Miller Brewing Co. v. Virtual Agents

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Miller Brewing

Company v. Virtual Agents

Case No.

D2001-0652

1. The Parties

The Complainant is Miller

Brewing Company, a Wisconsin Corporation having a principal place of business

at 3939 West Highland Boulevard, Milwaukee, Wisconsin 53201-0482, USA.

The Respondent is Virtual

Agents of 5835 Verdun Avenue, Suite 202, Verdun, Quebec, H4H 1M1, Canada.

2. The Domain Name and

Registrar

The contested domain name

is <millerliteracing.com>.

The registrar is Network

Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

3. Procedural History

The electronic version

of the Complaint was filed on May 14, 2001. The hardcopy of the Complaint was

received on May 22, 2001.

In accordance with Paragraph

4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN

Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy ("Supplemental Rules"), the Center verified

that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN

Rules and Supplemental Rules.

On May 23, 2001, the Center

formally notified the Respondent of the Complaint and of the commencement of

this administrative proceedings and sent copies to the Complainant, the Registrar

and ICANN.

The Respondent failed to

file a response. On June 13, 2001, the Center sent a Notification of Respondent

Default by email to the Respondent and the Complainant.

On June 21, 2001, the parties

were notified that Mr. Swinson had been appointed and that a decision was to

be handed down on July 4, 2001 (save exceptional circumstances).

The language of the proceeding

is English.

The Panel is satisfied

that the Complaint was filed in accordance with the requirements of the ICANN

Rules and Supplemental Rules; payment was properly made; the Panel agrees with

the Center’s assessment concerning the Complaint’s compliance with the formal

requirements; the Complaint was properly notified to the Respondent in accordance

with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondent;

the Administrative Panel was properly constituted.

4. Factual Background

The Complainant is the

registered owner of the following U.S. and Canadian trademarks:

(a) MILLER LITE &

Design, U.S. Reg. No. 2,234,383, for beer;

(b) LITE & Design,

Canadian Reg. No. TMA 302,348, for alcoholic brewery beverages;

(c) MILLER LITE RACING,

common law, for entertainment services and sponsoring and promoting the sporting

events of others, namely racing cars and events;

(d) MILLER LITE, common

law, for beer and sponsoring and promoting the sporting events of others, including

racing, boxing and volleyball events;

(e) MILLER, U.S. Reg.

No. 2,229,151, for beer;

(f) MILLER, Canadian

Reg. No. TMA 179,920, for beer;

(g) MILLER MILWAUKEE

& Design, U.S. Reg. No. 305,855, for beer;

(h) MILLER & Design,

U.S. Reg. No. 506,937, for beer;

(i) MILLER & Design,

U.S. Reg. No. 931,925, for beer;

(j) MILLER & Design,

U.S. Reg. No. 1,196,396, for beer sold in recyclable paper container, namely

shipping cartons, cases and carriers;

(k) MILLER & Design,

U.S. Reg. No. 1,973,280, for beer; and

(l) MILLER SINCE 1855

& Design, U.S. Reg. No. 2,129,329, for beer.

The contested domain name

currently resolves to a placeholder website. The website states that "This

domain, <millerliteracing.com>, is currently registered. At the moment,

there is no site hosted at this domain, but this may change in the future. If

you wish to contact the registrant of this domain, you may email them at: virtuala@total.net.

You may wish to check the appropriate registrar's record data for an up-to-date

email address."

5. Parties’ Contentions

A. Complainant

The Complainant has used

the name MILLER to identify its beer in the United States since April 1887.

The Complainant has promoted

and sold its MILLER LITE brand of beer for over 15 years. MILLER LITE beer is

one of the top brands of beer in the United States. The Complainant spends many

millions of dollars each year in print, broadcast and point-of-sale advertising

for MILLER LITE beer.

The Complainant has sponsored

sports teams and events for many years under the MILLER LITE name. In automobile

racing, it has sponsored teams and events under the MILLER LITE brand in the

National Association for Stock Car Auto Racing (NASCAR) and the Championship

Automobile Racing Teams (CART) circuits for over ten years and in the National

Hot Rod Association (NHRA) circuit for four years. Through sponsorships with

other brands, the Complainant has been involved in automobile racing sponsorship

for nearly twenty years.

Since 1990, the Complainant

has been the lead sponsor for NASCAR Winston Cup driver Rusty Wallace, 1989

Winston Cup series champion. The racing car, Mr. Wallace’s racing suit, and

the uniforms worn by Mr. Wallace’s pit crew all prominently display the MILLER

LITE name and marks. Mr. Wallace is frequently and prominently identified as

the driver of the MILLER LITE car during television and radio accounts of NASCAR

races.

Under the MILLER LITE name,

the Complainant has also been a major sponsor of "Team Rahal" and

drivers Bobby Rahal and Max Papis on the CART circuit for over five years. Mr.

Papis is prominently identified as the driver of the MILLER LITE car during

television and radio accounts of CART races. As noted in the Team Rahal sponsorship

information brochure, CART races take place in the United States, Canada and

other nations and are broadcast worldwide to reach more than 900 million viewers

annually.

In addition, the Complainant

sponsors two races on the CART open-wheel racing circuit: the MILLER LITE 225

at the Milwaukee Mile in West Allis, Wisconsin and the MILLER LITE 200 at Mid-Ohio

Sports Car Course in Lexington, Ohio.

In drag racing, the Complainant

has sponsored the MILLER LITE Dragster since 1997 and had previously sponsored

cars under other MILLER brand names. The MILLER LITE car’s driver, Larry Dixon,

Jr. , was the NHRA’s Rookie of the year in 1995. Dixon was the first driver

to break the 4.5 second barrier, and he now has 10 NHRA titles to his credit.

Beyond the direct expense

of driver and race sponsorships, the Complainant spends many millions of dollars

more each year on a combination of print advertising, radio and television commercials,

beverage point-of sale displays, race-track displays and related promotions

featuring the MILLER LITE trademark and the association of MILLER LITE with

racing.

The Complainant submits

that it has acquired trademark rights in the "Miller Lite" mark used

in connection with beer and is inherently distinctive when used in connection

with auto racing. Due to its continuous and exclusive use of the "Miller

Lite" name with racing car sponsorships and other promotions, the Complainant

has established trademark rights in the "Miller Lite" name and mark

used in conjunction with auto racing.

The Complainant submits

that the Respondent has engaged in a pattern of registering domain names in

order to prevent the owner of a trademark from reflecting its mark in a corresponding

domain name. The WHOIS database indicates that the Respondent has registered

approximately 36 domain names which are related to racing which mostly correspond

with major auto racing teams, manufacturers and sponsors. These domain names

are displayed by a trademark followed by the word "racing" (for example,

<budweiserracing.com>, <marlbororacing.com> and <goodyearracing.com>).

The Complainant submits

that:

(a) the contested

domain name is confusingly similar to the "Miller" and "Miller

Lite" marks;

(b) the Respondent

has no right or legitimate interest with respect to the contested domain name;

and

(c) the Respondent

has registered the contested domain name in bad faith.

B. Respondent

The Respondent failed to

file a Response within the time limit set by the Center.

In accordance with Rule

5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint

alone.

6. Discussion and Findings

In order to qualify for

a remedy, the Complainant must prove each of the three elements set out in Paragraph

4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved

by ICANN on October 24, 1999 ("ICANN Policy"), namely:

(a) the domain name

is identical or confusingly similar to a trade mark or service mark in which

the complainant has rights; and

(b) the respondent has

no rights or legitimate interests in respect of the domain name; and

(c) the domain name

has been registered and is being used in bad faith.

The onus of proving these

elements is that of the Complainant.

6.1 Identical or confusingly

similar to a trade mark or service mark

The Complainant is the

registered owner of the word and image trade marks "Miller" and "Miller

Lite". The panel agrees that the "Miller" and "Miller Lite"

marks are extremely well-known in relation to the Complainant’s beer products

in the United States and Canada, and that the Complainant has long been associated

with motor racing and the sponsorship of motor racing teams and events.

The only differences between

the Complainant’s trade mark "Miller Lite" and the contested domain

name is the addition of the word "racing" and the suffix ".com".

Although the panel does

not necessarily find that the Complainant has common law trade mark rights in

the words "Miller Lite Racing" (because it does not need to do so),

the panel finds that the contested domain name is confusingly similar to the

Complainant’s "Miller Lite" mark, as the "Miller Lite" mark

has been used extensively in association with motor racing over the past ten

years: Caterpillar Inc v. Roam the Planet Ltd, WIPO

Case No. D2000-0275.

The addition of the suffix

".com" or ".net" is an irrelevant distinction which does

not change the likelihood for confusion: Microsoft Corporation v. Amit Mehrotra

WIPO Case No. D2000-0053 and InfoSpace.com

v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

As a result, the panel

finds that the contested domain name is confusingly similar to the Complainant’s

trademark.

6.2 Illegitimacy

The Complainant contends

that the Respondent has no rights or legitimate interests in the contested domain

name, as the Respondent:

(a) is not commonly

known as MILLER LITE;

(b) has not provided

services to the Complainant in connection with the Complainant’s MILLER LITE

name and mark;

(c) is not a licensee

of, nor authorized by, the Complainant to use any of the Complainant’s trademarks,

including those related to its MILLER LITE marks; and

(d) is not making a

legitimate, non-commercial use of the contested domain name.

The Respondent has not

produced any evidence to suggest that the contested domain name is being used

in connection with a bona fide offering of goods or services, nor that the Respondent

is making a legitimate non-commercial or fair use of the domain name. The Respondent

has not even provided any evidence of any preparations to use the domain name.

There is no evidence of

any legitimate use of the domain name since it was registered by the Respondent

on October 2, 1998.

In Newman/Haas Racing

v Virtual Agents Inc, WIPO Case No. D2000-1688,

the panel decided that this Respondent had no rights or legitimate interest

in <newmanhaasracing.com>, another domain name incorporating the trademark

of another auto racing entity.

In this case, the Respondent

failed to produce evidence of preparations to make a bona fide use of the domain

name.

As a result, the panel

finds that the Respondent has no rights or legitimate interests in respect of

the contested domain name.

6.3 Bad Faith

The Complainant claims

that the Respondent has engaged in a pattern of conduct of registering domain

names in order to prevent the owner of a trademark or service mark from reflecting

the mark in a corresponding domain name.

The Respondent has registered

approximately 36 domain names which correspond with major motor racing teams,

manufacturers and sponsors of the Formula One, CART and NASCAR circuits. Many

of these domain names are in the form <[TRADEMARK]racing.com>. Some of

these domain names were registered at the same time that the contested domain

name was registered. The Respondent has engaged in a pattern of registering

domain names incorporating famous trademarks, and focussing on motor racing

participants.

In Newman/Haas Racing

v Virtual Agents Inc, WIPO Case No. D2000-1688,

the panel concluded that the Respondent was a cybersquatter based on the registration

and non-use of so many domain names incorporating famous trade marks.

The panel finds that the

Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(ii)

of the ICANN Policy.

The panel finds that the

Complainant has established the element set out in Paragraph 4(a)(iii) of the

ICANN Policy.

7. Decision

For the reasons set forth

above and pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the

Panel orders that the contested domain name <millerliteracing.com> be

transferred to the Complainant.

John Swinson

Sole Panelist

Dated: July

4, 2001