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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heineken Brouwerijen B.V. v Mark Lott
Case No. D 2000-1487
1. The Parties
Heineken Brouwerijen B.V., Amsterdam, The Netherlands
Represented by Charles H. Knull and William C. Wright at Graham, Campaign P.C., 36 West 44th Street, New York, N.Y. 10036-8178 USA.
Mark Lott, 7002 N Tatum Blvd, Paradise Valley, Arizona 85253, USA.
2. The Domain Name and Registrar:
The Domain Name at issue is "planetheineken.com". The Registrar is CORE, Geneva, Switzerland.
3. Procedural History:
The Complaint was filed in hardcopy with the WIPO Arbitration and Mediation Center (the Center) on October 31, 2000, and an email was received by the Center on November 10, 2000. The Center acknowledged the receipt of the Complaint on November 20, 2000. CSL GmbH Düsseldorf, Germany was indicated in the Complaint as Registrar of the domain name. On November 30 the complaint was amended by e-mail and on December 4 by hardcopy, indicating CORE Geneva, Switzerland as Registrar.
On November 10, 2000 The Center sent to CSL GmbH a request for verification of registration data. The request was redirected to the correct registrar, CORE, on November 20, 2000. On December 4, 2000 CORE, of which CSL GmbH is a member, replied to be the registrar for the domain name "planetheineken.com" and Mark Lott to be the registrant. Furthermore, CORE confirmed the details as listed in the Complaint (Administrative, Technical and Zone Contact: Mark Lott; the Uniform Domain Name Dispute Resolution Policy applying) and that the domain name registration "planetheineken.com" is active ("production").
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On December 7, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On December 28, 2000 the Center received an e-mail from the Respondent. However, this communication arrived after the expiry of the time limit set. Therefore, on January 10, 2001, the Center sent a default notification to the Complainant and at the same day informed the Respondent that the Response cannot properly be considered but would be forwarded to the Panelist to consider whether or not to accept the comments made in that e-mail.
On January 17, 2001 the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel, the date scheduled for issuance of the Panel’s decision was therefore January 30, 2001.
4. Factual Background
The Complainant is an internationally active beer brewing company which was established in 1863 in Amsterdam, the Netherlands, and has affiliates and has used the name and trade- and service mark (in the following: mark) HEINEKEN in many countries, including the United States.
In the United States, the Complainant is the owner of more than 10 registrations for the word HEINEKEN, and for combinations of that word with other words and with graphical elements and, in particular, of the following marks:
US Registrations No 956 608, wordmark HEINEKEN, dated April 3, 1973, for beer and malt beverages; US registration No 767 954 logotype HEINEKEN (word HEINEKEN with graphical elements), dated April 7, 1964, for beer; US registration No 1 342 529 logotype HEINEKEN, dated June 10, 1985 for a large list of different products, such as sports articles, mugs and golf balls. These registrations are valid and incontestable under US trademark law. Proof of ownership is furnished in Exhibit 1 to the Complaint.
The Complainant furthermore submits to be the owner of the mark HEINEKEN throughout the world. Whilst the Complainant has not submitted any proof by documents, the Respondent has not contested this submission on substance. To the Panelist's knowledge, HEINEKEN is indeed an internationally well-known trade name and trademark of the Complainant. However, for the merits of the case, in view of the fact that the Respondent is residing in the United States, it is sufficient to rely on the registrations and use of the Complainant's trademark HEINEKEN in the United States.
On January 11, 2000, counsel for the Complainant wrote to the Respondent by fax, mail and e-mail, requesting that Respondent cancel its domain name registration of "planetheineken.com" (evidenced by Exhibit 2 to the Complaint).
Having received no response, Counsel for the Complainant left a telephone message on the Respondent's answering machine.
As of November 2000, Respondent had not replied to the communications.
The Respondent registered on January 7, 2000, the domain name "planetheineken.com", but has made no preparations for using that domain name. The Respondent failed to respond to the Complaint within the deadline set in accordance with the Rules of the Policy. After the expiry of the deadline, the Center received an e-mail of the Respondent with the following contents:
"1. The domain name is currently not being used as I purchased it for Sarah J. Burdette using my account at joker.com Unfortunately, Sarah needed serious medical attention and has been going to physical therapy. The doctor also limited her work to 32 hrs a week. Given that her health was at issue the domain was not brought up on the Internet due to the above constraints. All documentation around stated events is available if required.
2. Contrary to the Complaint I didn't register the domain with CORE in order to avoid US law, in fact just the opposite. I registered the domain with joker.com because they offered registration at half the market rate in the US. 35 USD vs. 70 USD. There was no intention of deception with this endeavor whatsoever.
3. There has been no attempt to use or gain monetarily from the domain site in question.
I do not believe any of the arguments that the complaint states are at all factual. They are hypotheses by the client's attorney as to the nature of this domain name. I have read the ICANN rules and don't believe I have violated any provisions. Please accept this response on my behalf."
The Panel is not obliged to consider this submission, however it has decided to take it into account for its findings.
5. Parties’ Contentions
The Complainant submits that in the United States its products, sold under its HEINEKEN mark, were first exported before World War I and have been entering the United States with the exception of wartime and the Prohibition Era ever since.
The Complainant submits that (1) the domain name "PLANETHEINEKEN.com" is confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit before the proceedings commenced or after that date any statement within the deadlines set by the Policy. In a delayed e-mail the Respondent has contested Complainant's allegations without substantiating his statement by any argument or documentation.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
1) Confusing similarity with a mark in which the Complainant has rights
The domain name "planetheineken.com" is not identical with the mark "HEINEKEN", but comprises it in its entirety. The mark of the Complainant consists of the family name of its Dutch founders, which is not a descriptive term (not English, nor in French or Spanish, the two other languages which according to Art. 1703 of the NAFTA Agreement are to be taken into account when prohibiting registrations of words that generically designate goods or services to which the trademark applies). The domain name of the Respondent is composed of the word "planet", which is a common term of English language, and the well-known mark HEINEKEN, followed by the generic tld indicator "com", which cannot be taken into consideration when judging confusing similarity. In view of the fame of the well-known mark HEINEKEN the Panel is satisfied that, independently of the activities which may be connected with the domain name "planetheineken", that domain name is likely to create confusion with potential users into the belief that a site operated under that domain name was operated or sponsored or otherwise affiliated with the Complainant. This is the more true as in view of the meaning of the word "planet" the sequence "planetheineken" is likely to create with potential users the impression that under that domain a kind of world of Heineken will be found, i.e. some place created around the beer brewer and the beer beverages HEINEKEN. As an example for a similar use of the word "planet", to which potential customers are accustomed, the well-known trademark PLANET HOLLYWOOD may be cited.
The Panel therefore is satisfied that the domain name of the Respondent is confusingly similar with the Complainant's mark HEINEKEN. This is consistent with the opinion expressed by other Panels in a good number of cases in which confusing similarity between Complainant's mark and a domain name, that consisted of a combination of that mark and a word of common language was affirmed, such as: No. D2000-0098 Christian Dior Couture S.A. v. Liage International Inc ("babydior.com"); No. D2000-0102 Nokia Corporation v. Nokiagirls.com. a.k.a. IBCC ("nokiagirls.com") ; No. D2000-0494 Guerlain S.A. v. HI Investments ("buyguerlain.com"); No. D2000-0499 Inter-IKEA- Systems B.V. v. McLaughlin Mobility ("ikeacar.com"); No. D2000-0866 Louis Vuitton Malletier v. Somsak Sooksripanich (amongst others "cafevuitton.com", "palmvuitton.com", "guyvuitton.com"); No. D2000-1409 Sony v. Inja Kil (amongst others "sonyacademy.com, sonycampus.com, sonymodel.com, sunsony.com, dreamsony.com, goodsony.com).
2) Legitimate rights or interests in respect of the domain name
As said before, the trademark HEINEKEN, incorporated in the Respondent's domain name "planetheineken", is not a descriptive word, in which the Respondent might have an interest. The Respondent has no personal relationship to any person bearing the name "Heineken" and the Complainant has not consented to the Respondent's use of the trademark HEINEKEN. Furthermore, none of the circumstances listed under 4c of the Policy, which may demonstrate rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain name and has not demonstrated any preparations to use it. As he even did not activate the domain name, he has clearly not been commonly known by the domain name. In his belated e-mail the Respondent submitted that he had bought the domain name for another person, whose name is Sarah J. Burdette, however without mentioning any facts which would indicate a legitimate right or interest of that person in the domain name in question. On the contrary, the contents of that e-mail confirms that neither the Respondent nor the person referred to are making any preparations for a use of the domain name "planetheineken.com" in foreseeable future.
Therefore the Panel concludes that the Respondent has no rights or legitimate interests vis-a-vis the Complainant in the domain name "planetheineken.com".
3) Registration and use in bad faith
The Respondent does not actively use his domain name and has not made any preparations for such use. Furthermore, he has never offered it to the Complainant for sale. It has therefore to be considered whether the simple registration of the domain name "planetheineken.com" by the Respondent may, taking into account all circumstances of the case, be considered to be registration and use in bad faith.
Respondent has registered a domain name that includes the trademark HEINEKEN in its entirety. HEINEKEN is not only registered and protected as a mark for the Complainant but also has been used, according to the allegations of the Complainant, in the United States for a long period of time to an extent, which cannot have escaped the Respondent's attention. The Respondent has not contested these allegations with any substantive argument. The statement in his belated e-mail: "I do not believe any of the arguments that the complaint states are at all factual. They are hypotheses by the client's attorney as to the nature of this domain name" is contradictory in itself and does not say anything of substance. In view of the apparent reputation of the Complainant's mark, it cannot therefore be considered to be a substantive argument against the allegations of the Complainant.
Actually, the Complainant belongs to a small group of leading beer-brewing companies worldwide, which are generally known under their housemark to the general public, both internationally and in the United States. Given the fame of the HEINEKEN mark and also the activities of the Complainant in the United States it is inconceivable that the Respondent was unaware of the Complainant and his mark before registering "planetheineken.com". It can therefore reasonably be excluded beyond any doubt that the Respondent created a fantasy name, which happened to consist of a combination of the words "planet" and "heineken".
Under these circumstances it is difficult to conceive that the Respondent had any good faith intention to use the domain name "planetheineken.com", when registering it.
The assumption that the domain name was registered in bad faith is supported by the contents of the belated e-mail of the Respondent. With letter dated January 11, 2000, already, Complainant's attorneys requested the cancellation of the domain name "planetheineken.com", arguing that any use of that domain name would dilute the famous HEINEKEN trademark, and also requested this action to be taken until no later than June 3, 2000. Despite this quite extensive period of time Respondent chose not to respond. Only after expiry of the period of time fixed by the Policy in this procedure, the Respondent suddenly submitted that he purchased the domain name for a third person, named Sarah J Burdette, using his account at joker.com. If he really had, in good faith, registered the domain name "planetheineken.com" for a third person, which itself also was in good faith, one could have expected from him or from that person to inform the Complainant accordingly within the period of time set by Complainant's attorneys. Furthermore, the Respondent, in his e-mail, does not mention any reason why he had registered the domain name "planetheineken.com" for Sarah J. Burdette, i.e. which were either his or her intentions when registering the domain name. He simply indicates that given the health problems of Sarah J Burdette the domain name was not brought up on the Internet. This is no justification for the registration of the domain name "planetheineken.com" (incorporating Complainant's well-known mark HEINEKEN), nor an explanation which kind of fair use the Respondent or Sarah J Burdette might have had in mind with that domain name. It is only a possible explanation why the domain name was not yet activated. The Panel is therefore satisfied that the Respondent registered the domain name "planetheineken.com" in bad faith.
As concerns the second criterion of use in bad faith, the Respondent himself has submitted that he is not making any (good faith commercial or non-commercial) use of the domain and that for the time being there are no plans or preparations for such use. However, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (case No. D2000-0003), that inaction of the Respondent is within the concept of 4a(iii) of the Policy, and the Panel believes that the following considerations justify the conclusion that the Respondent is using the domain name "planetheineken.com" in bad faith:
By explaining why the domain name "planetheineken.com" was not brought up on the Internet the Respondent incidentally concedes that there exists a clear intention to use that domain name in the future (when Sarah Burdette's health problems allow to do so). This intention is confirmed by the fact that the domain name has not been offered for sale (this fact is underlined by the Respondent in his e-mail). At the same time the Respondent fails to submit any explanation what kind of use is intended by him or by Sarah J Burdette.
In view of that failure of the Respondent, the Panel cannot assume any use of the domain name of the Respondent or of the person mentioned in his e-mail which would not create a false impression of affiliation with the Complainant and thus be illegitimate, such as being passing off of Complainant's mark HEINEKEN or an infringement of Complainant's rights in the mark HEINEKEN under trademark law or an infringement of consumer protection law. The Panel therefore finds that the circumstances of the case indicate that the Respondent has registered the domain name for the purpose of attempting to attract, for commercial gain, Internet users to his (or Sarah J Burdette's) 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 his (or her) website or location or of a product or service on his (or her) website or location. The Panel is therefore satisfied that the allegation of the Complainant that the Respondent uses the domain name in bad faith is sufficiently sustained.
Taking into account the particular circumstances of the case, as considered above, the Panel concludes that the Respondent's passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered and is being used in bad faith.
Comparable cases, where in absence of any substantive response of the Respondent the Panel, based on the circumstances of the case, has concluded that the (not identical but) confusingly similar domain name was registered and used in bad faith are e.g.Guerlain S.A. v. HI Investments (case No. D 2000-0494), relating to the domain name "buyguerlain.com", Deutsche Bank AG v. E-business International (case No. D2000-0504), Wright & Lato, Inc. v. Michael L. Epstein (case No. D2000-0621), Metabolife International v. Robert Williams (case No. D2000-0630), Letsbuyit.com v. Stephen Ward (case No. D2000-0680) and Sony v. Inja Kil (case No. D2000-1409; see above 6.1).
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name "planetheineken.com" to be transferred to the Complainant.
Dr. Gerd F. Kunze
Date: January 30, 2001