DECISION

Miller Brewing Company v. km

Claim Number: FA0305000158252

PARTIES

Complainant is Miller Brewing Company, Milwaukee, WI (“Complainant”) represented by Nathan D. Jamison of Quarles & Brady LLP. Respondent is km, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <millerbrewingcompany.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 20, 2003; the Forum received a hard copy of the Complaint on May 20, 2003.

On May 21, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <millerbrewingcompany.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 May 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@millerbrewingcompany.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 June 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <millerbrewingcompany.com> domain name is confusingly similar to Complainant’s MILLER mark.

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

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

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

FINDINGS

Complainant holds a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MILLER mark (Reg. No.506,937 registered on February 22, 1949) related to beer. First use in commerce is recorded as April 27, 1887.

Respondent registered the <millerbrewingcompany.com> domain name on April 6, 2002. Respondent is using the disputed domain name to redirect Internet traffic to <abortionismurder.org>, an anti-abortion 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 mark through registration with the USPTO and continuous use in commerce for over 100 years.

Respondent’s <millerbrewingcompany.com> domain name is confusingly similar to Complainant’s MILLER mark because the disputed domain name appropriates Complainant’s entire mark and adds the generic terms “brewing” and “company” to the end of the mark. The addition of generic terms to a famous mark does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i), especially when the generic terms are directly associated with Complainant’s business. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response to Complainant’s allegations in this proceeding. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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).

Furthermore, Respondent’s failure to come forward with a Response may be construed against it. The Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <millerbrewingcompany.com> domain name to divert Internet traffic to an anti-abortion website that presents images that some Internet users may find disturbing. The Panel may infer that Respondent’s use of Complainant’s well-known mark is neither 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) because Respondent is intentionally capitalizing on the fame of Complainant’s mark to divert Internet traffic to <abortionismurder.org>, a website that is completely unrelated to Complainant. See Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of Respondent’s registration of the domain name it can be inferred that Respondent is attempting to capitalize on the confusion created by the domain name’s similarity to the mark).

 

Moreover, Respondent is not commonly known by either MILLER BREWING COMPANY or <millerbrewingcompany.com>. Therefore, Respondent has failed to demsonstrate any rights to or legitimate interests in the disputed domain name for purposes of 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 established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b) lists four circumstances that evidence the registration and use of a domain name in bad faith. However, this list is not exclusive. The Panel may look to the totality of the circumstances in determining whether a domain name has been registered and used in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent’s disputed domain name incorporates Complainant’s entire mark and adds generic terms that directly relate to Complainant’s business. Moreover, Complainant spends significant sums of money advertising and promoting its products and is extremely well known both in the general public and among consumers of beer. The Panel infers that Respondent had actual or constructive knowledge of Complainant’s famous MILLER mark, especially since Respondent’s WHOIS information indicates that it lives in the United States where the MILLER product line is widely known. The registration and use of a domain name confusingly similar to a trademark despite actual or constructive knowledge of the mark holder’s rights is itself evidence of bad faith registration and use. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Respondent is using the <millerbrewingcompany.com> domain name to redirect Internet traffic to a website entitled “Abortion is Murder.” Panelists have unanimously found that the use of a domain name confusingly similar to a mark to link unsuspecting Internet users to a website that pushes a polarizing issue and features photographs of aborted fetuses evidences bad faith registration and use under the Policy. See McClatchy Management Services, Inc. v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also The Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 3, 2003

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