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V&S Vin&Sprit AB (publ) v. Paul Stephey [2005] GENDND 1777 (20 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

V&S Vin&Sprit AB (publ) v. Paul Stephey

Case No. D2005-0992

1. The Parties

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

The Respondent is Paul Stephey Panama city, Florida United States of America.

2. The Domain Name and Registrar

The disputed domain name <absolutsexxx.com> was registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005.

On September 16, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue.

On September 17, 2005, Go Daddy Software 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 September 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2005.

The Response was filed with the Center on September 22, 2005.

The Center appointed Arne Ringnes as the sole Panelist in this matter on October 6, 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 is a Swedish owned company which produces, imports and distributes alcoholic beverages on the Swedish market and exports such beverages world wide.

The Complainant owns the trademark ABSOLUT mainly in respect of alcoholic beverages, and the trademark ABSOLUT is protected in more than a hundred countries. The Complainant has registered about five hundred domain names related to the trademark world wide. Most of these trademarks were registered during the 1990s, before the registration of the disputed domain name <absolutsexx.com>.

The Respondent acquired the domain name <absolutsexxx.com> on September 12, 2004, and the corresponding Internet site is offering pornographic material. Customers can pay for access to further pornographic material by online check or credit card.

5. Parties’ Contentions

A. The Complainant

The Complainant’s trademark ABSOLUT is registered and protected in more than a hundred countries. The trademark is extremely well-known in society and the circle of consumers and trade, and thus enjoys a wide trademark protection. The domain name registered by the Respondent is confusingly similar to this well-known trademark.

Sales of ABSOLUT vodka started in the United States and in Europe around 1980. The Complainant has made extensive marketing and advertising efforts. ABSOLUT is not only used in relation with vodka, but also in connection with other goods and services.

The Complainant has registered the domain name <absolut.com>. The Complainant has provided documentation that this web side has been rewarded several prices.

The Complainant has provided documentation according to which the trademark ABSOLUT was ranked among the hundred most valuable trademarked assets in the world in 2001, and that the trademark was ranked on top on Forbes’ list of top luxury brands in relation to marketing performance in 2002. The Complainant has also provided documentation that ABSOLUT was among the best selling trademarks for spirits on a worldwide basis in 2003.

The Complainant claims that the trademark ABSOLUT therefore possesses substantial inherent and acquired distinctiveness, and that the trademark therefore enjoys the particularly broad protection of a well-known trademark. The Complainant refers to the particularly broad protection provided to well-known trademarks by the Paris Convention for Protection of Industrial Property and the TRIPS agreement.

To substantiate its claims further, the Complainant refers to several previous cases concerning the trademark ABSOLUT (see V&S Vin & Spirit AB v. Canal Prod Ltd, WIPO Case No D 2002-0437– <absolut-sexe.com>, <absolute-sexo.com> and <absolute-x.com> (July 30, 2002); V&S Vin & Spirit AB v. Oliver Garcia, WIPO Case No D 2002-1081 – <absolutsexo.com> (February 4, 2003); as well as V&S Vin & Spirit AB v. Giovanni Pastore, WIPO Case No D 2002-0926 – <absolut-porno-star.com>, <absolut-sesso-immagini.com> and <absolut-video-hard.com> (December 3, 2002) and V&S Vin & Spirit AB v. Wallin, WIPO Case No D2003-0437 -<absolute-erotik.com> (July 12, 2005)). In all these previous cases, the panel finds that the Complainant’s trademark is distinctive and well-known.

The domain name registered by the Respondent is confusingly similar to the Complainants mark ABSOLUT. The suffix sexxx is not sufficient to avoid confusions between ABSOLUT and Absolutsexx, as ABSOLUT remains the most distinctive and preponderant element. The use of three instead of one x in sex does not change this.

Due to this, it is a high risk that the common public will regard the Respondents domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. In addition to this, the trademark will also be tarnished by the connection to the actual domain name and related websites.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has not registered trademarks or trade names corresponding to the domain name. Neither has the Complainant authorized or consented to the use of the domain name by the Respondent, and there is no relationship between the Complainant and the Respondent.

The Respondent has registered and used the trademark in bad faith.

The Respondent could not have ignored the existence of the ABSOLUT trademark when he registered the disputed domain name. The Complainant submits that the value and goodwill of the mark ABSOLUT can not have been unknown to the Respondent, and with certainty, this knowledge is what made the Respondent register the domain name at issue.

The Respondent is tarnishing the trademark ABSOLUT by misleading Internet users to a pornographic website. The use of a domain name based upon a famous mark for pornographic purposes is in itself an evidence of bad faith use of the domain name. As ABSOLUT is a well-known and famous mark, the use of the domain name by someone with no relevant connection with the products, is evidence of so called opportunistic bad faith.

The Complainant also claims that it is a sign of use in bad faith that the Respondent offers to sell the domain name to the Complainant for USD 500 when the Complainant contacted him in September 2004.

Based on this, the Complainant requests the administrative Panel that the domain <absolutsexxx.com> be transferred to the Complainant.

B. Respondent

The Respondent agrees that the Complainant owns the trademark ABSOLUT in respect of vodka, and that this trademark is world famous.

However, ABSOLUT is a word of common use in several worldwide locations, and can not constitute a trademark.

The Respondent submits that a search on the website “www.alexa.com” shows that <absolutsexx.com> has been operational since at least 2001, while he, on the other hand, acquired the domain name in September 2004.. This must be relevant as to whether the website was registered and used in bad faith.

The Respondent underlines that ABSOLUT is not a trademark, but a common word. Only ABSOLUT vodka and other derivatives would therefore be legitimated for the Complainant. In the Respondent’s opinion, the Complainant tries to control the free market through intimidation and force.

6. Discussion and Findings

A. Identical or Confusingly Similar

ABSOLUT is a registered trademark in more than a hundred countries world wide. The documentation forwarded by the Complainant shows that Complainant’s trademark ABSOLUT is well-known and distinctive. Although the documentation is from the period 2001-2003, the Panel finds that this must be relevant today as well.

The Respondents domain name incorporates the Complainant’s well-known trademark combined with the generic “sexxx”. The suffix “.com” is irrelevant in this respect. Although the word sex is written with triple “x” instead of one, this does not increase the distinguishing capacity of the word. The Panel finds that the element ABSOLUT clearly is the dominant part of the domain name, thus indicating a connection to the Complainant.

The trademark ABSOLUT has been subject of a number WIPO cases: WIPO Case No D2003-0437, V&S Vin & Spirit AB v. Wallin - <absolut-sexe.com> (July 12, 2003), D 2002-1081, V&S Vin & Spirit AB v. Oliver Garcia - <absolute-sexo.com> (February 4, 2003), WIPO Case No D2002-0926, V&S Vin & Spirit AB v. Giovanni Pastore - <absolute-porno-star.com>, <absolute-sesso-immagini.com>, <absolute-video-hard.com> > (December 3, 2002), WIPO Case No D2002-0437, V&S Vin & Spirit AB v. Canal Prod. Ltd. -<absolute-erotik.com> (July 30, 2002). WIPO Case No D2003-0301, V&S Vin & Spirit AB v. Corinne Ducos - <absolutbabes.com> (June 5, 2003), WIPO Case No D 2004-0962, V&S Vin & Spirit AB v. Oar Supplies - <absolutxxx.com> (December 27, 2004), WIPO Case No D 2004-0961, V&S Vin & Spirit AB v. Young Nah - <absolutbar.com> (December 31, 2004) and WIPO Case No D2004-0960, V&S Vin & Spirit AB v. Karel Hajek - <absolutperversion.com> (December 31, 2004). In all the above-mentioned cases the panels held that ABSOLUT is a well-known trademark, and that generic suffixes similar to “sex” lacked distinctiveness and were not sufficient to prevent a confusion with the trade mark ABSOLUT.

On this basis, the Panel concludes that the domain name <absolutsexxx.com> is confusingly similar to Complainant’s registered trademark ABSOLUT.

B. Rights or Legitimate Interests

The Respondent does not have any license or permission to use the trademark. He is not a representative of the Complainant, and there is no evidence that the Respondent has been commonly known by the domain name.

Further, there is no bona fide link between the domain name and the services offered at the Internet side. Use of a well-known trademark like ABSOLUT in a domain name attracts Internet users, taking advantage of the goodwill acquired by the trademark, and clearly tarnishes the trademark.

The Panel notes that “absolut” could be a dictionary term in certain languages. However, the Panel finds, in this specific case and in the circumstances present, that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. This finding is supported by the fact that the Respondent is located in the United States and the material on the website associated with the domain name is displayed in English so that the relevant dictionary term would be “absolute” instead of “absolut”. The Respondent has not come forth with any explanation why he is using “absolut” and not the correct English spelling of the word.

The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name <absolutsexxx.com>.

C. Registered and Used in Bad Faith

According to the Rules paragraph 4(b), evidence of registration and use in bad faith may for example be:

- evidence indicating that the Respondent registered the domain mainly for the purpose of transferring the name to the Complainant or to a competitor for a an amount of money exceeding costs directly related to the domain name;

- evidence that by using the domain, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Respondent claims that the domain name had been registered as early as in 2001, and that he acquired the domain in 2004. The Panel has received no evidence of previous use of the domain name, but under any circumstances the Panel finds that the relevant assessment is whether the Respondent registered the domain name in his name and made use of it in bad faith in 2004.

The Complainant has submitted no evidence permitting to conclude that the Respondent registered the domain mainly for the purpose of transferring the name to the Complainant for a an amount of money exceeding costs directly related to the domain name. The Respondent did not make such demands before the Complainant contacted him, and there are no indications that the Respondent has previously been involved in similar activities.

However, the Panel finds that by registering the domain in his name and using it, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Respondent could not ignore the existence of the Complainant’s trademark when he registered the domain in his name in Autumn 2004. The evidence provided indicates that the name was acquired in order to generate traffic to the Internet site, sponging on the similarity with the trademark ABSOLUT and its unquestionable goodwill.

Accordingly the Panel finds that the domain name <absolutsexxx.com> has been registered and been used by the Respondent in bad faith.

7. Decision

For all the foregoing reasons, in accordance to Paragraph 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <absolutsexxx.com> be transferred to Complainant.

Arne Ringnes
Sole Panelist

Dated: October 20, 2005