WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Brooklyn Brewery Corporation v. Tob Lenza / Tobias Lenza

Case No. D2015-1560

1. The Parties

The Complainant is The Brooklyn Brewery Corporation of Brooklyn, New York, United States of America ("United States"), represented by McDermott Will & Emery LLP, United States.

The Respondent is Tob Lenza / Tobias Lenza of Staten Island, New York, United States, represented by Amabile & Erman, P.C., United States.

2. The Domain Name and Registrar

The disputed domain name <brooklynbrews.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2015. On September 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On September 3, 2015, the Center requested a confirmation from the Complainant. On September 3, 2015, the Complainant transmitted by email to the Center its confirmation.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2015. At the request of the Respondent, the due date for Response was extended in accordance with the Rules, paragraph 5(b), to September 28, 2015. The Response was filed with the Center on September 25, 2015.

The Center appointed William R. Towns as the sole panelist in this matter on October 7, 2015. 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, founded in 1987, is one of the largest brewers of beer in New York, headquartered in Brooklyn, New York. The Complainant promotes and offers its beers to the public under a number of BROOKLYN-formative marks, including BROOKLYN BREWERY and BROOKLYN BRAND, respecting which the Complainant has obtained United States trademark registrations (hereinafter referred to collectively at "the BROOKLYN Marks"). The Complainant since 1996 has operated a website at "www.brooklynbrewery.com", and maintains a Facebook page at "www.facebook.com/thebrooklynbrewery".

The disputed domain name <brooklynbrews.com> was registered on December 10, 2012, according to the relevant WhoIs records of the concerned Registrar. The disputed domain name resolves to a parked webpage provided by the Registrar with "Sponsored Listings" (i.e., pay-per-click advertising). Screen shots of the webpage obtained before and after the filing of the Complaint reflect that these advertising links for the most part resolve to websites featuring restaurants, bars, and other purveyors of food and libations.

5. Parties' Contentions

A. Complainant

The Complainant states that its beer products bearing the BROOKLYN Marks are sold in the United States in more than 26 states as well as in over 20 countries, in thousands of restaurants, bars, retail stores, grocery stores, and entertainment venues. According to the Complainant, since 1987 it has spent millions of dollars advertising and promoting beer sold under the BROOKLYN Marks, earning revenues in excess of USD 400 million.

The Complaint asserts that the BROOKLYLN Marks have acquired significant goodwill and public recognition, and that beer consumers and others in the industry associate the BROOKLYN Marks exclusively with the Complainant's beer and have done so for over 20 years. The Complainant further notes that several of the BROOKLYN Marks have achieved incontestable status under the federal Lanham Act.

The Complainant submits that the disputed domain name is substantially identical to the Complainant's BROOKLYN Marks. The Complainant maintains that the disputed domain name incorporates the dominant portion of the Complainant's BROOKLYN Marks – the word "Brooklyn" – combined with the term "brews", commonly used to refer to beer products. The Complainant argues that the addition of the term "brews" increases the likelihood of confusion because of its association with the Complainant's beer products.

The Complaint maintains that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is using the disputed domain name with a parked pay-per-click landing page containing links to other businesses, including competitors of the Complainant who sell beer. The Complainant submits that the Respondent registered and is using the disputed domain name based on the value of the Complainant's mark, and that such use cannot be bona fide. The Complainant represents that the Respondent is neither licensed to use the Complainant's BROOKLYN Marks nor affiliated with the Complainant, and that there is no evidence the Respondent is commonly known by the disputed domain name. Further, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but rather diverting Internet users seeking the Complainant's products to the Respondent's site so that the Respondent can collect click-through-fees.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the registration of its BROOKLYN Marks on the USPTO Principal Register charges the Respondent with constructive notice of those marks, and that the Respondent's registration of the disputed domain name after having such notice is evidence of bad faith. Further, the Complainant urges that the Respondent's registration of a confusingly similar domain name and its use with a website containing links to the Complainant's competitors reflects the Respondent's awareness of the Complainant and its marks and demonstrates bad faith registration and use. The Complainant further submits that the Respondent registered the disputed domain name in bad faith primarily for the purpose of disrupting the Complainant's business.

B. Respondent

The Respondent submits that the disputed domain name is not confusingly similar to the Complainant's BROOKLYN Marks. According to the Respondent, the salient feature of the Complainant's name is "brewery", which refers either to a place to make beer or a company that makes beer. Citing dictionary definitions, the Respondent maintains that the word "brews" refers to a much broader category of beverages including coffee and tea in addition to beer. The Respondent argues that the term "brews" is thus a distinguishing feature, and therefore the disputed domain name creates no likelihood of confusion with the Complainant's marks because of the separate and distinct meaning conveyed by the disputed domain name.

According to the Respondent, a Google search of "brooklyn brews" reveals that the top three results are for another company named "Brooklyn Brew Shop", which has been in existence since 2009 and is solely associated with making beer. The Respondent argues that a decision by this Panel to terminate the rights of the Respondent to the disputed domain name would indicate that the Complainant also can terminate the rights of the Brooklyn Brew Shop to its name.

The Respondent maintains that he has rights or legitimate interests in the disputed domain name. The Respondent relies on the statement of Aaron Lenza, the Respondent's brother, who the Respondent also states is the "de facto" owner of the disputed domain name. It is submitted that the Respondent is in the process of making a legitimate noncommercial or fair use of the disputed domain name – namely, that a blog is planned to include all brewing categories including kombucha, tea, cider, beer and ales, and coffee. A proposed homepage is included with the statement, in which it is represented that the Respondent anticipates launching the website within the next 30 days.

The Respondent asserts that the disputed domain name was purchased with the intent of creating a blog to discuss local Brooklyn made "fermented beverages of all types", and not to infringe on the Complainant's rights, or to attempt to sell the disputed domain name to the Complainant or divert sales from the Complainant. Further, the Respondent maintains that the disputed domain name was not registered to prevent the Complainant from reflecting its mark in a corresponding domain name, that the Complainant and the Respondent are not competitors, and that the Respondent did not register the disputed domain name to disrupt the Complainant's business.

The Respondent further maintains that the Respondent did not register the disputed domain name in an intentional attempt to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. The Respondent represents that neither he nor Aaron Lenza have received any monies arising out of the ownership of the disputed domain name, and the fact that the web page reflects the disputed domain name is "parked for free, courtesy of GoDaddy.com" is documentary proof that the Respondent does not receive financial compensation.

In view of the foregoing, the Respondent submits that the Complainant is intentionally attempting to hijack the Respondent's use of the disputed domain name, as the Complainant knows or should know that the scope of the word "brews" is much larger than the Complainant's beer business. Additionally, the Respondent argues that the Complaint misrepresents that the Respondent profits from the disputed domain name, which shows bad faith on the part of the Complainant. The Respondent requests that the Panel make a finding of reverse domain name hijacking.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's BROOKLYN Marks, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

Applying this standard, the disputed domain name is confusingly similar to the Complainant's marks for purposes of the Policy. The disputed domain name incorporates the dominant aspect of the Complainant's marks, and the addition of the descriptive terms "brews" does not distinguish the disputed domain name from the Complainant's marks, particularly given that the Complainant's beer products are brewed.

Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's BROOKLYN Marks, and the disputed domain name resolves to a parking page containing "sponsored listings" including advertising links to restaurants, bars, and other places where beer products are brewed or sold.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Respondent has not disputed being aware of the Complainant and the Complainant's BROOKLYN Marks when registering the disputed domain name in December 2012. There is no reliable indication in the record that the disputed domain, which is confusingly similar to the Complainant's marks, does not call to mind the Complainant or the Complainant's beer products. By the Respondent's own admission the first three hits returned by an internet search using the disputed domain name were solely associated with beer. In fact, every hit on the first page of the search report submitted by the Respondent is associated with beer. The Complainant is one of the largest brewers of beer in New York, and has been brewing beer in Brooklyn since 1987, which is now sold in the United States in restaurants, bars, grocery stores, and entertainment venues in more than 26 states, and in 20 other countries.

While the Respondent now offers that the disputed domain name was registered with the intent to create a blog devoted to various beverages that are brewed in Brooklyn, this is not borne out by the record before the Panel. There is no evidence that, from the time the domain name was registered in December 10, 2012, until the Respondent was notified of the Complaint on September 4, 2015, the Respondent ever took any steps whatsoever toward the creation of a blogsite. The statement of Aaron Lenza confirms that steps are only now being taken to launch a website "based on the timing of this Complaint", and that he is only now in the process of developing art or content for the webpage.

In addition, there is no indication in the record that, since the Respondent registered the disputed domain name in December 2012, the disputed domain name has ever resolved anywhere other than to a landing page populated with "Sponsored Listings", which not surprisingly have included and continue to include advertising links to restaurants, bars, and other venues where beer products competing with those of the Complainant are sold. Sponsored listings are invariably pay-per-click links; the Respondent's assertion that no revenues have been derived for almost three years from the pay-per-click links on the Respondent's webpage because the disputed domain name was parked "for free" by GoDaddy is neither accurate nor credible.

Based on the record in this proceeding the Panel finds that the Respondent was aware of the Complainant and the Complainant's BROOKLYN Marks when registering the disputed domain name. The Panel further concludes that the Respondent more likely than not registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's marks through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. There is no credible evidence in the record that the Respondent chose the disputed domain name for any reasons unrelated to the Complainant. See The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services, WIPO Case No. D2009-0822.

In light of the foregoing, the record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant's marks, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent's primary motive in relation to the registration and use of the disputed domain name more likely than not was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. The Panel therefore concludes that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

In view of the Panel's findings above, the Respondent's request for a finding of reverse domain name hijacking is denied.

7. Decision

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

William R. Towns
Sole Panelist
Date: October 21, 2015

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.