WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roust Trading Limited v. AMG LLC
Case No. D2007-1857
1. The Parties
The Complainant is Roust Trading Limited of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Jones Day, United States of America.
The Respondent is AMG LLC, of New Jersey, United States of America, represented by Silverman Sclar Shin & Byrne PLLC, United States of America.
2. The Domain Names and the Registrar
The disputed domain names are:
<imperiavodka.net>; <rsplatinum.com>; <rsplatinum.net>
<rsplatinum.org>
<rsvodka.com>
<rsvodka.info>
<rsvodka.net>
<rsvodka.org>
<russianstandardplatinumvodka.com>
<russianstandardplatinumvodka.net>
<russianstandardplatinumvodka.org>
<russianstandardvodka.com>
<russianstandardvodka.info>
<russianstandardvodka.net>
<russianstandardvodka.org>
<russianstandardvodkas.com>
<russiasstandardvodka.com>
<russkystandard.com>
<russkystandard.net>
<russkystandard.org>
<russkystandardvodka.com>
<russkystandardvodka.net>
<russkystandardvodka.org>
<russkystandart.com>
<russkystandart.net>
<russkystandart.org>
<russkystandartplatinum.com>
<russkystandartplatinum.net>
<russkystandartplatinum.org>
<russkystandartplatinumvodka.net>
<russkystandartplatinumvodka.org>
<russkystandartvodka.com>
<russkystandartvodka.net>
<russkystandartvodka.org>
(collectively referred to in this decision as “The Domain Names”). The Domain Names are all registered with NamesDirect.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2007. On December 17, 2007, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the Domain Names. On December 18, 2007, NamesDirect.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details. 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 December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. That date was subsequently extended by the Center, to January 17, 2008. The Response was transmitted to the Center on January 17, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on January 23, 2008. 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.
After the Panel had been appointed, the Complainant made an unsolicited filing by way of Reply. By Procedural Order No. 1 dated February 4, 2008, the Panel admitted a limited part of the Reply, being that part of the Reply which addressed a contention in the Response that a company with which the Respondent has been associated, had been party to a written agreement for the distribution of the Complainant group’s products in Canada. The Complainant asserted in its Reply that the purported Canadian distribution agreement had never been executed or otherwise concluded. The Panel took the view that the part of the Reply dealing with the alleged Canadian distribution agreement should be admitted, subject to the Respondent being permitted to file a Supplementary Response.
The Respondent was given until February 11, 2008 to file a Supplementary Response, limited to answering those parts of the Complainant’s Reply which the Panel had admitted. The time for the Panel to give its decision in the case was extended initially to February 25, 2008, and later to February 29, 2008.
The Respondent did not file any Supplementary Response. The Panel has therefore come to its decision in the case, on the basis of the evidence contained in the Complaint, in the Response, and in those parts of the Complainant’s Reply which the Panel admitted by Procedural Order No. 1.
4. Factual Background
The Complainant
The Complainant is Roust Trading Limited, a corporation organized under the laws of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. The Complainant markets and sells Vodka products which are produced in the Russian Federation and exported to many countries around the world.
According to the Complaint, the Complainant’s Vodka sales have been made under the trademark RUSSIAN STANDARD, from at least 1998. “Russian Standard” vodka is said to be also commonly referred to as “Russky Standart”. Vodka products sold by the Complainant in conjunction with the RUSSIAN STANDARD mark, are said to include a “Russian Standard Platinum” (since 2001), and an “Imperia” (since 2004). In the Complaint, the Complainant refers to its Russian Standard vodka product as “RS vodka”, to its Russian Standard Original product as “RSO”, and to its Russian Standard Platinum product as “RS Platinum”.
The Complainant’s Trademarks
The Complainant has shown that an apparently affiliated company, Roust Incorporated, of Moscow, Russian Federation (“Roust”), is the proprietor of the following international registrations under the Madrid Agreement and/or the Madrid Protocol. All of the following registrations originated in the Russian Federation, and all are for alcoholic beverages (except beer) in International Class 33:
(i) PYCCKNN CTAHDAPT – a Russian language transliteration of “Russky Standart” – application date May 30, 2000.
(ii) PYCCKNN CTAHDAPT IMPERIA – a Russian language transliteration of “Russky Standart” with the word “Imperia” – application date March 11, 2003.
(iii) RUSSKY STANDART IMPERIA – application date March 11, 2003.
(iv) RUSSIAN STANDARD IMPERIA – application date March 11, 2003.
(v) IMPERIA – application date August 19, 2004.
(vi) RUSSIAN STANDART – application date January 19, 2005.
(vii) RUSSIAN STANDARD – application date January 19, 2005.
In addition, the Complainant has shown that it is the registered proprietor of the word mark RUSSIAN STANDARD in the United States of America. The printout which the Complainant produced from the online database maintained by the United States Patent and Trademark Office (“USPTO”), showed that the Complainant was the proprietor of Application No. 78452142 for the word mark RUSSIAN STANDARD, in International Class 33, for “alcoholic beverages, namely, vodka”. The filing date was July 16, 2004. The USPTO database extract noted, under the heading “Current Status”: “The final review before registration has been completed for this Intent to Use application and it will register in due course.”
In view of the “current status” note on this application in the US PTO database, the Panel has itself checked the US PTO database, and notes that this application duly proceeded to registration on November 27, 2007, under registration number 3345092.
The Complainant has also shown that it is the registered proprietor of the word mark IMPERIA in the United States of America in International Class 33, for “alcoholic beverages, namely, vodka”. The filing date of this application was April 16, 2002, and the application proceeded to registration on September 20, 2005.
The Complainant says that its Russian Standard products and trademarks are extensively marketed through various channels, including television and magazine advertising, billboards and promotional events, and are featured on the authorized website at “www.russianstandard.com”. It contends that it has acquired unregistered trademark rights and valuable goodwill in its RUSSIAN STANDARD, RUSSIAN STANDARD PLATINUM, and IMPERIA marks.
The Respondent and the Domain Names
The Domain Names were registered on the following dates:
November 4, 2003 <russianstandardvodka.com>
<rsvodka.com>
October 4, 2004 <russianstandardvodka.net>
<russianstandardvodka.org>
<russianstandardvodka.info>
<rsvodka.net>
<rsvodka.org>
<rsvodka.info>
December 28, 2004 <russianstandardplatinumvodka.com>
<russianstandardplatinumvodka.net>
<russianstandardplatinumvodka.org>
<russkystandard.com>
<russkystandard.net>
<russkystandard.org>
<russkystandardvodka.com>
<russkystandardvodka.net>
<russkystandardvodka.org>
<russkystandart.com>
<russkystandart.net>
<russkystandart.org>
<russkystandartplatinum.com>
<russkystandartplatinum.net>
<russkystandartplatinum.org>
<russkystandartplatinumvodka.net>
<russkystandartplatinumvodka.org>
<russkystandartvodka.com>
<russkystandartvodka.net>
<russkystandartvodka.org>
<rsplatinum.com>
<rsplatinum.net>
<rsplatinum.org>
August 10, 2005 <imperiavodka.net>
September 15, 2005 <russianstandardvodkas.com>
April 10, 2007 <russiasstandardvodka.com>
According to the Complainant, the Respondent does not itself do business under the mark “Russian Standard Vodka”, or under any of the other Domain Names. The Respondent has registered the Domain Names with SEDO and Revenue Direct, two website parking companies which generate revenue for the Respondent by persuading internet users to click on advertising links to companies that pay for the receipt of internet traffic.
The Complainant says that the Domain Names resolve to websites which contain “sponsored results”, or “sponsored listings”, some of which are for competitors of the Complainant (such as Absolut Vodka, Ketel One Vodka, and suppliers of other vodkas and liquors). The Complainant also asserts that some of the sponsored links are to pornographic sites.
The Respondent says, in essence, that the Domain Names were registered by its principal, Nick Cerniglia, for the purpose of promoting and marketing Roust’s products in the United States of America and Canada, with full knowledge and authority from Roust to use its trade name for that purpose.
The Respondent explains that Mr. Cerniglia is the Vice –President of a corporation called First Class Enterprises Inc. (“FCE”), a company founded in 2002 by Mr. Cerniglia’s long-time friend and business associate, Evgeniy Migirov, for the purpose of importing alcohol products from the Russian Federation and distributing them in the North American market. Although the Domain Names are all registered in the name of AMG LLC, the Respondent says that Mr. Cerniglia was acting in his capacity as Vice-President of FCE when he registered the Domain Names. Annexed to the Response, were sworn statements from Nicholas Cerniglia and from Evgeniy Migirov. Mr. Cerniglia deposed that his duties as Vice-President of FCE included marketing, research and development of the North American market, identifying and securing distribution networks for the alcoholic products imported from the Russian Federation by FCE, and overseeing the day-to-day operations of FCE.
The Respondent says that, in the autumn of 2003, FCE approached senior managers of the Complainant to discuss business opportunities with regard to the possible importation of the Complainant’s liquor products, including the Complainant’s “Russian Standard” vodka, into the North American market. FCE offered to become the exclusive importer and distributor of the Complainant’s products in the North American market.
According to the Response, FCE had by late 2003 succeeded in negotiating a commitment from a major United States-based liquor distributor, Allied Beverage Group LLC (“ABG”), to purchase all “Russian Standard” vodka products which FCE might import into the United States of America. However the Panel notes from an ABG letter to FCE dated November 12, 2003 that any commitment from ABG was conditional on FCE obtaining “exclusive rights to import Russian Standard for the United States”.
The Respondent says that negotiations continued between FCE and Roust between December 2003 and August 2005. The Respondent says that Mr. Migirov traveled to the Russian Federation on at least six different occasions during that period, and met with several senior members of Roust’s management team.
The Respondent says that in the course of FCE’s negotiations with Roust, FCE applied for and secured a permit from the Alcohol and Tobacco Tax and Trade Bureau (“ATTTB”) of the United States Department of Treasury, to import and distribute “Russian Standard” vodka products. A similar application was lodged with the Canadian Government. The Respondent says further that Roust provided FCE with sensitive and confidential business information and trade secrets, including a detailed description of the distillation process for “Russian Standard” vodka (required by ATTTB as part of the application process).
The Respondent asserts that Roust understood that FCE needed to have the right to use the “Russian Standard” name in promoting and marketing Roust’s vodka products in the North American market. In support, the Respondent referred to the terms of what it said was an “exclusive contract with Roust” to import and promote “Russian Standard” vodka into Canada. This document, a copy of which was annexed to the Response, provided at clause 6.3 that FCE would “have the right to use “Russian Standard” trademark for the purpose of promoting the product”. The copy produced by the Respondent has not been executed by FCE, but a faxed copy of the execution page of the document does appear to have been signed for and on behalf of Roust.
The Respondent says that, at the time FCE and Roust entered into the Canadian Agreement, the parties were in the final stages of negotiations for an agreement that would have granted FCE exclusive rights to promote “Russian Standard” products in the United States of America, under terms substantially similar to the Canadian Agreement. However, Roust abruptly ended the negotiations in the autumn of 2005, without providing any explanation for doing so. The Respondent says that it has been informed that, shortly after ending its negotiations with FCE, Roust entered into an agreement with ABG, granting ABG the exclusive right to promote and distribute Russian Standard vodka products in the United States of America.
With respect to the present use of the Domain Names, the Respondent says that the Domain Names are parked with a service at “www.mydomain.com”, and that neither the Respondent nor FCE gets paid “per click”, or otherwise derives any commercial gain from these sites. The Respondent says that the Domain Names were only briefly parked with SEDO, for several weeks in 2007, and then only to allow FCE to collect data on the use of the websites to which the Domain Names resolved (a service that SEDO provides). The Respondent also says that it did not authorize the operators of the website at “www.mydomain.com”, or SEDO, to re-direct visitors to other sites, including those mentioned in the Complaint. The Respondent says that when it discovered that people seeking access to websites at the Domain Names were being re-directed in that fashion, it contacted the operator of the website at “www.mydomain.com” and requested that it cease the practice.
In its Reply, the Complainant denies that any “Canadian Agreement” ever existed. Specifically, the Complainant states in its Reply:
“More fundamentally, this alleged “agreement” was never signed by both parties, and indeed, has a signature page with a fax header that does not match the first two pages. Section 7.1 of the document also states that ‘[t]he overall management and control of the business of this Agreement shall be exercised only upon a written consent of each Party,’ but Respondent offers no evidence of such written consents to engage in business operations. To the contrary, Respondent’s own materials actually refer to the document as a “pre-contract” that was merely designed to permit FCE to “begin negotiations with [the] Canadian Government”, and only later lead to the execution of a “full scale contract”. Response, Exhibit D (August 8, 2005 correspondence from FCE). As confirmed in the Declaration of Leonid Yangarber …, Complainant has never actually had a business arrangement with FCE and does not even sell its products in Canada.”
The declaration of Leonid Yangarber filed with the Complainant’s Reply, first identified Mr. Yangarber as Director of Export for the Russian Standard Vodka company headquartered in Moscow, Russian Federation. At paragraph 4 of his declaration, Mr. Yangarber deposed that the Complainant and its affiliates do not have, and have never had, any business arrangement or relationship with the Respondent AMG or Nicholas Cerniglia, or with FCE. Mr. Yangarber deposed that none of those individuals or entities had ever had an exclusive or non-exclusive arrangement with his company to import or distribute Russian Standard’s products in any geographic area. He deposed further that, contrary to the suggestion in the Response, Russian Standard products are not exported to Canada.
The Complainant also noted in its Reply that, even if the Canadian Agreement had become operative (which it did not), it would have expired by its own terms in August 2007, prior to the filing of the Complaint in this proceeding.
Pre-commencement Communications between the Parties
In the Complaint, the Complainant stated that, in the course of a telephone conversation on September 27, 2007 between counsel for the Complainant and counsel for the Respondent, the Complainant’s counsel offered to compensate the Respondent for the (roughly) $3,000 estimated cost of registering and maintaining the Domain Names. According to the Complaint, the Respondent’s counsel responded by stating that his client was looking not at costs, but at the value of the Domain Names, and that the Complainant’s counsel should call back if he had a “serious offer” for the Domain Names.
5. Parties’ Contentions
A. Complainant
The Complainant contended as follows:
1. Certain of the Domain Names are identical to the Complainant’s marks RUSSIAN STANDARD, RUSSIAN STANDARD PLATINUM, and IMPERIA. Others incorporate variations of those marks that one would expect a mark owner to register as part of a domain name in order to protect the marks, such as common abbreviations and misspellings. Because the Domain Names actually incorporate the Complainant’s marks and abbreviations and misspellings thereof, they are confusingly similar to the Complainant’s trademarks.
2. The Respondent has no rights or legitimate interests in respect of the Domain Names, because:
(i) The Respondent has not used the Domain Names in connection with any bona fide offering of goods or services. Instead, the Respondent has registered the Domain Names with SEDO and Revenue Direct, for the purpose of generating pay-per-click revenue on advertising links at the websites to which the Domain Names resolve. That is not a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy (citing Blue Cross and Blue Shield Association v. Digi Real Estate Foundation/Domain Admin/NA NA, WIPO Case No. D2007-0022, and Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright, WIPO Case No. D2007-0267).
(ii) The Respondent does not itself do business under the mark “Russian Standard Vodka”, or under any of the other Domain Names. Nor is the Respondent commonly known by any of the Domain Names.
(iii) The Respondent has no license to use the trademarks of the Complainant, or to incorporate those marks into the Domain Names.
(iv) The Respondent is not making a legitimate non-commercial or fair use of the Domain Names or the Complainant’s marks. The websites established at each of the Domain Names generate “click-through” revenue through SEDO and Revenue Direct. Parking a Domain Name with this type of company is a commercial use.
3. The Domain Names were registered and are being used in bad faith:
(i) The Domain Names were registered in order to prevent the Complainant as owner of the relevant trademarks, from reflecting those marks in corresponding Domain Names. The Respondent has engaged in a pattern of such conduct (Policy, paragraph 4(b)(ii)).
(ii) The Domain Names incorporate distinctive trademarks used by the Complainant in connection with its various brands of vodka. The Respondent does not offer to sell any products or services under any of those trademarks, and has no license to use them. Those facts alone establish opportunistic bad faith, without the need to prove more (citing Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163, and Blue Cross (supra)).
(iii) The Respondent has never had any distribution arrangement with the Complainant, and that fact was acknowledged by the Respondent’s counsel when he spoke with the Complainant’s counsel on the telephone on September 27, 2007. The Respondent’s counsel conceded that the Respondent had never been in the liquor business, but claimed that Mr. Cerniglia had created a joint venture with another individual in an attempt to obtain United States distribution rights for the Complainant’s products. The Respondent’s counsel conceded that the parties “never got to a deal”, and even admitted that the Respondent had “procured [the Domain Names] in order to secure his position as a distributor”, and so no-one else could obtain them. The acquisition of domain names corresponding to complainant’s trademarks, when done to gain leverage to negotiate a commercial license with a complainant, is itself evidence of bad faith (citing Pentland USA Inc., Asco Group Ltd v. Garth Marriot, WIPO Case No. D2004-0031, and EVAC + CHAIR Corporation v. Handelsmaatscappij H. Van Leeuwen, WIPO Case No. D2003-0621).
(iv) The Respondent’s conduct also amounts to bad faith under paragraph 4(b)(iv) of the Policy. The Respondent has been using the Complainant’s trademarks to divert internet users away from the Complainant to others’ sites and products, for commercial gain. That constitutes bad faith under paragraph 4(b)(iv) of the Policy (citing Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142, and Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright (supra)).
(v) Furthermore, most of the websites established at the Domain Names include sponsored results or sponsored listings which include links to unsavory websites such as “www.hotrussianbrides.com”, “www.russianlovedream.com”, and “www.interkontakt.net” (“Looking For Polish Women”). On the website to which <russianstandardvodka.com> resolves, there are links to adult and pornographic sites. The use of the Complainant’s mark as a domain name pointing to a site offering pornographic material, tarnishes the Complainant’s existing marks and constitutes evidence of bad faith (citing Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001).
(vi) Bad faith is also established under other illustrative examples set forth in paragraph 4(b) of the Policy. The Respondent’s wholesale registrations have prevented the Complainant from reflecting its trademarks in corresponding domain names, and that, together with the Respondent’s “parking” of those domain names (having the effect of diverting internet users to other sites), constitutes purposeful disruption of the Complainant’s business in violation of paragraph 4(b)(iii) of the Policy.
(vii) It is clear from what the Respondent’s counsel said in the course of the telephone conversation on September 27, 2007, that the Respondent acquired the 34 Domain Names in order to prevent the Complainant from obtaining them, so that the Respondent could demand consideration for their transfer far in excess of the Respondent’s “out-of-pocket costs”, in violation of paragraph 4(b)(i) of the Policy.
B. Respondent
The Respondent contends as follows:
1. The Respondent admits that “many of the domain names are identical or similar to the alleged trademarks used by the Complainant”. However, “Russian Standard” is a commonly used descriptive phrase, and Roust has not offered any evidence that the phrase has become so closely associated with the Complainant’s products that it has acquired a distinctive secondary meaning in the marketplace. Several of the Domain Names, namely <russkystandard.com>, <russkystandard.org>, <russkystandard.net>, <russkystandart.com>, <russkystandart.org>, and <russkystandart.net>, are versions of the “Russian standard” phrase transliterated into English. Accordingly, as to those names, the Complainant has not met its burden of proving that the Domain Names are identical or confusingly similar to its trademark (citing Meat and Livestock Commission v. David Pearce aka OTC/The Recipe for BSE, WIPO Case No. D2003-0645, and UK Betting Plc v. Pam Oldfield, WIPO Case No. D2005-0637).
2. The Respondent has rights and/or legitimate interests in respect of the Domain Names, on the following grounds:
(i) Before the Respondent received any notice of the dispute, he was preparing to use the Domain Names in connection with a bona fide offering of goods or services. The Respondent refers to the negotiations between FCE and Roust, as described under the “Factual Background” section above, and refers specifically to the declarations of Messrs Migirov and Cerniglia attached to the Response. The Respondent registered the Domain Names acting in his capacity as the Vice-President of FCE, and in connection with the development, promotion, and marketing of “Russian Standard” vodka in the North American market. Accordingly, the Respondent has a legitimate interest in the Domain Names (citing Jack Daniel’s Properties Inc. v. Imanez/jackdanielsgifts.com, WIPO Case No. D2007-1443, holding that the respondent had a legitimate interest in the disputed domain name because it registered the disputed domain name with the intention of selling only licensed Jack Daniel’s goods and under circumstances in which it had reason to conclude that the trademark holder would not object (even though the complainant had not granted the respondent any license or other authorization to use its trademarks in relation to the disputed domain name)).
3. The Domain Names have not been registered and are not being used in bad faith, for the following reasons:
(i) The Respondent and FCE always acted in good faith in their dealings with Roust. Roust, on the contrary, has acted in bad faith by inducing, under false pretences, the Respondent and FCE to continue laying the groundwork for Roust’s introduction to the North American market in order to secure a contract with Roust, while secretly negotiating a similar deal with a company (ABG) that was introduced to Roust by the Respondent and FCE.
(ii) None of the examples of bad faith registration and use described at paragraph 4(b) of the Policy apply in this case. Specifically:
(a) the Domain Names were not registered for the purpose of selling, renting, or otherwise transferring the Domain Names to Roust or one of its competitors at a price exceeding the Respondent’s out-of-pocket costs directly related to the Domain Names. FCE’s use of the “Russian Standard” name in promoting and marketing Roust’s line of vodka products, was expressly contemplated in its exclusive contract with Roust for importation and distribution of the Russian Standard vodkas into Canada. Moreover, since registering the Domain Names, the Respondent has declined numerous offers to sell the Domain Names to third parties.
(b) With regard to paragraph 4(b)(ii) of the Policy, the Domain Names were not registered to prevent the Complainant from reflecting its mark in corresponding domain names. Indeed, the Domain Names were registered to promote and market the “Russian Standard” name and mark, as expressly contemplated by Roust and FCE. Certainly, neither the Respondent nor FCE has engaged in a pattern of similar conduct.
(c) With respect to paragraph 4(b)(iii) of the Policy, Roust and FCE are not competitors. On the contrary, FCE has sought to partner with Roust to import, distribute, promote, and market, on an exclusive basis, the “Russian Standard” vodka products in the North American market. The Domain Names were not registered to somehow disrupt Roust’s business – by disrupting Roust’s business, FCE would have undercut its own plans to promote and market “Russian Standard” vodka.
(d) With respect to paragraph 4(b)(iv) of the Policy, the Domain Names were not parked with a view to obtaining pay-per-click revenue. Neither the Respondent nor FCE has ever received pay-per-click revenue, or other remuneration from SEDO. Nor did the Respondent agree with, or authorize, the operators of the website at “www.mydomain.com”, or SEDO, to have visitors to websites at the Domain Names redirected to other sites, including those mentioned in the Complaint. The Respondent contacted the operators of the website at “www.mydomain.com” requesting that they cease that practice, as soon as the Respondent discovered that people seeking access to websites at the Domain Names were being redirected.
6. Discussion and Findings
A. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
B. Identical or Confusingly Similar
Domain Names incorporating the Expressions “russian standard” or “russiasstandard”
The Complainant has proved that it is the registered proprietor of the mark RUSSIAN STANDARD in the United States of America, for “alcoholic beverages, namely, Vodka”. Roust is also the owner of international registrations of that mark under the Madrid system of international trademark registration.
The Panel rejects the Respondent’s submission that the expression “Russian Standard” is merely descriptive, and could not be the subject of trademark rights. Except in very unusual circumstances, Panels in administrative proceedings such as this will not look behind decisions of territorial trademark authorities who have accepted marks for registration; the fact of registration provides sufficient prima facie proof of a “right” under paragraph 4(a)(i) of the Policy (see for example, “WIPO Overview of WIPO Panel Views on selected UDRP Questions”, at para 1.1 – proof of ownership of a registered trademark is normally sufficient.) In this case, the evidence strongly supports the existence of the claimed trademark rights, quite apart from the registrations: FCE spent many months negotiating with Roust to obtain the right “to use Russian Standard trademark to promote companies product” (an extract from letter from Evgeniy Migarov dated August 15, 2005, a copy of which was annexed to the Response).
Eight of the Domain Names incorporate the Complainant’s RUSSIAN STANDARD mark in full, and another consists of the expression “russiasstandardvodka.com”. In the Panel’s view, the eight domain names incorporating the words “Russian Standard” are confusingly similar to the Complainant’s RUSSIAN STANDARD mark. It is well-established that the incorporation of a complainant’s mark in full within a disputed domain name, may be sufficient to establish confusing similarity between the mark and the disputed domain name – See, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member Panel decision The Ritz Hotel Ltd v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially UK v. Mark Schnoreberg / Quintessentially Concierge, WIPO Case No. D2006-1643.
When comparing a disputed domain name with a complainant’s mark, the generic suffixes .com, .net., .org, .info, etc, are not taken into account. Once those suffixes are put on one side, it can be seen that the various Domain Names which incorporate in full the RUSSIAN STANDARD mark, only differ from that mark by the addition of references to the very products which are sold by reference to the mark – “vodka”, “vodkas”, and “platinum vodka”. Forming a disputed domain name by adding to a third party’s trademark a word which is entirely descriptive of the product sold by the third party under that mark, has been held by numerous panels to exacerbate the confusing similarity which is caused by the use of the third party’s mark. (For an example, refer to the Ritz Hotel Limited case, supra).
With respect to the Domain Name <russiasstandardvodka.com>, the only difference is that the “n” in the word “Russian”, has been replaced with an “s”. That is a very minor typographical change, which leaves the visual and phonetic similarity between this particular Domain Name and the Complainant’s RUSSIAN STANDARD mark, substantially intact. This particular Domain Name is also confusingly similar to the RUSSIAN STANDARD mark in which the Complainant has rights.
The Respondent submitted (on the authority of the Meat and Livestock Commission v David Pearce and UK Betting Plc v Pam Oldfield cases, supra) that the Complainant has not discharged its burden of proving confusing similarity, because of the essentially descriptive nature of the expression “Russian Standard”. The Respondent argues (on the authority of those decisions) that where a mark is substantially descriptive (and therefore relatively weak), minor changes are sufficient to distinguish a disputed domain name from that mark (and so avoid a finding of confusing similarity). The Panel accepts that as a general proposition, but notes that in this case the Complainant has successfully registered RUSSIAN STANDARD as a word mark in the United States of America, and must therefore have persuaded the USPTO that that word mark is capable of distinguishing and/or is distinctive of the vodka product which is sold under the mark. (The mark relied upon by the complainant in the Meat and Livestock Commission case, was a logo mark, which incorporated the wholly descriptive phrase “British Meat”, and it was the logo, or device, elements of the mark which gave it its distinctiveness – of course the device elements were not present in the disputed domain names in that case (<britishmeat.com> and <britishmeat.org>)).
The Panel in UK Betting Plc regarded the unregistered mark relied upon by the complainant as being well towards the descriptive end of the spectrum, or range, of potential trademarks (i.e., the range between coined, or made-up, words at one end of the spectrum, and wholly descriptive expressions at the other). In those circumstances, minor differences were regarded as sufficient to distinguish the disputed domain names from the complainant’s mark, and thus preclude a finding of confusing similarity.
In this case, the Panel is not persuaded on the evidence that it should regard RUSSIAN STANDARD as being towards the descriptive end of the range of registrable marks. Certainly “Russian” is descriptive (of a product coming from the Russian Federation), but “standard”? The Panel has no evidence that vodkas may be described in ordinary English usage as “standard”, nor any idea of what might qualify as a “non-standard” vodka. There is simply no evidence on the point, and therefore no basis for the Panel to apply the principle illustrated in the Meat and Livestock Commission, and UK Betting Plc cases. In those circumstances, the fact that the Complainant and Roust have successfully registered RUSSIAN STANDARD as a word mark, must be decisive in the Complainant’s favour.
For the foregoing reasons, the Panel finds that the following Domain Names are confusingly similar to the RUSSIAN STANDARD mark in which the Complainant has rights:
<russianstandardvodka.com>
<russianstandardvodka.info>
<russianstandardvodka.net>
<russianstandardvodka.org>
<russianstandardvodkas.com>
<russianstandardplatinumvodka.com>
<russianstandardplatinumvodka.net>
<russianstandardplatinumvodka.org>
<russiasstandardvodka.com>
Domain Names incorporating the Expressions “Russkystandard”, or “Russkystandart”
Particulars of international trademark registrations which the Complainant has produced, sufficiently establish that “Russky Standart” is the English transliteration of the Russian language expression “PYCCKNN CTAHDAPT”, which in turn means “Russian Standard” in English.
In addition, the Complainant has sufficiently established that Roust holds an international registration for the English language mark RUSSKY STANDART IMPERIA (International Registration No. 803,897; application date March 11, 2003), for alcoholic beverages (except beer) in International Class 33. The evidence shows that one of the Roust’s vodkas is known as “Imperia”, and that the Complainant is the proprietor of the registered mark IMPERIA in the United States of America.
No point has been taken in the Response that the RUSSKY STANDARD or RUSSKY STANDART marks (or the Russian transliterations thereof) are held by Roust rather than by the Complainant. The Complainant asserts in the Complaint that it sells and markets vodka products under the Russian language equivalent of these two expressions, and that is acknowledged in the Response, where the Respondent admits that many of the Domain Names are identical or similar to the alleged trademarks used by the Complainant (the Panel’s emphasis). The Respondent also says in the Response that, in the fall of 2003, FCE “approached senior managers of the Complainant, Roust Trading Limited (“Roust”)” (with a view to negotiating an exclusive distribution agreement for RUSSIAN STANDARD vodkas in the North American market). FCE’s negotiations thereafter appear to have been with the Moscow-based Roust. The supporting declaration from Mr. Yangarber, from the Moscow Head Office of the makers of the RUSSIAN STANDARD products, also tends to support the view that the Complainant is licensed to use the relevant marks, including the Russian language PYCCKNN CTAHDAPT mark and translations thereof, in its marketing and distribution activities. The fact that the Complainant is the registered proprietor of the various United States applications and registrations, points to the same conclusion. The Panel therefore finds, on the balance of probabilities, that the Complainant holds a license from Roust to use the various marks owned by Roust on which the Complainant relies.
A number of Panel decisions have found that a licensee of a trademark has sufficient rights in that mark for the purposes of paragraph 4(a)(i) of the Policy – see, for example, the decision of this Panel if NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ; WIPO Case No. D2007-1079, and the Panel decisions referred to pages 8 to 10 of the decision in that case.
In Société pour l’Oeuvre et la Mémoire D’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, the Panel was required to compare the Complainant’s French language mark (“Le Petit Prince”), with a domain name which consisted of the English translation of that expression, namely “The Little Prince”). The Panel noted:
“However, a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages, if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Genererale des Etablissements Michelin – Michelin & Cie v Graeme Foster, WIPO Case No. D2004-0279. The Panel observes that Complainant’s registered trademark is identical with the English translation of Complainant’s trademark and title “Le Petit Prince”, and that the English title “The Little Prince” of Saint Exupéry’s novel is well known in the English speaking world.”
There is a degree of phonetic and visual similarity between the expressions “Russky” and “Russian”, and a significant number of internet users would be aware that “russky” is a transliteration of the Russian language (Cyrillic script) word which translates to “Russian” in English. Also, the words “standard” and “standart” are either identical or nearly identical to the ‘STANDARD” part of the Complainant’s RUSSIAN STANDARD mark. In those circumstances, the Panel is satisfied that, to a significant number of internet users, the expressions “russky standard” and “russky standart” would convey the same meaning as “Russian Standard”.
Nor do the addition of the generic expressions “vodka” and “platinum” do anything to alleviate the confusion which is likely to arise from the Respondent’s use of the expressions “russkystandard”, and “russky standart” in those of the Domain Names which incorporate those expressions. Those words are simply descriptive of products sold by the Complainant, and they have the effect of exacerbating the confusing similarity.
Having regard to the foregoing considerations, the Panel is satisfied that the following Domain Names are confusingly similar to Roust’s RUSSKY STANDART IMPERIA mark (in which the Complainant has rights), and to the Complainant’s RUSSIAN STANDARD mark.
<russkystandard.com>
<russkystandard.net>
<russkystandard.org>
<russkystandardvodka.com>
<russkystandardvodka.net>
<russkystandardvodka.org>
<russkystandart.com>
<russkystandart.net>
<russkystandart.org>
<russkystandartplatinum.com>
<russkystandartplatinum.net>
<russkystandartplatinum.org>
<russkystandartplatinumvodka.net>
<russkystandartplatinumvodka.org>
<russkystandartvodka.com>
<russkystandartvodka.net>
<russkystandartvodka.org>
The Domain Name imperiavodka.net
The Complainant has proved that it is the registered proprietor of the mark IMPERIA in the United States of America, in respect of “alcoholic beverages, namely, vodka”.
This Domain Name differs from that registered mark only by the addition of the word “vodka” and the generic suffix “.net”. The word “vodka” is, of course, descriptive of the very product which the Complainant markets under the IMPERIA mark, and on the authority of decisions such as The Ritz Hotel Limited, the addition of the word “vodka” serves only to exacerbate the confusion likely to be caused by the use of the mark. Accordingly, the Panel finds that the Domain Name <imperiavodka.net> is confusingly similar to the mark IMPERIA, in which the Complainant has rights.
The “rs” Domain Names – those incorporating “rsplatinum” or “rsvodka”
The Complainant has not established that either Roust or it has registered trademark rights in the expressions “rs”, “rsvodka”, “platinum”, or “rsplatinum”. While the letters “rs” may be an abbreviated form of the word, “russian standard” that fact alone is not sufficient to establish unregistered trademark rights in the expression “rs” absent evidence of acquired distinctiveness and use as a mark.
The Complainant has produced examples of products labels which do show the word “platinum” used on the bottles. But the relevant labels which the Complainant produced also carry the expression “Silver Filtered”, and the Panel is aware that other manufacturers of vodkas use the expression “platinum” in describing their particular products. The Panel is therefore not satisfied, on the evidence, that the Complainant has established that it has any relevant rights in the expression “platinum”.
Neither “platinum” nor “rsplatinum” is visually or phonetically similar to any mark in which the Complainant has proved that it has rights. As for the “ideas” conveyed by the “rsplatinum” Domain Names, “platinum” is of course the name of a precious metal. It may also have other meanings which are equally unrelated on the face of it to the Complainant’s products. Also, the Panel notes that none of the sponsored links on the website, to which the three “rsplatinum” Domain Names resolve, appear to be sites which are associated with vodkas, let alone with the vodkas marketed by the Complainant. Having regard to those facts, and to the absence of any evidence that a significant number of consumers would associate the expression “rsplatinum” with the Complainant, with Roust, or with any of their marks, the Panel is not satisfied that the Domain Names which incorporate the expression “rsplatinum” are confusingly similar to any mark in which the Complainant has rights.
The Domain Names which incorporate “rsvodka” are more difficult, because the reader’s attention is immediately focused on the “vodka” product category, and it may be thought that internet users would assume that any website at an “rsvodka” domain name would be concerned with a vodka known as “RS”. There is no dispute that the Complainant’s RUSSIAN STANDARD vodka products are sold around the world, nor that the RUSSIAN STANDARD mark would be familiar to thousands of internet users. As far as the evidence shows, there is no vodka which might be referred to as “RS”, other than the Complainant’s RUSSIAN STANDARD vodka. Also, the Panel notes that, in the correspondence between FCE and Roust, the expression “Russian Standard” was frequently abbreviated to “RS”. If that abbreviation was used by FCE and Roust, it seems probable that others familiar with the RUSSIAN STANDARD vodka would also recognize “RS”, in the context of vodkas and its use here in the Domain Names in combination with the word “vodka”, as an abbreviation for the Complainant’s mark.
The question of confusing similarity is finely balanced, but in the end the Panel is prepared to accept that, to a significant number of internet users who were familiar with the Complainant’s RUSSIAN STANDARD product, the expression “rsvodka” would bring to mind, and convey the same impression as, the RUSSIAN STANDARD vodka with which they are familiar. The Panel therefore concludes that the Domain Names incorporating the expression “rs vodka” are confusingly similar to the Complainant’s RUSSIAN STANDARD mark.
For the foregoing reasons, the Panel finds that the following Domain Names are confusingly similar to the Complainant’s RUSSIAN STANDARD mark:
<rsvodka.com>
<rsvodka.net>
<rsvodka.org>
The Panel is not satisfied that the Domain Names <rsplatinum.com>, <rsplatinum.net>, and <rsplatinum.org> are confusingly similar to any mark in which the Complainant has shown that it has rights. Accordingly, the Complaint will be dismissed in respect of those three Domain Names.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
It is generally regarded as sufficient prima facie proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. In this case, the Panel has found that all but three of the Domain Names are confusingly similar to marks in which the Complainant has rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by any of the Domain Names. The remaining issue on the adequacy of the prima facie proof, is whether or not the Complainant has authorized the Respondent to use the Domain Names or any of them.
Has the Respondent been authorized to use the “Russian Standard” Marks?
The Respondent has produced a document dated August 30, 2005, which appears on its face to be an exclusive distributor agreement under which FCE would distribute Roust’s Russian Standard Original and Russian Standard Platinum vodkas in Canada, for a period of two years from the date of the agreement. Clause 6.3 of the document provided that FCE would have the right to use the “Russian Standard” trademark for the purpose of promoting the product.
The copy of this document produced by the Respondent does not appear to be signed by FCE, although there is a faxed copy of the execution page of the agreement which bears the signature of Roust’s General Director, Mr. Kozlov, and what appears to be a “Russian Standard Vodka” company seal.
The Complainant says that this document never became operative. It says that it was never signed by both parties, and it also points to clause 7.1 of the document, which provided that “the overall management and control of the business of this Agreement shall be exercised only upon written consent of each party”. The Complainant says that there has been no such “written consent”, and that the document was only intended to be a “pre-contract”, designed to permit FCE to begin negotiations with the Canadian Government.
By Procedural Order No. 1, the Panel invited the Respondent to respond to the Complainant’s contention that the document dated August 30, 2005 never became operative. The Respondent elected not to respond to that invitation.
The Panel finds, on the evidence which has been produced and on the balance of probabilities, that neither Roust nor the Complainant has ever authorized the Respondent or FCE to use any of the Complainant’s marks or Roust’s marks (or any expressions confusingly similar thereto), whether in the Domain Names or otherwise. That finding is based on the following facts:
1. There is no evidence that the alleged Canadian Agreement was ever signed by FCE.
2. The Complainant’s contention that the alleged Canadian Agreement never became operative, has not been challenged by the Respondent.
3. If the purported Canadian agreement had become operative, one would have expected FCE to have imported and sold in Canada, some of Roust’s vodka products. The Complainant says that that has never happened, and the Respondent has not disputed that statement.
4. If the alleged Canadian Agreement had become operative, one would also have expected to see active websites at one or more of the Domain Names, so that the importing and distribution of the Russian Standard vodkas could be supported by appropriate online marketing. There is no evidence of the Respondent having established any such website.
5. In its Complaint, the Complainant referred to a telephone discussion between the Complainant’s counsel and the Respondent’s counsel, on September 27, 2007. The Complainant says that counsel for the Respondent acknowledged in that telephone conversation, that the parties “never got to a deal”. The Complaint went on to allege that the Respondent’s counsel “even admitted that the Respondent ‘had procured the names in order to secure his position as a distributor’ and so no-one else could get them”. Those statements in the Complaint were not challenged in the Response.
The Complainant having provided sufficient prima facie proof that the Respondent has no right or legitimate interest in the Domain Names, the evidentiary onus shifts to the Respondent to demonstrate that it does have some rights or legitimate interests.
The Respondent’s Claim to rights or legitimate interests in the Domain Names
The Respondent relies on the example of a right or legitimate interest set out at paragraph 4(c)(i) of the Policy. The Response says that, before the Respondent received any notice of the present dispute, “he was preparing to use [the Domain Names] “in connection with a bona fide offering of goods or services”.
The “bona fide offering of goods or services” relied upon, is the importing of the various Roust vodka products from the Russian Federation, and the distribution of those products in the United States of America and Canada. The “preparations” are said to include the lengthy negotiations between FCE and Roust (including numerous trips by Mr. Migirov to the Russian Federation), the negotiations with, and securing of a conditional commitment from, ABG, the securing of a permit to import and distribute “Russian Standard” vodka products into the United States of America, and the receipt by FCE of certain confidential information relating to the manufacture of Roust’s vodka products. The Respondent says that the Domain Names were registered “in connection with the aforementioned development, promotion and marketing of ‘Russian Standard’ vodka in the North American market”. The Respondent then submits, on the authority of the Jack Daniel’s Properties Inc case (supra), that the Respondent, as a prospective exclusive distributor of the Roust vodka products in North America, acting in circumstances where the Respondent had no reason to conclude that Roust or the Complainant would object, enjoyed a right or legitimate interest which entitled it to register the Domain Names.
The Panel notes as a preliminary matter, that FCE could only claim to have been a prospective distributor or reseller of Russian Standard vodka products in North America – as far as the evidence shows, neither FCE nor the Respondent has sold a single bottle of RUSSIAN STANDARD vodka in the North American market. As a prospective distributor/reseller only, neither FCE nor the Respondent could sensibly have had a greater right to register and use the Domain Names than an actual distributor or reseller of the products would have had.
Re-seller’s rights to use a Manufacturer’s Trademarks in Domain Names – Previous Panel Decisions
There is now a considerable number of Panel decisions which have considered the difficult issue of the right of a distributor or reseller of manufactured products, licensed or otherwise, to use the manufacturer’s trademark in a domain name, for the purpose of establishing a website through which genuine goods of the manufacturer will be marketed. The differing approaches of WIPO Panels on this issue, are helpfully summarized in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, where the Panel said:
“The Panel observes that there are different views as regards the question of the conditions under which authorized or non-authorized resellers or distributors have a legitimate interest to use as domain name the manufacturer’s trademark in identical form or with the addition of descriptive elements.
Three views can be distinguished in the previous WIPO UDRP decisions:
(1) At one end of the spectrum, it is argued that the authorization to market the products under the trade name does not as a matter of principle constitute an authorization to use the manufacturer’s trademark as a domain name or as part of a domain name. If the use of the domain name is not expressly granted, the right to market the trademark holder’s products under the complainant’s trademark merely establishes a right to use the trademark for the marketing of the trademark holder’s products but not a more extensive right to use the trademark as a domain name (See Nokia Corporation v Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 - <worldnokia.com>, finding that a licensed reseller could only have a right to a domain name which included the trademark NOKIA if the trademark owner has specifically granted that right. (See Volvo Trademark Holding AB v Peter Lambe, WIPO Case No. D2001-1292 - <volvoexhausts.com>, finding that the manufacturer of ‘unoriginal’ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but that this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.).
(2) The contrary opinion was upheld in a dispute between Milwaukee Electric Tool Corporation and one of its resellers concerning the domain name <milwaukeetool.com> (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). The panel pointed out that it did not suggest a general rule regarding relationships between trademark holders and authorized distributors, but in the specific case held that a reseller who was entitled by contract to use the complainant’s trademark in his advertising and had lawfully marketed the trademark holder’s products over many years had a legitimate interest in the domain name and in any event was not using it in bad faith. Similar reasoning was applied in the Daimler Chrysler A.G. v Donald Drummonds decision ( WIPO Case No. D2001-0160, with dissent,), in which the holder of the domain name <mercedesshop.com> was admittedly not acting as a reseller but marketed spare parts and accessories on the Internet using a disclaimer, and for this reason was regarded by the panel as a legitimate user of the domain name. Similar views have also been upheld by UDRP panels. (See Draw-Tite Inc. v Plattsburg Spring Inc., WIPO Case No. D2000-0017 - <drawtite.com>; Weber-Stephen Products Co. v Armitage Hardware, WIPO Case No. D2000-0187 - <webergrills.com>; <webergrill.com>).
(3) The majority view lying between these two was first put forward in the case of Oki Data Americas, Inc. v ASD, Inc., a conflict between a US manufacturer of computer accessories and an authorized reseller (Oki Data Americas, Inc v ASD, Inc., WIPO Case No. D2001-0903 - <okidataparts.com>). In the panel’s view, the use of a manufacturer’s trademark as a domain name by an authorized dealer or reseller is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com>) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>).
This Panel follows the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent.”
The Jack Daniel’s Properties Inc case relied upon by the Respondent, was a decision which followed the Milwaukee Electric Tool Corporation case (referred to by the Panel in Volvo Trademark Holding AB v. Auto Shivuk as an example of the “contrary opinion” described at paragraph (2) of the passage from the Volvo Trademark Holding AB case quoted above). Both Jack Daniel’s Properties, Inc. and Milwaukee Electric Tool Corporation appear to the Panel to be distinguishable. In both there had been a period of actual use of the disputed domain name, during which trademarked goods of the complainant had been marketed. In each case, the panel found that it was reasonable for the respondents to have concluded that the complainant would have no objection to the registration and use of the disputed domain name. In this case, there is no evidence of the Respondent ever having used the Domain Names for any purpose related to the re-selling of the Complainant’s, or Roust’s, trademarked products, and the evidence does not support the view that the Respondent or FCE believed that they were entitled to use the Domain Names in connection with the marketing and promotion of “Russian Standard” vodka products. The very fact that no “Russian Standard” website has been established by FCE or the Respondent is consistent with that conclusion.
As noted in the passage from the Volvo Trademark Holding AB case quoted above, the majority view of WIPO Panels on the question of a reseller’s right to register a domain name incorporating a manufacturer’s trademark (for the purpose of marketing that manufacturer’s goods through a website at the domain name), is the view that was first articulated by the Panel in Oki Data America’s Inc v. ASD Inc, WIPO Case No. D2001-0903. That case established four criteria which a reseller must satisfy in order for the reseller’s offering of goods or services to be regarded as bona fide under paragraph 4(c)(i) of the Policy.
The first of the Oki Data criteria, is that the respondent must actually be offering the goods or services at issue. Neither FCE nor the Respondent meets that criterion in this case.
The third of the criteria from the Oki Data America’s Inc case, is that the site at the disputed Domain Name, must accurately disclose the registrant’s relationship with the trademark owner. In this case, the only websites to which the Domain Names have resolved, have been parking websites, which, at least until recently, have contained sponsored links to third party websites, at least some of which have been marketing goods of the Complainant’s competitors. There appears to have been nothing on these websites to make it clear that the Respondent had no connection with Roust or with the Complainant.
The fourth criterion from Oki Data America’s Inc, is that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. The Panel in Oki Data America’s Inc followed its earlier decision in Magnum Piering, Inc v. Mudjackers, WIPO Case No. D2000-1525, in which the Panel had found that “a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”.
The Magnum Piering, Inc case is particularly instructive in the context of this dispute. In Magnum Piering, Inc, the complainant was the owner of the common law marks MAGNUM and MAGNUM PIERING. The respondent was a licensed dealer in the Complainant’s products. The dealership agreement specifically precluded the respondent from using the Magnum trade names or trademarks in any manner other than in the distribution of brochures and other information or materials regarding the Complainant’s systems. Slightly over two weeks after the dealership agreement was signed, the respondents, acting without the complainant’s consent, registered seven of the (fourteen) disputed domain names. Approximately one year later, while the dealership agreement was still in force, the respondents registered a further five of the disputed domain names. The final two disputed domain names were registered approximately six months later, after the dealership agreement had been terminated.
The Panel in Magnum Piering, Inc said:
“Assuming that it was important to Respondents that Complainant operate a website in order for the business relationship to succeed, Respondents’ registration of 14 separate domain names goes far beyond what was required. Moreover, there is no reason that ownership in the registered domains had to reside in Respondents; Respondents easily could have registered the domain names in Complainant’s name if the goal was to ensure that Complainant had a website that could be used jointly to promote the parties’ relationship. Furthermore, as is apparent from Respondents’ resounding success in registering 14 logical domain names for Complainant, Complainant was in no danger of “losing” a logical domain name to anyone other than Respondents.
To the extent that Respondents argue that their multiple registrations were designed to ‘protect’ Complainant from cybersquatters, the Panel expressly finds that Respondents lacked a legitimate interest in so doing. Complainant may engage in self-protection if it so desires, but Respondents were mere officious interlopers. Respondents suggest no reason why they would be entitled to challenge other registrants of similar ‘magnum’ domain names; without a legitimate interest in the ‘MAGNUM’ mark, they have no legitimate interest in preventing others from squatting on that mark …
Respondents’ conduct establishes bad faith. Not only did Respondents attempt to occupy the field of rational domain names for Complainant’s business, they then offered to lease the domain names to Complainant …
As noted above, Respondents’ multiple domain name registrations have no real purpose other than to prevent Complainant from reflecting its marks in corresponding domain names. This is precisely the kind of abusive behavior the Policy was designed to address. Policy para 4(b)(ii).”
The Oki Data Americas Inc criteria were applied by the three-member Panel in Experian Information Solutions Inc v Credit Research Inc., WIPO Case No. D2002-0095, where the disputed domain names were <experiancredit.com>, <experiancredit.net>, and <experiancredit.org>. The respondent failed to establish a bona fide resellers’ interest under the four Oki Data criteria, primarily because it was selling the Complainant’s competitors’ products in addition to the Complainant’s products (contrary to Oki Data criterion (ii)). However, the Panel in Experian Information Solutions Inc. also noted:
“Finally, Respondent’s conduct also fails under the fourth element of the Oki Data test. By registering the domain names in three of the principal global top level domains, Respondent has gone well beyond any potential legitimate use and instead has cornered the market for use of this specific domain name.”
The majority view established initially in the Oki Data Americas Inc. case is, in this Panel’s view, the appropriate test by which the Respondent’s claim to a right or legitimate interest under paragraph 4(c)(i) of the Policy should be tested. The four criteria established in the Oki Data case have been applied to both licensed and unlicensed resellers, and, as the Panel has noted, a party like the Respondent in this case, who was only ever a prospective re-seller, could hardly be in a better position than, say, an authorized dealer.
Applying the four Oki Data Americas Inc criteria in this case, it is immediately apparent that the Respondent fails the Oki Data test, most flagrantly in respect of criterion number (iv): the respondent/reseller must not try to corner the market in all domain names – a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark.
In this case, the Respondent has registered no fewer than 34 Domain Names. As in the Magnum Piering Inc. case, that goes “far beyond what was required”. Again, following Magnum Piering Inc., there is no discernable reason in this case why ownership of the various Domain Names had to reside in the Respondent. The Respondent could easily have registered the Domain Names in the Complainant’s name, or at very least entered into an interim arrangement with Roust or with the Complainant, under which the Domain Names would be transferred to Roust or the Complainant if the negotiations did not prove fruitful, or on the termination of any agreed distribution agreement.
Nor can the Respondent in this case argue that the multiple registrations were designed to “protect” the Complainant from cybersquatters. The Panel agrees entirely with the experienced Panel in Magnum Piering Inc., who categorized the respondent in that case as a “mere officious interloper”.
Finally, the Panel refers to the decision in Pentland USA Inc., Asco Group Limited v Garth Marriot, WIPO Case No. D2004-0031, a case relied upon by the Complainant. The disputed domain name in that case was <kangaroosusa.com>, and the complainant was the proprietor of numerous trademark registrations for “Kangaroos” marks. The case has some similarities with the present case, in that the respondent in Pentland USA Inc. had approached the complainant to see if it would be willing to appoint the Respondent as an official retailer/licensee of KANGAROOS-branded products in the United States of America. There were negotiations between the parties, but eventually the United States license was awarded to another candidate. As in this case, the respondent registered the disputed domain name during the course of the unsuccessful negotiations.
The Panel in the Pentland USA Inc. case held that the respondent had failed to establish any right or legitimate interest in the disputed domain name. The Panel noted:
“The Panel is satisfied that a businessman, such as Respondent, would register this type of domain name to prevent the holder of the trademark from registering the domain name. The fact that the First Complainant’s subsidiaries have a number of similar domain names does not prevent this from being applicable. …
The Panel is satisfied that the Respondent registered the domain name to give the impression that he was affiliated in some way with the First Complainant. Respondent is clearly aware of the value of the trademarks in this sector and is surely aware of the prima facie right of a trademark holder to use of a corresponding domain name. …For the Panel, if a party is negotiating this type of arrangement, it is difficult for the potential licensee or distributor to justify registration of a domain name corresponding to that of the trademark without the consent of the proposed licensor or supplier. Therefore, the use of this domain name during and after such negotiations is evidence of bad faith.” (The Panel’s emphasis).
Policy – Paragraph 4(c)(i) – Panel’s Conclusion
The Panel concludes that the Respondent fails to satisfy the Oki Data Americas Inc criteria, and that its activities in regard to the 34 Domain Names therefore cannot be regarded as having been bona fide. The overall impression the Panel has gained, is that the 34 Domain Names were registered with a view to FCE obtaining greater leverage in its negotiations with Roust to obtain an exclusive distributorship. All but three of the Domain Names were registered prior to 2005, at times when there was no suggestion of the Respondent having any rights to use the Complainant’s or Roust’s marks. And the allegation in the Complaint that the Respondent’s counsel admitted (in the September 27, 2007 telephone conversation) that the Respondent “procured the names in order to secure his position as a distributor”, has not been denied. Nor has the Respondent satisfactorily explained why the Domain Names were registered in the name of a corporation AMG, LLC, rather than in the name of the prospective distributor/licensee itself, FCE. To say that Mr. Cerniglia, the technical contact for the Domain Names, is Vice-President of FCE, does not explain why the Domain Names were not registered by FCE itself. FCE’s actions in registering so many Domain Names before it had any relevant right or interest, and arranging for those registrations to be placed in the name of an apparently unrelated (as far as the evidence shows) corporation, is consistent with an intention to apply improper pressure or leverage on Roust in the negotiations.
For the reasons outlined above, the Respondent has failed to satisfy the Panel that its actions have been bona fide. The claim to rights or legitimate interests under paragraph 4(c)(i) of the Policy therefore fails.
The Respondent’s (and FCE’s) actions have clearly been commercial in nature, so there is no question of the Respondent having any right or legitimate interest based on some legitimate non-commercial or fair use, without intent for commercial gain (Policy, paragraph 4(c)(iii)). No other basis for a right or legitimate interest having been advanced by the Respondent, the Complainant succeeds on this part of its Complaint, in respect of the 31 Domain Names which the Panel has found are confusingly similar to trademarks in which the Complainant has rights.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel also finds that the Respondent has registered and used the confusingly similar Domain Names in bad faith. The Panel has come to that view for substantially the same reasons the Panel concluded that the Respondent’s actions have not been bona fide. In brief summary:
1. The Respondent has registered no fewer than 31 Domain Names which the Panel has found are confusingly similar to trademarks in which the Complainant has rights.
2. The Respondent was aware of the Complainant and Roust, and the various trademarks on which the Complainant relies, when the Domain Names were registered.
3. The Respondent had no consent or authority, whether from Roust or from the Complainant, to register any of the Domain Names.
4. At the times the Domain Names were registered, neither the Respondent nor FCE had any right or legitimate interest in them. The Domain Names were registered by the Respondent opportunistically, with a view to securing leverage in its negotiations with Roust (or as the Respondent’s counsel put it in his telephone conversation with the Complainant’s counsel “in order to secure [FCE’s] position as a distributor”). As noted by the Panel in the Magnum Piering Inc. and Oki Data Americas Inc. cases, neither the Respondent nor FCE had any legitimate interest in acquiring all of the Domain Names – if it was successful in the negotiations with Roust, FCE was only going to be a distributor in one geographical location (North America). The only sensible inference to be drawn from the Respondent’s decision to register so many “Russian Standard”–related Domain Names, is that the Respondent and FCE believed that their bargaining position with Roust would be strengthened if Roust knew that the Respondent/FCE had already secured ownership of numerous Domain Names which incorporated Roust’s trademarks, and which were confusingly similar to those marks. In short, Roust would be left with a potentially significant problem if it did not appoint FCE as its exclusive North American distributor – Roust would be at risk of the Domain Names being used in a damaging, misleading way, and/or would be forced to acquire the Domain Names from the Respondent.
5. While the Respondent says that the Domain Names were not registered to prevent Roust from reflecting its marks in the Domain Names, but were registered to promote and market the “Russian Standard” name and mark, the Panel is satisfied that the immediate purpose of the Respondent and FCE was to prevent Roust or the Complainant from reflecting their marks in corresponding domain names. That was the Respondent’s immediate intention – promotion of the “Russian Standard” vodkas was something that would come later, after the Respondent and FCE had achieved their immediate goal of securing the exclusive distributorship for North America. The Panel in the Magnum Piering Inc. case noted:
“Respondents’ multiple domain name registrations have no real purpose other than to prevent Complainant from reflecting its marks in corresponding domain names. This is precisely the kind of abusive behavior the Policy was designed to address. Policy para 4(b)(ii).”
The example of bad faith registration and use set out at paragraph 4(b)(ii) of the Policy, requires that the Respondent must have engaged in a pattern of registrations intended to prevent the owner of a trademark or service mark from reflecting its mark in a corresponding domain name. In this case, the Respondent has registered no fewer than 34 Domain Names, on six different occasions, ranging between November 2003 and April 2007. The Panel is satisfied that those registrations constitute a sufficient “pattern” for the purposes of paragraph 4(b)(ii) of the Policy.
6. The Panel agrees with the Panel in the Pentland USA Inc. case, where the Panel said that:
“If a party is negotiating this type of arrangement, it is difficult for the potential licensee or distributor to justify registration of a domain name corresponding to that of the trademark without the consent of the proposed licensor or supplier. Therefore the use of this domain name during and after such negotiations is evidence of bad faith.”
In this case, there is evidence that the Respondent has permitted the Domain Names to resolve to parking websites, at least some of which contained links to sites operated by the Complainant’s competitors. Others contained links to pornographic sites. The Respondent endeavors to explain those inconvenient matters away, by saying that these links were the responsibility of the relevant parking companies, who the Respondent says were not authorized to redirect visitors to such sites. But the Respondent cannot absolve itself from responsibility for the use of the Domain Names in that way. See Express Scripts Inc v. Windgather Investments Limited/Mr. Cartwright, WIPO Case No. D2007-0267, where the three-member Panel said, in response to the Respondent’s argument that the advertisements on the website at the disputed domain name had been “generated by the parking company”:
“The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name. It would have been aware that the ‘parking company’ website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant’s name, it should have been of no surprise to the Respondent that links to [prescription and pharmaceutical website] would be generated.”
The Respondent in this case denies deriving any financial gain from the sponsored links provided by the parking companies. But that does not provide the Respondent with an answer, even if it is true. As the Panel noted in the Express Scripts Inc. case, the requirements of paragraph 4(b)(iv) of the Policy do not require the owner of the domain name to be the entity that commercially gains from the diversion (see for example, V&S Vin&Sprit AB v. Corinnne Ducos, WIPO Case No. D2003-0301; PepsiCo Inc. v Ali Khan, WIPO Case No. D2004-0292; and V&S Vin & Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992).
The sponsored links appearing on the various websites to which the Domain Names resolve, have presumably not been provided for nothing. Someone has derived commercial gain from the advertising benefits provided by these links. On the authority of the Express Scripts Inc. case, it does not matter if that was someone other than the Respondent.
7. Finally, the Panel’s overall impression of bad faith on the part of the Respondent, is strengthened by the Respondent’s failure to explain why the Domain Names were not registered by FCE, that company being the prospective licensee/distributor. No explanation has been given of the role, if any, played by the Respondent AMG, LLC. The Panel’s view of the evidence as a whole, is that the Respondent registered these Domain Names with the bad faith purpose of applying illegitimate commercial pressure on Roust, with a view to securing an exclusive distributorship of Roust’s products. If it did not get that exclusive distributorship, it would be perfectly positioned to sell the Domain Names back to the Complainant/Roust at a cost which would be significantly in excess of its out-of-pocket expenses relating to the Domain Names. The telephone conversation between counsel for the parties on September 27, 2007 shows that the Respondent certainly wanted a full market price for the Domain Names if they were to be transferred to the Complainant, and the Panel believes it is appropriate to infer that that was the Respondent’s intention from the beginning in the event that it was unable to secure an exclusive distribution agreement for Roust’s products. The conditional nature of that intention might strictly take the situation outside the kind of case described in paragraph 4(b)(i) of the Policy, but that does not matter. Paragraph 4(b) of the Policy does not limit the kinds of situation in which Panels may find bad faith registration and use, and, for all of the reasons listed above, the Panel is satisfied that this is such a situation.
The Complainant having established all three elements of paragraph 4(a) of the Policy in respect of those of the Domain Names which the Panel has found to be confusingly similar to marks in which the Complainant has rights, those confusingly similar Domain Names must 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 Names listed in the Schedule to this Decision be transferred to the Complainant.
The Complaint in respect of the following Domain Names is denied: <rsplatinum.com>, <rsplatinum.org>, <rsplatinum.net>.
Warwick Smith
Sole Panelist
Dated: February 29, 2008
SCHEDULE – DOMAIN NAMES TO BE TRANSFERRED TO THE COMPLAINANT
<russianstandardvodka.com>
<rsvodka.com>
<russianstandardvodka.net>
<russianstandardvodka.org>
<russianstandardvodka.info>
<rsvodka.net>
<rsvodka.org>
<rsvodka.info>
<russianstandardplatinumvodka.com>
<russianstandardplatinumvodka.net>
<russianstandardplatinumvodka.org>
<russkystandard.com>
<russkystandard.net>
<russkystandard.org>
<russkystandardvodka.com>
<russkystandardvodka.net>
<russkystandardvodka.org>
<russkystandart.com>
<russkystandart.net>
<russkystandart.org>
<russkystandartplatinum.com>
<russkystandartplatinum.net>
<russkystandartplatinum.org>
<russkystandartplatinumvodka.net>
<russkystandartplatinumvodka.org>
<russkystandartvodka.com>
<russkystandartvodka.net>
<russkystandartvodka.org>
<imperiavodka.net>
<russianstandardvodkas.com>
<russiasstandardvodka.com>