DECISION

V&S Vin & Sprit Aktiebolag v. Bravo Marketing, Inc., Antigua

Claim Number: FA0108000098456

PARTIES

Complainant is V&S Vin & Sprit Aktiebolag, Stockholm, Sweden (“Complainant”) represented by Joanne Ludovici-Lint, of McDermott, Will & Emery.  Respondent is Bravo Marketing Inc., Antigua (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <absolut-series.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 2, 2001; the Forum received a hard copy of the Complaint on August 3, 2001.

On August 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <absolut-series.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@absolut-series.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s domain name <absolut-series.net> is confusingly similar to Complainant's U.S. federally registered trademark ABSOLUT.

Respondent has no rights to or legitimate interest in the domain name <absolut-series.net>.

Respondent is not commonly known by the name “ABSOLUT” or <absolut-series.net> either as a business, individual, or other organization.

Respondent is in no way affiliated with Complainant.  Respondent is not licensed to use the mark ABSOLUT, nor is there any contractual or other relationship with Complainant that would entitle Respondent to use the mark ABSOLUT.

Further, Respondent is not making a legitimate noncommercial or fair use of the domain name.

Respondent is not using the domain name in connection with a bona fide offering of products or services.

There is substantial evidence of bad faith registration and use of the domain name by Respondent.

B. Respondent

Respondent has agreed to transfer the domain name to Complainant.

FINDINGS

Complainant owns over 15 U.S. federally registered trademarks on the Principal Register for ABSOLUT, alone and in combination with other terms and designs, including registrations for the ABSOLUT bottle design and the seal found upon each bottle.  Many of these U.S. federal registrations have achieved “incontestable” status under the U.S. Lanham Act. 15 U.S.C. §§ 1065 and 1115(b).  Complainant's “incontestable” federal registrations serve as “conclusive evidence of the validity of the registered mark[s] and of registration of the mark[s], of [Complainant's] ownership of the mark[s], and of [Complainant's] exclusive right to use the mark[s] in commerce” 15 U.S.C. § 1115(b).  Complainant also owns registrations for the trademark ABSOLUT in approximately 130 other countries throughout the world.

Complainant uses the trademark ABSOLUT in conjunction with several Internet web sites, including <absolutvodka.com> and <absolut.com>.  Complainant uses these web sites to promote its products and services over the Internet.  Complainant owns a U.S. federal registration for ABSOLUT for providing information and entertainment by means of a global computer network.

For many years, Complainant has featured the trademark ABSOLUT in block lettering on every bottle of ABSOLUT vodka and in advertising.  For decades, Complainant, through its distributors, has been advertising and promoting its ABSOLUT vodka throughout the United States.  In 1981, Complainant introduced a unique and distinctive advertising campaign to promote its ABSOLUT vodka, wherein Complainant’s advertisements prominently feature the trademark ABSOLUT in block text, often followed by a common word (e.g., ABSOLUT FASHION).  That advertising campaign has earned numerous awards and substantial recognition.  The ABSOLUT advertising campaign is internationally famous.

This disputed domain name <absolut-series.net> was registered by Respondent on May 29, 2000.  The disputed domain name resolves to a hard-core pornographic website.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or 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; and

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

Identical and/or Confusingly Similar

Complainant has rights to the ABSOLUT mark due to its federal registration.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

The disputed domain name <absolut-series.net> is confusingly similar to Complainant's U.S. federally registered trademark ABSOLUT.  Adding a hyphen and the word “series” does not mitigate that confusion, particularly where as here, the remainder of the domain name (i.e., ABSOLUT) is a famous trademark with no non-trademark significance.  See Out2com, Inc. v. Rustom Corp., FA 95896 (Nat. Arb. Forum Dec. 20, 2000) (finding the addition of generic words to a mark does not create a distinct new domain name and the domain names <out2travel.com> and <out2themovies.com> were confusingly similar to Complainant's mark OUT2 because they consist of Complainant's mark plus generic words); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (adding the term “models” to the registered mark VICTORIA’S SECRET does not circumvent the Policy’s “identical or confusingly similar” test); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainants have established that Respondent was not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  Respondent used the domain name in conjunction with pornographic services that are not considered to be noncommercial or fair use.  Nor is such use a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See National Football League Properties, Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

Complainant has successfully alleged that Respondent is not commonly known by the disputed domain name, and Respondent has not come forward with any evidence to the contrary pursuant to Policy ¶ 4 (c)(ii).  Cf. Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Additionally, Respondent agreed in its informal response to transfer the domain name to Complainant.  The Panel sees this as further evidence that Respondent lacks rights or legitimate interests within the meaning of Policy ¶ 4(a)(ii).  See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights).

Therefore, the Panel determines that Complainant has met the burden set forth under Policy 4(a)(ii).

Registration and Use in Bad Faith

Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, which is bad faith under Policy ¶ 4(b)(iv).  The pornographic material is evidence of bad faith when the domain name being used is confusingly similar to a famous mark.  See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a pornographic depiction confusingly similar to Complainant’s registered trademark on its website that may cause confusion as to the source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Additionally, Respondent’s willingness to transfer the domain name is further indication of bad faith registration and use.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy).

Therefore, the Panel concludes that Complainant has met the burden set forth under Policy 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <absolut-series.net> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  September 6, 2001

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