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Miller Brewing Company v. Virtual Agents [2001] GENDND 1265 (4 July 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Miller Brewing Company, a Wisconsin Corporation having a principal place of business at 3939 West Highland Boulevard, Milwaukee, Wisconsin 53201-0482, USA.

The Respondent is Virtual Agents of 5835 Verdun Avenue, Suite 202, Verdun, Quebec, H4H 1M1, Canada.

The contested domain name is <millerliteracing.com>.

The registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

The electronic version of the Complaint was filed on May 14, 2001. The hardcopy of the Complaint was received on May 22, 2001.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.

On May 23, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a response. On June 13, 2001, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.

On June 21, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be handed down on July 4, 2001 (save exceptional circumstances).

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondent; the Administrative Panel was properly constituted.

The Complainant is the registered owner of the following U.S. and Canadian trademarks:

(a) MILLER LITE & Design, U.S. Reg. No. 2,234,383, for beer;

(b) LITE & Design, Canadian Reg. No. TMA 302,348, for alcoholic brewery beverages;

(c) MILLER LITE RACING, common law, for entertainment services and sponsoring and promoting the sporting events of others, namely racing cars and events;

(d) MILLER LITE, common law, for beer and sponsoring and promoting the sporting events of others, including racing, boxing and volleyball events;

(e) MILLER, U.S. Reg. No. 2,229,151, for beer;

(f) MILLER, Canadian Reg. No. TMA 179,920, for beer;

(g) MILLER MILWAUKEE & Design, U.S. Reg. No. 305,855, for beer;

(h) MILLER & Design, U.S. Reg. No. 506,937, for beer;

(i) MILLER & Design, U.S. Reg. No. 931,925, for beer;

(j) MILLER & Design, U.S. Reg. No. 1,196,396, for beer sold in recyclable paper container, namely shipping cartons, cases and carriers;

(k) MILLER & Design, U.S. Reg. No. 1,973,280, for beer; and

(l) MILLER SINCE 1855 & Design, U.S. Reg. No. 2,129,329, for beer.

The contested domain name currently resolves to a placeholder website. The website states that "This domain, <millerliteracing.com>, is currently registered. At the moment, there is no site hosted at this domain, but this may change in the future. If you wish to contact the registrant of this domain, you may email them at: virtuala@total.net. You may wish to check the appropriate registrar's record data for an up-to-date email address."

The Complainant has used the name MILLER to identify its beer in the United States since April 1887.

The Complainant has promoted and sold its MILLER LITE brand of beer for over 15 years. MILLER LITE beer is one of the top brands of beer in the United States. The Complainant spends many millions of dollars each year in print, broadcast and point-of-sale advertising for MILLER LITE beer.

The Complainant has sponsored sports teams and events for many years under the MILLER LITE name. In automobile racing, it has sponsored teams and events under the MILLER LITE brand in the National Association for Stock Car Auto Racing (NASCAR) and the Championship Automobile Racing Teams (CART) circuits for over ten years and in the National Hot Rod Association (NHRA) circuit for four years. Through sponsorships with other brands, the Complainant has been involved in automobile racing sponsorship for nearly twenty years.

Since 1990, the Complainant has been the lead sponsor for NASCAR Winston Cup driver Rusty Wallace, 1989 Winston Cup series champion. The racing car, Mr. Wallace’s racing suit, and the uniforms worn by Mr. Wallace’s pit crew all prominently display the MILLER LITE name and marks. Mr. Wallace is frequently and prominently identified as the driver of the MILLER LITE car during television and radio accounts of NASCAR races.

Under the MILLER LITE name, the Complainant has also been a major sponsor of "Team Rahal" and drivers Bobby Rahal and Max Papis on the CART circuit for over five years. Mr. Papis is prominently identified as the driver of the MILLER LITE car during television and radio accounts of CART races. As noted in the Team Rahal sponsorship information brochure, CART races take place in the United States, Canada and other nations and are broadcast worldwide to reach more than 900 million viewers annually.

In addition, the Complainant sponsors two races on the CART open-wheel racing circuit: the MILLER LITE 225 at the Milwaukee Mile in West Allis, Wisconsin and the MILLER LITE 200 at Mid-Ohio Sports Car Course in Lexington, Ohio.

In drag racing, the Complainant has sponsored the MILLER LITE Dragster since 1997 and had previously sponsored cars under other MILLER brand names. The MILLER LITE car’s driver, Larry Dixon, Jr. , was the NHRA’s Rookie of the year in 1995. Dixon was the first driver to break the 4.5 second barrier, and he now has 10 NHRA titles to his credit.

Beyond the direct expense of driver and race sponsorships, the Complainant spends many millions of dollars more each year on a combination of print advertising, radio and television commercials, beverage point-of sale displays, race-track displays and related promotions featuring the MILLER LITE trademark and the association of MILLER LITE with racing.

The Complainant submits that it has acquired trademark rights in the "Miller Lite" mark used in connection with beer and is inherently distinctive when used in connection with auto racing. Due to its continuous and exclusive use of the "Miller Lite" name with racing car sponsorships and other promotions, the Complainant has established trademark rights in the "Miller Lite" name and mark used in conjunction with auto racing.

The Complainant submits that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark from reflecting its mark in a corresponding domain name. The WHOIS database indicates that the Respondent has registered approximately 36 domain names which are related to racing which mostly correspond with major auto racing teams, manufacturers and sponsors. These domain names are displayed by a trademark followed by the word "racing" (for example, <budweiserracing.com>, <marlbororacing.com> and <goodyearracing.com>).

The Complainant submits that:

(a) the contested domain name is confusingly similar to the "Miller" and "Miller Lite" marks;

(b) the Respondent has no right or legitimate interest with respect to the contested domain name; and

(c) the Respondent has registered the contested domain name in bad faith.

B. Respondent

The Respondent failed to file a Response within the time limit set by the Center.

In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

The Complainant is the registered owner of the word and image trade marks "Miller" and "Miller Lite". The panel agrees that the "Miller" and "Miller Lite" marks are extremely well-known in relation to the Complainant’s beer products in the United States and Canada, and that the Complainant has long been associated with motor racing and the sponsorship of motor racing teams and events.

The only differences between the Complainant’s trade mark "Miller Lite" and the contested domain name is the addition of the word "racing" and the suffix ".com".

Although the panel does not necessarily find that the Complainant has common law trade mark rights in the words "Miller Lite Racing" (because it does not need to do so), the panel finds that the contested domain name is confusingly similar to the Complainant’s "Miller Lite" mark, as the "Miller Lite" mark has been used extensively in association with motor racing over the past ten years: Caterpillar Inc v. Roam the Planet Ltd, WIPO Case No. D2000-0275.

The addition of the suffix ".com" or ".net" is an irrelevant distinction which does not change the likelihood for confusion: Microsoft Corporation v. Amit Mehrotra WIPO Case No. D2000-0053 and InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

As a result, the panel finds that the contested domain name is confusingly similar to the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the contested domain name, as the Respondent:

(a) is not commonly known as MILLER LITE;

(b) has not provided services to the Complainant in connection with the Complainant’s MILLER LITE name and mark;

(c) is not a licensee of, nor authorized by, the Complainant to use any of the Complainant’s trademarks, including those related to its MILLER LITE marks; and

(d) is not making a legitimate, non-commercial use of the contested domain name.

The Respondent has not produced any evidence to suggest that the contested domain name is being used in connection with a bona fide offering of goods or services, nor that the Respondent is making a legitimate non-commercial or fair use of the domain name. The Respondent has not even provided any evidence of any preparations to use the domain name.

There is no evidence of any legitimate use of the domain name since it was registered by the Respondent on October 2, 1998.

In Newman/Haas Racing v Virtual Agents Inc, WIPO Case No. D2000-1688, the panel decided that this Respondent had no rights or legitimate interest in <newmanhaasracing.com>, another domain name incorporating the trademark of another auto racing entity.

In this case, the Respondent failed to produce evidence of preparations to make a bona fide use of the domain name.

As a result, the panel finds that the Respondent has no rights or legitimate interests in respect of the contested domain name.

The Complainant claims that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.

The Respondent has registered approximately 36 domain names which correspond with major motor racing teams, manufacturers and sponsors of the Formula One, CART and NASCAR circuits. Many of these domain names are in the form <[TRADEMARK]racing.com>. Some of these domain names were registered at the same time that the contested domain name was registered. The Respondent has engaged in a pattern of registering domain names incorporating famous trademarks, and focussing on motor racing participants.

In Newman/Haas Racing v Virtual Agents Inc, WIPO Case No. D2000-1688, the panel concluded that the Respondent was a cybersquatter based on the registration and non-use of so many domain names incorporating famous trade marks.

The panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(ii) of the ICANN Policy.

The panel finds that the Complainant has established the element set out in Paragraph 4(a)(iii) of the ICANN Policy.

For the reasons set forth above and pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name <millerliteracing.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: July 4, 2001