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Future Brands LLC v. Mario Dolzer [2004] GENDND 1348 (17 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Future Brands LLC v. Mario Dolzer

Case No. D2004-0718

1. The Parties

The Complainant is Future Brands LLC, Deerfield, Illinois, United States of America, represented by Meissner, Bolte & Partner, Germany.

The Respondent is Mario Dolzer, München, Germany.

2. The Domain Name and Registrar

The disputed domain name <futurebrandsllc.org> (the “Domain Name”) is registered with PSI-USA, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2004. The Center transmitted its standard request for registrar verification by email to the Registrar the same day. The Registrar replied by email on September 13, 2004, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the registration would remain locked during this proceeding, that the registration agreement was in English and that the Respondent had submitted to the jurisdiction at the location of the Registrar’s principal office for court adjudication of disputes concerning or arising out of the use of the Domain Name; and providing the contact details on its WHOIS database for the Respondent and the technical, administrative and billing contacts.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint by email, fax and courier to the addresses and fax number of the Respondent and of the technical, administrative and billing contacts in the Registrar’s WHOIS database, and by email to postmaster@futurebrandsllc.org on September 15, 2004. The copy sent by courier could not be delivered and the email to postmaster@futurebrandsllc.org was rejected. However, the other email and fax notifications to the Respondent appear to have been transmitted successfully. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2004.

The Center appointed Jonathan Turner as the sole panelist in this matter on October 13, 2004. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted administrative panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is a leading distributor of spirits and wines, including the brands JIM BEAM and SMALL BATCH bourbon, ABSOLUT vodka, DEKUYPER cordials, WINDSOR Canadian whisky, and GEYSER PARK wines.

The Respondent is an individual resident in Germany who registered the Domain Name on January 24, 2004, and has since linked it to a variety of websites containing pornographic material or links to other websites containing pornographic material, which is made available to Internet users on payment.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical (apart from the generic .org top level domain) to its corporate name which it has regularly used in the course of its trade and in which it has unregistered trademark rights. It further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that it was registered and is being used in bad faith to promote commercial pornographic websites using the Complainant’s name. The Complainant seeks a decision that the Domain Name be transferred to it.

B. Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainant must prove (a) that the Domain Name is identical or confusingly similar to a trademark in which it has rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has unregistered trademark rights in the United States in its name Future Brands LLC by virtue of its use since 2001 as a trading name in business correspondence, invoices, sales documents, and advertisements and promotions to the trade.

These rights may be limited in scope on account of the descriptive character of the component words and the fact that the Complainant has used the name in its dealings with the trade rather than as a consumer brand. Nevertheless, the Panel has no doubt that the Complainant is entitled to protection against the use of the full combination as a sign or indication in the course of trade by other parties without its consent.

The Complainant has only demonstrated that it has rights in the United States. However, such rights are relevant given that the Respondent has used the Domain Name for websites readily accessible and intended to be accessed by Internet users in the United States as well as other countries.

The Domain Name is identical to the Complainant’s name apart from the generic top level domain which should be disregarded for the purposes of this comparison.

Accordingly the Panel is satisfied that the Complainant has proved the first requirement of the Policy.

B. Rights or Legitimate Interests

The Respondent has used the Domain Name solely to promote pornographic websites, even though it uniquely refers to the Complainant and is inappropriate to identify pornographic sites. Such use does not give rise to rights or legitimate interests (see e.g. WIPO Case No. D2003-0831 <pradaboutique.net> and WIPO Case No. D2003-0750 <hackingxbox.com>). The Panel is satisfied that the second requirement has been established.

C. Registered and Used in Bad Faith

Since the second level domain of the Domain Name is identical to the Complainant’s full corporate name, it is inherently appropriate to divert Internet users seeking the website of or information about the Complainant. The Respondent must have had this in mind when he registered the Domain Name, since he would not otherwise have registered the Domain Name with the Complainant’s full corporate name, including “LLC”.

Furthermore, the Respondent has in fact used the Domain Name to divert Internet users to commercial pornographic websites. It is likely that the Respondent receives a commission from revenue obtained by these websites through Internet users accessing them via the Domain Name. Even though Internet users arriving at these websites may promptly conclude that these websites are not what they were originally looking for, some of them may be tempted, thereby enabling the Respondent to gain commercially from attracting Internet users to these sites by his use of a Domain Name identical to the Complainant’s name, cf. WIPO Case No. D2000-0568 <basshotel.com> and other cases cited there. Such use is in bad faith and is evidence that the registration was made in bad faith.

In these circumstances, the Panel is satisfied that the Respondent registered and is using the Domain Name in bad faith.

The Domain Name is unlikely to be suitable for use in good faith by any person other than the Complainant, and it is therefore appropriate that it be transferred to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <futurebrandsllc.org> be transferred to the Complainant.

Jonathan Turner
Sole Panelist

Date: October 17, 2004