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V&S Vin&Sprit AB v. Stefan Bojahr [2005] GENDND 1588 (29 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

V&S Vin&Sprit AB v. Stefan Bojahr

Case No. D2005-0750

1. The Parties

The Complainant is V&S Vin&Sprit AB, Stockholm, Sweden, represented by Cogent IPC AB, Stockholm, Sweden.

The Respondent is Stefan Bojahr, Bone-Media, Teterow, Germany.

2. The Domain Name and Registrar

The disputed domain name <absolutanal.com> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2005. On July 18, 2005, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On July 21, 2005, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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, and the proceedings commenced on July 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.

The Center appointed Jens Schovsbo as the sole panelist in this matter on September 14, 2005. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant, V&S Vin & Sprit AB (publ) (hereinafter referred to as “V&S”), is a Swedish joint stock company founded in 1917. V&S is owned by the Swedish government and the company manufactures, imports and distributes alcoholic beverages for resale on the Swedish market as well as exports alcoholic beverages all over the world. V&S has approximately 2,200 employees and sales in 2003, amounted to SEK 9.3 billion.

The Complainant holds rights in registered trademarks throughout the world. These include the word mark ABSOLUT registered in a large number of countries (including European countries and the United States of America). The mark is registered for a variety of services and goods.

In 2001, ABSOLUT was ranked as the 93^rd most valuable trademark asset in the world and has also been ranked as number one on Forbes’ list of Top Luxury Brands according to marketing performance. ABSOLUT is the 3rd best-selling trademark for premium spirits in all categories on a worldwide basis.

The disputed domain name <absolutanal.com> was registered by the Respondent on November 26, 2003, and used for a web site containing pornographic material. Presently, the domain name is inactive. The Complainant first tried to contact the Respondent in November 2004, through a cease and desist letter, via e-mail. An email response from the Respondent was received the same day. In that email the Respondent offered to sell the domain name to Complainant for EURO 1000. This offer was rejected by Complainant who was only willing to pay the transfer cost of the domain name. That same day, the Respondent sent an answer declaring that he would not transfer the domain name amicably. He also stated that he had already sold the domain name to a third party. No proof, however, can be found of such a transaction and the Respondent is still the listed owner according to the Whois.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration and use of the domain name <absolutanal.com> is in violation of paragraph 4, of the Policy. In support of this, the Complainant claims that:

i) the domain name is identical or confusingly similar to the trademarks registered by the Complainant

The domain name in question is confusingly similar to the Complainant’s registered trademark ABSOLUT. The suffix does not detract from the overall impression and the domain name must therefore be considered to be confusingly similar to the Complainant’s trademark. The likelihood of confusion includes an obvious association with the Complainant’s trademarks. With reference to the fame of ABSOLUT, there is a considerable risk that the public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark will also be seriously tarnished by the connection to the actual domain name and the websites thereto. By using ‘absolut’ as a portion of the actual domain name and associating it with ABSOLUT, the Respondent exploits the goodwill and the image of ABSOLUT, which may result in dilution and other damage for the Complainant in its capacity as brand owner.

ii) the Respondent has no rights or legitimate interests in respect of the domain name

The domain name was registered subsequent to the registration date of the trademark ABSOLUT. The Respondent has no trademark registration of the name ABSOLUTANAL or is in any way known under the name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name. There exists no connection, co-operation or relationship between the Complainant and the Respondent that would give rise to any license, permission, or other right to use the mark ABSOLUT in the domain name.

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

The Complainant finds bad faith is evidenced by the following three circumstances:

1) the offer by the Respondent to sell the contested domain name to the Complaint for a price that exceeds the registration costs of the Respondent; 2) the registration of the famous trademark ABSOLUT in combination with the pornographic word “anal” as a domain name and the use of the domain name in connection with a pornographic web site; and, 3) the use of the well-known and famous mark ABSOLUT which is so obviously connected with the Complainant and its products by someone with no connection to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It follows from paragraph 5(e) of the Rules that if a respondent does not submit a response, then in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. The Panel does not find that the present case involves “exceptional circumstances”. The case will thus be decided based upon the Complaint.

A. Identical or Confusingly Similar

In comparing the disputed domain name <absolutanal.com> and the trade mark ABSOLUT, the “.com” part of the domain name should be disregarded, as this part of the domain name is mandatory and only serves a technical purpose. The disputed domain name <absolutanal.com> contains the trademark ABSOLUT in full. It only differs from the trademark by the suffix “anal”. The “absolut” part of the domain name forms the characteristic part of the domain name. In the view of the Panel, the disputed domain name is confusingly similar to the Complainant’s trademark. The registration and use of the domain name constitutes a risk of confusion as users of the Internet would consider the domain name to be part of what has been called the “ABSOLUT ‘family’ of domain names” (V&V Vin&Sprit AB v. Wallin, WIPO Case No. D2003-0437). It is irrelevant in this regard that some users may realize that the web site to which the domain name relates has no relation to the Complainant. The finding of similarity is, furthermore, supported by the fact that the trademark ABSOLUT is a “well known” mark. The scope of protection offered to such marks is thus broader that the protection offered to other marks.

The finding of similarity in the present dispute is consistent with a number of previous UDRP panel decisions regarding the trademark ABSOLUT, see V&S Vin & Sprit AB v. Canal Prod Ltd, WIPO Case No. D2002-0437, V&S Vin & Sprit AB v. Giovanni Pastore, WIPO Case No. D2002-0926; V&V Vin&Sprit AB v. Wallin, WIPO Case No. D2003-0437;; and V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962.

B. Rights or Legitimate Interests

Based on the case file and the Complainant’s prima facie showing, the Respondent does not hold trademark or other rights in the trademark ABSOLUT or in the name “absolutanal” which might justify the registration or use of the disputed domain name <absolutanal.com>.

C. Registered and Used in Bad Faith

According paragraph 4(b) of the Policy, the following circumstance 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.

The Panel considers it as very unlikely that the Respondent should not have known of the trademark ABSOLUT when he registered and used the disputed domain name. In the view of the Panel, the most likely explanation for the Respondent’s choice of domain name is an intention to sell the domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. This is an indication of bad faith as indicated in paragraph 4(b)(i) cited above.

Even if one takes the view that the meaning of the word “absolut” in German is of relevance to the present dispute, the use by the Respondent would only be legitimate if the trademark were being used in good faith. This is not the case in the present situation where the Respondent has registered the domain name with knowledge of the trademark ABSOLUT and with the intention to free ride on the Complainant’s goodwill. Moreover, the Respondent has offered the domain name for sale 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 <absolutanal.com> be transferred to the Complainant.

Jens Schovsbo
Sole Panelist

Dated: September 29, 2005