policy, the Panel is aware that Respondent is offering under the disputed domain name pornographic and other goods as well as links to other pornographic websites – therefore he fulfills that part of the requirement of art. 4 (c) (i) – however, by making such offer under the name “abolut”, he is not acting in a bona fide manner, as will be established hereafter.
In regard to paragraph 4(c)(ii), the Respondent has not shown that he has become commonly known by the Disputed Domain Name. In this regard the Panel notes that the Respondent by his own submissions owns close to 100,000 websites, that the traffic on the website linked to the Disputed Domain Name has “never done well in the search engines”, that most of the visitors to the website, ”www.absolutxxx.com”, come from the Respondent’s “lingerie websites”, “www.bdsm-lingerie.com” and “www.adultlingerieuk.com”, that the Respondent operates under the name “Ooar Supplies”, and finally that the Disputed Domain Name was only registered on March 28, 2003. Under these circumstances, it is not plausible that the Respondent has become commonly known by the Disputed Domain Name.
In regard to paragraph 4(c)(iii), the Panel considers that Respondent does not make a non commercial use of the domain name; he is intending to make commercial gains and the use of a famous trademark cannot be considered as constituting a “fair use”.
On this basis, the Panel determines that the Respondent does not have established that he has a right or legitimate interest in the Disputed Domain Name according to paragraph 4(c) of the Policy.
iii) Registered and Used in Bad Faith
Paragraph 4(a) (iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.
The Panel considers that:
The Respondent does not fall into the categories of bad faith registrants and users of domain names listed in paragraphs 4(b)(i)-(iii) of the Rules.
However, the Panel considers that the Respondent has intentionally attempted to take advantage of the Complainant’s famous trademark in the sense of paragraph 4(b)(iv) of the Rules.
Indeed, even if, as the Respondent alleges, he was not familiar with the ABSOLUT trademark because he never drank strong alcoholic beverages, this would not have dispensed him, prior to registering a new domain name, from making a search to find out whether the chosen name was already registered as a trademark. This even more so that the Respondent is an experienced and expert domain name and Internet user and therefore knows or should know that as a general rule he must not use a trademark registered in favour of third parties as a domain name.
If the allegation of Respondent about his unawareness of the ABSOLUT trademark
of the Complainant were correct, then he committed a fault by omitting to search
the principal trademark registries or make even a simple search on Google, which
would easily have revealed that the trademark ABSOLUT existed and that the Disputed
Domain Name would infringe on this trademark if it were to be registered and
used. By not conducting such a basic research, the Respondent was ready and
willing to accept the risk that the domain name chosen by him was already registered
as a trademark and had gained as such a well known reputation. This attitude
is the classical case of “dolus eventualis” or “wilful blindness”,
which is equivalent to intent under most jurisdictions. The Respondent registered
the Disputed Domain Name in spite of knowing that there was a risk that this
could infringe on someone’s trademark. The Panel will certainly not endorse
such a conduct and other panels have refused to do so in many previous decisions,
see for instance V&S Vin & Sprit v. Canal Prod. Ltd., WIPO
Case No. D2002-0437.
The following facts lead the Panel to find that the Respondent intentionally attempted to attract users to his website by using the well known ABSOLUT trademark.
The Panel finds that the Respondent has an impressive knowledge of the Internet,
that he owns close to 100,000 websites and that he is an experienced search
engine optimization consultant. In light of these facts, even if it were credible
that the Respondent, as a consumer, had never heard of the Complainant’s
world famous trademark, it would not have taken him more that a simple search
on Google or any similar search engine to find out that the trademark ABSOLUT
existed and that the Disputed Domain Name would infringe this trademark if it
were to be registered and used. By omitting to make such a elementary search,
the Respondent’s registration and subsequent use of the word “Absolut”
must be considered as an act of bad faith. This is in line with previous UDRP
decision V&S Vin & Sprit v. Canal Prod. Ltd., WIPO
Case No. D2002-0437.
In light of ABSOLUT’s worldwide reputation, the Panel does not consider
it as plausible that the Respondent had not become aware of that trademark before
receiving the Complaint. To this end the Panel cites V&V Vin & Sprit
AB v. Wallin, WIPO Case No. D2003-0437,
where the Panel stated: “…the Respondent in this case cannot have
been ignorant about the trademark ABSOLUT, because of its fame in Sweden and
its world-wide reputation. Its advertising impact on the market will most certainly
have been evident even to a teetotaler in the backwoods”
The Panel finds that the Respondent’s explanation as to why he chose the Disputed Domain Name, namely because of its existing Page Rank; that he believed that the previous owner of the Disputed Domain Name had registered it with the word “Absolut” (spelled without an e) because the domain name <absolutexxx.com> (spelled with an e) was already taken and that he had no specific interest in the word “Absolut” being part of his domain name, and the Respondent’s commercial justifications for re-registering the Disputed Domain Name and his lack of interest in the word “Absolut” as a “SERP”-word, do obviously not legally justify the Respondent’s unauthorized use of the Complainant’s famous trademark.
The Panel does not agree with the Respondent’s argument that a search
for “Absolut” on Google does not lead to the website linked to the
Disputed Domain Name and that since he is not trying to attract visitors looking
for the word “Absolut”, and that therefore he is not using the Disputed
Domain Name in bad faith. The Panel does not agree with this line of argumentation.
As held in the above cited V&S Vin & Sprit AB v. Mattias Nordin,
WIPO Case No. DNU2002-0001 “it
is of no relevance that any potential customer visiting the website “www.absolut.nu”
would very soon realise that the site did not deal with the activities of Complainant;
Respondent has at that stage already obtained users´ interest for the website
and possibly for Respondent’s own activities.”
Finally, the Panel finds that the Respondent tarnishes the Complainant’s
famous trademark ABSOLUT by using it in a domain name which is linked to a pornographic
website and that this amounts to an act of bad faith. This has been held in
several previous Panel decisions concerning well-known trademarks, see for example
Motorola Inc. v. NewGate Internet Inc., WIPO
Case No. D2000-0079, where the Panel stated that: “while many adult
sex sites are perfectly legal and constitute bona fide offering of goods or
services, the use of somebody else’s trademark as a domain name (or even
as a meta-tag) clearly does not constitute a “bona fide”
offering of goods or services when the website owner has no registered or common
law rights to the mark, since the only reason to use the trademark as a domain
name or a meta-tag is to attract customers who were not looking for an adult
sex site, but were instead looking for the products or services associated with
the trademark. Such use of a trademark can create customer confusion or dilution
of the mark, which is precisely what trademark laws are meant to prevent. And
actions that create, violations of the law can hardly be considered to be bona
fide”.See also, the decision Deutsche Bank Aktiengesellschaft
v. New York TV Tickets Inc., WIPO Case
No. D2001-1314, where the Panel stated that even: “the possible resolution
of the Respondent’s website with a pornographic site, whatever the circumstances
under which this occurred is a tarnishment of the Complainant’s mark and
ongoing evidence of bad faith.” See finally also Benetton Group SpA
v. Domain for Sale., WIPO Case No. D2001-1498,
where the Panel stated “the use of Complainant’s trademark for a
domain name used for a website which directs Internet users to pornographic
websites also constitutes evidence of bad faith usage of the Disputed Domain
Name in question. (See also Ingersoll-Rand Co. v. Frank Gully, WIPO
Case No. D2000-0021). Such use tarnishes the distinctiveness and repute
of Complainant’s trademarks and in the circumstances of this case demonstrates
bad faith on Respondent’s part.”
Based on these considerations, the Panel finds that the Complainant in accordance
with paragraph 4(a)(iii) of the Policy has succeeded in proving that the Respondent
has registered and used the Disputed 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 Disputed Domain Name <absolutxxx.com> be transferred to the Complainant.
Dr. Kamen Troller
Sole Panelist
Dated: December 27, 2004
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