The Complainant is Boomerang Vodka Pty. Ltd., Melbourne, Victoria, Australia, represented by Hinman & Carmichael LLP, United States of America.
The Respondent is X Café LLC, Leawood, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <boomerangvodka.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2007. On November 7, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 16, 2007.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2007. The Response was filed with the Center on November 20, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 4, 2007. 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 parties (whether directly or indirectly) are both involved in the production and/or marketing of vodka.
On October 7, 2005, the Domain Name was registered.
On November 10, 2005, the Complainant filed its earliest application for registration of BOOMERANG as a trade mark (US application serial number 78751603) in class 33 for distilled spirits.
On June 26, 2006, the Complainant obtained its first registration of a mark incorporating the word ‘Boomerang’, namely Australian registration number 1086185 for BOOMERANG VODKA (words) in class 33 for spirits not including Brandy or Grappa. The registration dates back to November 16, 2005, which the Panel assumes to be the application filing date.
The Domain Name is connected to a webpage hosted by the Registrar and mainly featuring links to what purport to be sites associated with vodka.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its Australian registered trade mark cited above and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that, although the Domain Name registration pre-dates the Complainant’s earliest applications for registration of its BOOMERANG trade marks, it had started trading earlier than that in 2005 and acquired common law rights in addition to its registered rights. It further asserts that the Respondent had learnt of the Complainant’s trade mark through an Australian distiller with whom both parties had dealings.
The Complainant contends that the Respondent, a competitor, registered the Domain Name with the intention of blocking the Complainant and disrupting the Complainant’s business.
B. Respondent
The Respondent contends that the Complainant fails at the first hurdle, observing that the Complainant’s rights post date registration of the Domain Name and that the Complaint contains no evidence of any kind to support the existence of any relevant common law rights.
The Respondent contends that the Complainant has adduced no evidence in support of its claim that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that its use of the Domain Name to connect to the page hosted by the Registrar and devoted largely to vodka-related links constitutes a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent denies that the Domain Name was registered and is being used in bad faith and produces an affidavit signed by the Respondent’s ‘managing member’. In that affidavit the deponent explains why he selected the name (intention to import vodka from Australia). He started importing vodka from Australia in 2005, but opted instead for two other marks, namely BOMBORA and COORANBONG. The deponent goes on to deny the Complainant’s story as to how the Respondent decided upon the Domain Name and to state that when he registered the Domain Name, he was unaware that the Complainant intended to use ‘Boomerang Vodka’ as a brand for its products.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that
(i) The 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 in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant contends that it has common law rights in respect of the marks, BOOMERANG and BOOMERANG VODKA, which it started to use in 2005, before it applied for registration of those marks.
The Respondent correctly points out that the Complainant has produced no evidence at all to substantiate the existence of any such rights. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is to be found on the Center’s website, addresses this issue in paragraph 1.7, which contains the following passage:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
In the absence of any evidence as to the nature and extent of the Complainant’s trade, the Panel is unable to make any finding of common law rights.
However, there is no dispute between the parties that the Complainant has an Australian trade mark registration for BOOMERANG VODKA (words).
The Respondent contends that that registration, which only came through in 2006 and which was applied for in November 2005, should be ignored because the application was filed after the Respondent registered the Domain Name.
It is now well-established that for the purposes of paragraph 4(a)(i) of the Policy the date of the coming into existence of a complainant’s rights is irrelevant provided that they exist at the date of the complaint. The WIPO Overview referred to above sets out the consensus view on this topic as follows:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”
Accordingly the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
The Complainant asserts that, although the Domain Name registration pre-dates the Complainant’s earliest applications for registration of its BOOMERANG trade marks, it had started trading earlier than that in 2005 and the Respondent had learnt of the Complainant’s trade mark through an Australian distiller with whom both parties had dealings. The Complainant contends that the Respondent, a competitor, registered the Domain Name with the intention of blocking the Complainant and disrupting the Complainant’s business.
Had the Complainant produced evidence to support those allegations, it is possible that the Complaint might have succeeded. However, the Complainant has produced no such evidence. There is nothing before the Panel to show the nature and extent of the Complainant’s trade at any time, let alone in mid-to-late 2005. The Australian distiller with whom both parties are said to have had dealings is not named and there is nothing beyond the bare assertion to establish the claim.
The Respondent, on the other hand, has gone to some lengths to respond to the Complaint and has filed an affidavit in which the Respondent’s ‘managing member’ deposes as to why he selected the Domain Name (‘Boomerang’ is an ordinary word apt to indicate Australia as the geographic source of the Respondent’s vodka) and denies any knowledge of the Complainant’s intentions vis-à-vis BOOMERANG VODKA at the time he registered the Domain Name. He denies that any Australian distiller notified him of the Complainant’s intentions.
In the result, the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby Sole Panelist
Dated: December 11, 2007
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