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Generic Top Level Domain Name (gTLD) Decisions |
Miller Brewing Company v. The Miller
Family
Claim Number: FA0201000104177
PARTIES
The Complainant
is Miller Brewing Company,
Milwaukee, WI (“Complainant”) represented by David R. Cross, of Quarles
& Brady, LLP. The Respondent is The Miller Family, San Carlos, CA
(“Respondent”) represented by Stanley G.
Hilton, of Law Offices of Stanley G.
Hilton.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <millertime.com>,
registered with Tucows, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict
in serving as Panelist in this proceeding.
Anne M. Wallace,
Q.C., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on January 30, 2002; the Forum received
a hard copy of the
Complaint on February 4, 2002.
On January 31,
2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <millertime.com> is registered
with Tucows, Inc. and that the Respondent is the current registrant of the
name. Tucows, Inc. has verified that
Respondent is bound by the Tucows, Inc. 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 February 4,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of February 25, 2002 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@millertime.com by e-mail.
A timely Response
was received and determined to be complete on March 18, 2002.
On April 2, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C.,
as Panelist.
Complainant filed an additional submission on March 22, 2002. It was
filed in a timely manner and I have considered it. Respondent
filed an
additional submission on March 27, 2002. It was filed in a timely manner, and I
have considered it.
RELIEF SOUGHT
The Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’ CONTENTIONS
Complainant
owns U.S. Trademark Registration 2,446,641 for MILLER TIME for beer.
Complainant also asserts common law trademark rights
in MILLER TIME for beer
because of extensive use of the phrase MILLER TIME in connection with its beer
since at least 1972. During
that time, Complainant has owned a number of
trademark registrations containing the words MILLER TIME. Complainant has
pending trademark
applications for at least six other trademarks containing the
words MILLER TIME as part of the trademark.
Complainant says
MILLER TIME is a distinct phrase that identifies the Complainant as a source
for beer. The MILLER TIME element has
been a constant theme in Complainant’s
advertising and promotions. Complainant has spent many millions of dollars
promoting its beers
with the MILLER TIME trademark in point of sale, print and
broadcast advertisements, along with special promotions including prominent
placement of MILLER TIME on the hood or trunk panel of Complainant sponsored
NASCAR racing cars for nearly twenty years.
Complainant
contends that MILLER TIME is an inherently distinctive phrase when applied to
beer. Although the MILLER surname is not
inherently distinctive, the mark in
question is MILLER TIME, a unique phrase transcending the common surname. The
inherently distinctive
nature of the mark is confirmed by the current federal
registration for MILLER TIME noted above. Complainant is exclusive owner and
licensor of the mark.
Complainant
contends that the disputed domain name <millertime.com> is
confusingly similar to Complainant’s established trademark.
Complaint further
contends that Respondent has no rights or legitimate interests to the domain
name. While Respondent’s surname is
MILLER, the domain name at issue is MILLER
TIME which is Respondent’s famous trademark. Respondent is not engaged in any
business
where the word TIME would have some relevance. Instead, Respondent has
consistently used the domain name as a promotion for its educational
consulting
business and as a family web site featuring the accomplishments of family
members in the computer field.
Complainant is
not aware of any manner in which Respondent has been commonly known by the name
MILLER TIME. Respondent has no commercial
relationship with Complainant and has
not received permission from Complainant at any time to use the MILLER TIME
trademark in any
way. Due to the fame of the MILLER TIME trademark, there can
be no doubt that Respondent was aware of Complainant’s trademark rights
at the
time <millertime.com> was registered in 1995.
On the question
of bad faith, Complainant asserts that although Respondent’s surname is MILLER,
Respondent is not commonly known as
MILLER TIME and Respondent provides no
explanation as to why the addition of TIME to Respondent’s name is necessary or
legitimate.
In consequence, Complainant argues Respondent does not have rights
or legitimate interests in the name. Complainant further contends
that MILLER
TIME is so famous and well-advertised that Respondents are presumed not to be
commonly known by it.
Respondent has
used the name to attract Internet traffic to a site promoting its own business.
Complainant contends this is not a
bona fide offering of goods pursuant to
Policy 4(c)(i) nor a legitimate noncommercial fair use pursuant to Policy
4(c)(iii).
As early
as 1997, Respondent created a web site found at www.millertime.com. This site
featured pages about each family member and
their accomplishments, including
Chris Miller’s web site consulting business, Greg Miller’s children’s software
company, and Mark
Miller’s extensive professional qualifications in computers
and technology. Complainant wrote to Respondent at that time to advise
of
Complainant’s trademark rights, but received no response.
At some
time prior to October 24, 2001, visitors to http://millertime.com began
arriving at the web site of the Miller Institute for
Learning with Technology.
This web page featured information about the Miller Institute, including the
promotion of the Institute’s
consulting services, employment opportunities and
upcoming seminars.
Respondent
made further commercial use of the <millertime.com> domain name by
offering it for sale. At least as early
as November 1, 2001, the <millertime.com> domain name was listed
with GreatDomains.com, a popular domain name auction and resale site operated
by Verisign, Inc. The listing
proposes a sale of the domain name only, as
Respondent had another domain name to which the content would be
relocated.
Complainant
responded to these commercial uses of the <millertime.com> domain
name, demanding that the commercial use stop and that the domain name be
transferred to Complainant.
Complainant
asserts that Respondent registered and is using the domain name in bad faith.
In this regard, Complainant says its MILLER
TIME mark is so well known and well
advertised that it can be inferred Respondent knew of the mark at the time of
Registration. Furthermore,
the domain name contains Complainant’s mark in its
entirety, the mark is a coined word, well-known and in use before Respondent’s
registration of the domain name, and Respondent has failed to allege any good
faith basis for use of the domain name.
Respondent has
offered the disputed domain name for sale at an auction site. Complainant
asserts that this demonstrates that the name
was registered in bad faith
pursuant to Policy 4(b)(i).
Respondent has
used the disputed domain name to advertise the businesses of family members,
including a website consulting business,
a children’s software company and
professional qualifications in computers and technology. Complainant asserts
that the use of a
domain name identical to Complainant’s well-known mark to
advertise Respondent’s own business suggests opportunistic bad faith pursuant
to Policy 4(b)(iv).
Respondent
contends that Complainant does not have exclusive rights to use MILLER because
that term is a surname that clearly predates
Complainant’s beer company and
TIME is merely a generic word in the public domain. Therefore, Respondent
asserts that Complainant
does not have exclusive rights to MILLER TIME.
Respondent
further contends that there is no consumer confusion between the Complainant
and the disputed domain name, which is connected
to a web site that does not
sell beer. Therefore, Respondent should be permitted to keep the domain name.
Respondent
asserts that Complainant has allowed MILLER TIME to enter into the public
domain by failure to aggressively protect what
it considers to be its exclusive
rights to the trademark. Therefore, Complainant does not currently have
exclusive rights to MILLER
TIME.
Respondent
contends that it does not commercially benefit from the disputed domain name,
and as a result, has rights and legitimate
interests in the domain name
pursuant to Policy 4(c)(iii). Furthermore, Respondent contends that a family
information site is a legitimate
non-commercial use of the domain name.
Respondent
contends that Complainant has allowed MILLER TIME to enter the public domain by
failure to credibly and aggressively protect
its right to use the mark. As a
result, Respondent may use a domain name incorporating the MILLER TIME mark.
Respondent also
contends that because Complainant did not file a claim against Respondent for
almost seven years, Complainant acquiesced
in Respondent’s use of the disputed
domain name.
With respect to
the allegation of bad faith, Respondent contends that because Complainant did
not file a claim against Respondent
for seven years, that indicates Complainant
does not believe that Respondent intended to divert customers or Internet users
by trading
on Complainant’s good will.
Respondent
contends that it has never sought to sell the disputed domain name, and has
refused to sell it to Complainant each time
it has made an offer to purchase
it. Respondent further contends that its listing of the disputed domain name at
an auction site
was due to Respondent’s “testing of the database of the service
that posted names for sale”, and that Respondent has no real intention
of
selling the domain name at issue.
Respondent
contends that because Respondent registered the disputed domain name in 1995
and the Anti-Cybersquatting Consumer Protection
Act (ACPA) was passed in 1999,
the ACPA does not apply to Respondent retroactively because all ex post
facto laws are unconstitutional. Furthermore, it does not apply to
Respondent because it did not register the disputed domain name in bad
faith.
Complainant
contends that the equitable doctrines of laches, waiver and acquiescence do not
apply to Complainant because Complainant
acted promptly when it had verifiable
proof of Respondent’s commercial use of the disputed domain name. Complainant
says it could
not waive remedies (i.e., under the UDRP) that were not available
to it. Furthermore, Complainant never granted any rights to Respondent
to use
the trademark so the doctrine of acquiescence does not apply.
In Complainant’s
additional submission, it contends that Respondent voluntarily subjected itself
to the UDRP as a contractual obligation
when it registered and maintained the
disputed domain name. Because the policy was not created through federal or
state action, nor
is it enforced against registrants of domain names by a
governmental body, it follows that this private action does not raise
constitutional
ex post facto concerns.
With respect to
acquiescence, Respondent says Complainant knew of Respondent’s use of the
domain name as early as 1997 and did nothing
until 2002.
Respondent says
that if it intended to sell domain names to Complainant, it would have
purchased many more infringing domain names
in addition to the one at issue.
FINDINGS
I
have found as follows:
1.
The ACPA has
no application to this case. The jurisdiction to make a decision with respect
to the disputed domain name is found in
the UDRP. Respondent, having registered
the domain name, is bound on a contractual basis by the provisions of the ICANN
Rules, including
the UDRP.
2.
The
disputed domain name is confusingly similar to Complainant’s MILLER TIME
trademark.
3.
Respondent
has no rights or legitimate interest in the disputed domain name.
4.
Respondent
registered and is using the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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.”
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 established registered and common law rights in the trademark MILLER TIME.
Complainant has a registered trade mark,
has had many other registered
trademarks, has at least six trademark applications pending, is the only party
with applications pending
for MILLER TIME, and has used MILLER TIME in
connection with its beer business since at least 1972. The fact that the mark
contains
the surname MILLER does not preclude Complainant from asserting its
trademark rights, and even though the word TIME is a generic
word, the
combination of the words MILLER and TIME creates the distinctive MILLER TIME
mark for which Complainant can claim and has
claimed rights.
Respondent’s
domain name <millertime.com> is virtually identical to
Complainant’s mark. The first element under the Policy is met.
Rights
or Legitimate Interests
Under
paragraph 4(c) if the Policy”
“…Any of
the following circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation
of all evidence presented, shall
demonstrate your rights or legitimate interests to the domain name for purposes
of Paragraph 4(1)(ii):
(i)
before any
notice to you of the dispute, your 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)
you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no
trademark or service mark rights; or
(iii)
you are
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
interference to be drawn from all the evidence is that at the time Respondent
registered the domain name, Respondent was well
aware of Complainant’s MILLER
TIME trademark. Respondent says that at the time he registered the domain name,
Complainant did not
have any web sites using the word MILLER or the word TIME.
The fact Respondent knows this to have been the case, demonstrates that
Respondent knew of Complainant’s trademark. The further inference to be drawn
from this is that Respondent chose the disputed domain
name because of
Complainant’s trademark.
Respondent
has used the domain name since it was registered. Respondent has used the
domain name to support a web site that contains
information about the Miller
family. However, while Respondent is now using the web site arguably only for
family information, at
various times Respondent has used the domain name in
connection with goods and services, specifically a website consulting business,
a children’s software company and professional qualifications in computers and
technology. At the time Complainant discovered the
commercial use, the <millertime.com>
web site was linked to the Miller Institute of Learning and Technology, a web
page featuring information about the Miller Institute,
including promotion of
consulting services, employment opportunities and upcoming seminars. The
question is whether the domain name
was used in connection with a bona fide
offering of goods or services. Respondent, knew of Complainant’s famous mark
and has used
that famous mark to attract Internet users to its web site,
clearly for commercial gain. Any offering of goods and services in connection
with the domain name in these circumstances is not a bona fide offering.
There
is no evidence whatsoever that Respondent is or has ever been commonly known by
the domain name.
Respondent
contends that a family information web site is a legitimate non-commercial use.
I might agree with Respondent if that was
all that had occurred in this case. I
cannot, however, accept Respondent’s assertion that it is a purely personal
family web site.
Respondent admits use of the web site for offering educational
technology services and sale of computer software. Respondent has
from time to
time used the domain name in connection with these commercial activities as
well as promotion of the business interests
of family members. Furthermore, I
have no doubt that Respondent used the domain name specifically so that it
would attract to its
site Internet traffic intended for Complainant, thereby permitting
Respondent to benefit from the good will associated with Complainant’s
mark.
In
the circumstances, Respondent has not established rights or legitimate interest
in the domain name.
Registration
and Use in Bad Faith
With
respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the
following circumstances, in particular but without limitation, if found by the
Panel
to be present, shall be evidence of the registration and use of a domain
name 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
web site 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 web site or location or of a product or service on your web
site or location
With
respect to the four criteria enumerated therein, the Panel finds as follows:
1.
On the
evidence before me, I cannot conclude that Respondent acquired the domain name
for purposes of selling it. Indeed, Respondent’s
purpose was to use the domain
name for its own purposes.
2.
There is no
pattern of conduct on the part of Respondent indicating an intent to prevent
Complainant from reflecting its mark in a
domain name.
3.
It does not
appear that Respondent intended to disrupt Complainant’s business.
4.
Notwithstanding
that Respondent now says it uses and only intends to use the domain name for a
non-commercial family web site, there
is no question that Respondent has
attempted to attract Internet users to its site for commercial gain. Use of
Complainant’s well-known
trademark in the domain name does create the
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site. While
Respondent
argues that putting up a link to Complainant’s web site alleviates
the confusion, it could very well have the opposite result. In
other words,
Internet users visiting Respondent’s web site and seeing the link to
Complainant’s site, may well conclude there is
an affiliation between
Respondent and Complainant. I agree with Complainant that the use of the domain
name identical to Complainant’s
well-known mark to advertise Respondent’s own
businesses suggests opportunistic bad faith pursuant to Policy 4(b)(iv).
Therefore,
on this point, Complainant has established bad faith.
On our reading of the Policy, as well, the four cited
examples are situations where, if the evidence exists, the Panel must find bad
faith. This does not, however, preclude the Panel finding that other
circumstances amount to bad faith in a particular case. The
paragraph says,
"in particular but without limitation". In reviewing all the evidence
in this case, I find that there is
additional evidence of bad faith. In this
case, the domain name contains the Complainant’s mark in its entirety, the mark
is a coined
word, well-known and in use prior to Respondent’s registration of
the domain name, and the Respondent has failed to allege any good
faith basis
for use of the domain name. See Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000). Respondent’s only argument is that when the domain name
was registered Complainant was not using
MILLER or TIME in connection with any
web site. This, of course, begs the question of Respondent’s use of
Complainant’s trademark
with knowledge of the mark and intent to benefit from
the goodwill associated with the mark.
This leaves the question of
Respondent’s having offered the domain name for sale at an auction site. While
I doubt the veracity of
Respondent’s claim that when he placed the domain name
for sale he was merely testing out how the auction site worked, in light of
my
findings of bad faith set out above, I need not address this issue.
Before leaving the case, I must also deal with Respondent’s argument that
Complainant acquiesced in Respondent’s use of the domain
name and therefore
should not be permitted to challenge Respondent’s use of the name now.
Respondent registered the domain name in
1995. Complainant first became aware
of Respondent’s use of the disputed domain name in 1997. On April 30, 1997,
Complainant’s Assistant
General Counsel wrote to Mark L. Miller objecting to
the use of Complainant’s MILLER TIME trademark. Respondent continued to use
the
mark. Complainant’s next communications with Respondent were in November 2001,
when, with knowledge of the availability of the
UDRP, Complainant contacted
Respondent because Complainant had just discovered that <millertime.com> displayed an advertisement for the Miller Institute of Learning and
Technology and that Respondent was offering <millertime.com> for sale through the GreatDomains.com service.
While I have some reservations about
whether laches or acquiescence should apply in UDRP cases, on the facts of this
case I would
not apply those doctrines in any event. Complainant has
demonstrated that it did attempt to take steps to stop Respondent’s use of
Complainant’s mark and that Complainant did not sit idly by. In 1997, when
there was no remedy available, Complainant put on record
its claim to its
rights in the mark. When a remedy became available and Complainant discovered
Respondent using the domain name for
commercial purposes, Complainant acted
promptly by making a demand and then followed up with these proceedings.
DECISION
For the
reasons set out above, I find for the Complainant, and I order that the
disputed domain name <millertime.com> be transferred to the
Complainant, Miller Brewing Company.
Anne M. Wallace, Q.C., Panelist
Dated: April 15, 2002
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