V&S Vin&Sprit AB v. Karel Hajek

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

V&S Vin&Sprit AB v. Karel Hajek

Case No. D2004-0960

1. The Parties

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

The Respondent is Karel Hajek, Brno, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <absolutperversion.com> is registered with CORE

Internet Council of Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2004. On November 15, 2004, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On November 16, 2004, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2004.

The Center appointed Kristiina Harenko as the sole

panelist in this matter on December 21, 2004. The Panel finds that it was properly

constituted. The Panel has submitted the Statement of Acceptance and Declaration

of Impartiality and Independence, as required by the Center to ensure compliance

with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Swedish joint stock company that manufactures, imports and distributes alcoholic beverages. It is the owner of hundreds of ABSOLUT trademark registrations spread over more than hundred countries. A number of registrations relate to matters other than alcoholic beverages. “absolut” can be found in about 500 gTLDs and ccTLDs owned by the Complainant.

The Respondent registered its domain name <absolutperversion.com>

on April 24, 2002, which is subsequent to when the vast majority of the Complainant’s

trademarks were registered. Furthermore, ABSOLUT became internationally recognized

as a famous mark long before the registration of the domain name <absolutperversion.com>

took place.

5. Parties’ Contentions

A. Complainant

The Complainant’s sale of vodka under the trademark ABSOLUT began in 1979, in USA, and Sweden and other parts of Europe in 1980-1981. In 2001, in an article in Business Week, ABSOLUT was reported to have been ranked by Interbrand as the 93rd most valuable asset in the world. The trademark has also been ranked as number 1 on Forbe’s list of Top Luxury Brands according to market performance. In legal terms, such as reflected in Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”, the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination connection with any products or services, also those not limited to vodka.

a) Identity or Confusing Similarity

ABSOLUT is the dominant part of the domain name in issue, making it confusingly similar to the trademark ABSOLUT. The Complainant has registered ABSOLUT as a trademark and as a domain name worldwide. The addition of the suffix “perversion” has no impact on the overall impression created by the dominant part of the name, “Absolut”. The likelihood of confusion includes an obvious association that there is some kind of commercial relation with the Complainant. The domain name must be considered to be confusingly similar with the Complainant’s trademark.

b) Rights or Legitimate Interests

The Respondent has no registered trademarks or trade

names corresponding to the domain name. The Respondent does not have any license

to use ABSOLUT trademark, nor is he a representative of the Complainant. ABSOLUT

is a famous trademark worldwide and an extremely valuable asset. In several

UDRP decisions it has been confirmed that the trademark ABSOLUT is well known

(see e.g. V&S Vin & Sprit AB v. Canal Prod Ltd, WIPO

Case No. D2002-0437, V&S Vin & Sprit AB v. Giovanni Pastore,

WIPO Case No. D2002-0926, V&S Vin

& Sprit AB v. Oliver Garcia, WIPO

Case No. D2002-1081). The Respondent cannot have been ignorant of the rights

held by the Complainant, when he applied for the domain name in question. The

domain name <absolutperversion.com> resolves to a pornographic website

with the same name as the domain name. On the website there are numerous links

to other websites with pornographic content. The Respondent also owns these

other web sites. While the web site “www.absolutperversion.com”

is not commercial itself, the web sites to where the links go must be considered

commercial with lots of ads and since these web sites are also owned by the

Respondent, the Respondent cannot be said to make legitimate non-commercial

or fair use of the domain name without the intention of commercial gain but

is misleadingly diverting consumers and tarnishing the trademark at issue for

his own commercial gain. The fact that the Respondent is using the Swedish word

“absolut” in an English context, clearly indicates and proves that

the Respondent is trying to sponge on the world famous trademark. Rights or

legitimate interests cannot be created where the user of the domain name at

issue would not choose such a name unless he was seeking to create an impression

of association with the Complainant (see Drexel University v. David Brouda,

WIPO Case No. D2001-0067).

c) Registration and Use in Bad Faith

The awareness of the trademark ABSOLUT is manifested

the world over. Its value and goodwill cannot have been unknown to the Respondent

when registration of the domain name took place. The Respondent has registered

the world famous brand ABSOLUT in combination with pornographic word “perversion”.

The domain name resolves to a pornographic website. To have pornographic products

and services offered in connection with the well-known trademark ABSOLUT severely

tarnishes the Complainant’s trademark, which is evidence of bad faith

use. The Complainant refers to the UDRP cases (Deutsche Bank Aktiengesellschaft

v. New York TV Tickets Inc., WIPO Case

No. D2001-1314, Benetton Group SpA v. Domain for Sale, WIPO

Case No. D2001-1498, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,

WIPO Case No. D2000-0021, ABB Asea

Brown Boveri Ltd. v. Quicknet, WIPO Case

No. D2003-0215, America Online, Inc. v. Viper, WIPO

Case No. D2000-1198, MatchNet plc. v. MAC Trading, WIPO

Case No. D2000-0205, Coral Trademarks, Ltd. v. Eastern Net, Inc.,

WIPO Case No. D2000-1295), where the use

of a domain name, based on a famous mark, for pornographic purposes have been

established as constituting the bad faith. The links on the web site lead the

visitors to other web sites (“www.czech-sex.cz”, “www.europorno.cz”,

“www.sexyworld.cz”) also owned by the Respondent, which contains

pornographic material and commercial ads.

The trademark ABSOLUT is such a well-known and famous

mark and so obviously connected with the Complainant and its products, that

its very use by someone with no connection to the Complainant suggests an opportunistic

bad faith. The Complainant refers to UDRP cases (Parfums Christian Dior v.

Javier Garcia Quintas and Christiandior.net, WIPO

Case No. D2000-0226, Veuve Clicquot Ponsardin, Maison Fondée en 1772

v. The Polygenix Group Co., WIPO Case

No. D2000-0163, SSL International PLC v. Mark Freeman, WIPO

Case No. D2000-1080, and Altavista Company v. Grandtotal Finances Limited

et. al., WIPO Case No. D2000-0848).

d) Remedy Requested

The Complainant requests that the domain name <absolutperversion.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

Pursuant to Policy, Complainant must convince the Panel on the following three criteria:

(i) the domain name is identical or confusingly similar to a trademark in which it holds rights; and

(ii) Respondent has no right or legitimate interests in the domain name; and

(iii) The domain name was registered and used in bad faith.

A. Identical or Confusingly Similar

The dominant part of the domain name <absolutperversion> comprises the

word “Absolut”, which is identical to the registered trademark ABSOLUT,

which has been registered by the Complainant as a trademark in several countries

all over the world. The addition of “perversion” to Complainant’s

trademark ABSOLUT, being a well known trademark under the international legal

framework, especially under the Paris Convention and TRIPS Agreement and of

wide international reputation, not only for its core product vodka, does not

overshadow the impact on observers of the element “absolut” as the

dominant part and as the element that indicates a connection to the Complainant.

Whether written ABSOLUT or absolut is of no consequence, due to the standard

typography of domain names. The domain name clearly falls within what may be

called the “absolut family” of domain names, adding to the infamous

set of pornography related domain names that have already been subjected to

transfer to the Complainant (See V&S Vin & Sprit AB v. Canal Prod

Ltd, WIPO Case No. D2002-0437, V&S

Vin & Sprit AB v. Giovanni Pasture, WIPO

Case No. D2002-0926 and V&V Vin&Sprit AB v. Wallin, WIPO

Case No. D2003-0437). Consequently, the domain name <absolutperversion.com>

is found to be confusingly similar to Complainant’s registered trademark

ABSOLUT.

B. Rights or Legitimate Interests

The trademark ABSOLUT is well known throughout the world, at least wherever people drink spirits. It is therefore protected against all and any dilution as such trademarks are granted a general scope of protection.

The Respondent does not have any license to use the ABSOLUT trademark, nor is he a representative of the Complainant.

The Respondent has not replied to the Complainant’s contentions. The arguments by the Complainant, as summarized here above under 5A(b), supported by means of proof submitted by the Complainant, have convinced the Administrative Panel that the Respondent has not had, nor has, any rights or legitimate interest in respect of the domain name <absolutperversion.com>.

C. Registered and Used in Bad Faith

At the time he registered the domain name, the Respondent could not have been ignorant about the trademark ABSOLUT, because of its worldwide reputation.

The Respondent does not have any trademark rights of its own corresponding to the one in issue and no license or authorization from the Complainant to use such trademark.

The Respondent has made such use of ABSOLUT as severely tarnishes it, by registration

and continued use of the domain name. These are acts of bad faith. Also, the

trademark ABSOLUT is such a well-known mark that its use in unconnected business,

as in the present case, must be considered what has been called “opportunistic

bad faith”.

7. Decision

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

Kristiina Harenko

Sole Panelist

Dated: December 31, 2004

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• V&S Vin&Sprit AB v. Corinne Ducos — D2003-0301 · absolutbabes.com · Transfer · 05 Jun 2003
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• V&S Vin&Sprit AB v. Canal Prod Ltd — D2002-0437 · absolut-sexe.com, absolut-sexo.com, absolut-x.com · Transfer · 30 Jul 2002