DECISION

Miller Brewing Company v. Peter Carrington a/k/a Party Night, Inc.

Claim Number:  FA0303000151398

PARTIES

Complainant is Miller Brewing Company, Milwaukee, WI, USA (“Complainant”) represented by Nathan D. Jamison of Quarles & Brady LLP. Respondent is Peter Carrington a/k/a Party Night Inc., Amsterdam, the Netherlands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <millervrl.com> registered with Key-Systems Gmbh.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 24, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 26, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <millervrl.com> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 March 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 2003 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@millervrl.com 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 April 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 makes the following assertions:

1. Respondent’s <millervrl.com> domain name is confusingly similar to Complainant’s MILLER LITE VIRTUAL RACING LEAGUE mark.

2. Respondent does not have any rights or legitimate interests in the <millervrl.com> domain name.

3. Respondent registered and used the <millervrl.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MILLER LITE VIRTUAL RACING LEAGUE mark (Reg. No. 2,610,520 registered on January 8, 2002) in relation to entertainment services, namely providing an online computer game. Complainant, a corporation organized under the laws of the State of Wisconsin, brews and sells beer. As part of its promotional efforts, Complainant operates the “Miller Lite Virtual Racing League,” an online competition, at the domain name <millerlitevrl.com>.

Respondent registered the <millervrl.com> domain name on April 20, 2002. Respondent is using the disputed domain name to redirect Internet traffic to <hanky-panky-college.com>, an apparently 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 that it has rights in the MILLER LITE VIRTUAL RACING LEAGUE mark through registration with the USPTO.

Respondent’s <millervrl.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name simply omits the word “lite” and abbreviates the “virtual racing league” portion of Complainant’s mark. Neither the omission of the word “lite” nor the abbreviation of the last three words of Complainant’s mark significantly differentiates Respondent’s domain name from Complainant’s mark with regard to the “confusingly similar” analysis of Policy ¶ 4(a)(i). See Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint in this proceeding. Thus, the Panel may accept all of Complainant’s reasonable allegations and inferences as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate its rights to or legitimate interests in the <millervrl.com> domain name. As Complainant has established a prima facie case against Respondent by asserting Respondent lacks any rights to or legitimate interests in the disputed domain name, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent is using the <millervrl.com> domain name to redirect Internet users to <hanky-panky-college.com>, an apparently pornographic website. Linking a domain name confusingly similar to a registered mark to a pornographic website is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent has failed to provide the Panel with any evidence to show that Respondent is commonly known by either MILLER VRL or <millervrl.com>. Therefore, Respondent has failed to establish that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the <millervrl.com> domain name to divert Internet traffic to <hanky-panky-college.com>, an apparently pornographic website. The use of a domain name confusingly similar to a registered mark to link to a pornographic website is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

The Panel may infer that Respondent is deriving commercial gain from its operation of an apparently pornographic website. Thus, Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent has created a likelihood of confusion between Respondent’s domain name and Complainant’s registered mark for Respondent’s commercial gain. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <millervrl.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 25, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/417.html