Domain name - Cybersquatting - Domain name dispute resolution policy - U.S. Service mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Due Process - Ethics.

Complainant was registrant of two United States service marks, BEVERAGES, & MORE! And BEVERAGES & MORE!. Registrant registered the domain name, beveragesandmore.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

The domain name BEVERAGESANDMORE.COM is identical or confusingly similar to the service marks registered and used by Complainant, BEVERAGES, & MORE! and BEVERAGES, &  MORE! and Design because any consumer attempting to locate the complainant's web site by using the most common method of simply typing in the company name or logo with the suffix ".com" would be directed to the complainant. 

The Respondent's curious statement that  " the Domain Name has never been linked to a web site, it has only been parked" is precisely the type of behavior envisioned by the United States Congress when it passed the Anticybersquatting Consumer Protection Act of 1999. The Act was passed 'to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks -- a practice commonly referred to as 'cybersquatting.' The filing of an irregular "Response email and incomplete Response Form indicates that the Respondent has no rights or legitimate interest in respect of the domain name.

The evidence supporting complainant's claim of bad faith includes the listing of the contested Domain Name for sale on another web site owned by the Respondent, the Respondent's evasive tactics and the Respondent's gratuitously vituperative and wholly unsupported allegations about the purported motives and actions of opposing counsel. Thus Respondent registered and used the domain name at issue in bad faith.

At the time of registration of the Domain Name at issue, the registrant knows, or reasonably should know that the registrant has thereby agreed to and accepted the procedures, rules and regulations established by the Registrar and its' successors. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Statutes referred to

Anticybersquatting Consumer  Protection Act of 1999-7

Registration Agreements referred to

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Cases referred to

Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q.  2D (BNA) 1570 

Panel Decision referred to

World Wrestling Federation Entertainment, Inc. v.  Michael Bosman, Case No. D99-0001, Administrative Panel Decision (WIPO Jan. 14, 2000).
 

Faulkner, Panelist: -

1.The Parties and Contested Domain Name.

Complainant is Beverages and  More, Inc.,  1470 Enea Circle,  Suite 1600,  Concord,  California   94520   U.S.A.,   Email  via   David  Richards   at  richardsd@bevmo.com (Beverages and More, Inc.). Complainant is represented by Alison Shames of Howard, Rice, Nemerovski, Canady, Falk & Rabkin, Three Embarcadero Center, Seventh Floor, San Francisco, California 94111, Email  ashames@hrice.com.

Respondent is Glenn Sobel Mgt., 5324 Kester Avenue, Ste. 11, Sherman Oaks, California, U.S.A., Email YourWebURL@aol.com. Respondent is represented by Glenn Sobel 5324 Kester Avenue, Ste. 11, Sherman Oaks, California, U.S.A., Email YourWebURL@aol.com , (Glenn Sobel Mgt.).

Contested Domain Name: "beveragesandmore.com".  The Clerk of eResolution verified the Registrar as Network Solutions, Inc.  Respondent asserts the Registrar is Register.com.

 2. Procedural History.

The electronic version of the Complaint form was filed on-line through eResolution's Website on January 27th, 2000. The hardcopy of the Complaint Form was received on January 31st, 2000.  Payment was received by eResolution on the same date.

 Upon receiving all the required information, eResolution's Clerk proceeded to:

      Confirm the identity of the Registrar for the contested Domain Name;

      Verify the Registrar's Whois Database and confirm all the required contact information for 
      Respondent;

      Verify if the contest Domain Name resolved to an active Web page;

      Verify if the Complaint was administratively compliant.

Those inquiries led the Clerk of eResolution to report to the Panel the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, including billing contact, the Contested Domain Name does not resolve to an active Web page and the Complaint is administratively compliant.

The Clerk then proceeded to send to the Respondent a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 1st, 2000.  That date is the commencement date of the administrative proceeding.

On February 1st, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On February 19th, 2000, the Respondent submitted, via email, remarks with regards to the Complaint filed against him. Respondent's email stated in relevant part that  "I will not be filing your official response form in opposition to the complaint".  At the expiration of the time limit prescribed in the ICANN Rules and Regulations, February 21st, 2000, the Respondent had not submitted a Response Form to eResolution.

On February 22nd, 2000, Complainant requested that the email dated February 19th, in which the Respondent made certain observations with regards to the Complaint not be considered by the Panel.

On February 23rd, 2000, the Clerk advised the Respondent that no Response could be considered if the Regulations were not respected.

On February 23rd, 2000, the Clerk's Office contacted the Hon. Richard Faulkner, Esq. and requested him to act as panelist in this case.

 On February 24th, 2000, the Hon. Richard Faulkner, Esq. accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On February 24th, 2000, the Clerk's Office of eResolution received an email informing it that a Response form had been filed through eResolution's Web site. To this date, no duly signed complete hard copy of the Response Form has been filed.

On February 25th, 2000, the Clerk's Office forwarded a user name and a password to Judge Richard Faulkner allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On February 29th, 2000, a hard copy of file was sent to Judge Richard Faulkner.

On February 29th, 2000, the parties, the Registrar and ICANN were notified that Judge Faulkner had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 9th, 2000.

 3. Factual Background.

 Complainant and Respondent are both domiciled in the State of California, U.S.A.

Complainant is the owner of the service marks BEVERAGES, & MORE! and BEVERAGES, &  MORE!  and Design,  both of  which  are registered  with the United States  Patent and Trademark  Office. Those two marks are used in connection with retail store services for beverages including beer, soft drinks and liquor. Complainant is the owner of U.S. Reg. No. 1,970,483 for the mark BEVERAGES,  & MORE! for  use  in connection  with retail  store services for  beverages,  and that  registration was  issued on  April 23, 1996. A copy of this registration was attached to the Complaint as Exhibit A. Complainant is also the owner of U.S. Reg.  No. 1,967,347 for the mark
 BEVERAGES, & MORE! and  Design for  use in  connection with  retail store services for beverages. That registration was issued on April 9, 1996. A copy of that registration was attached to the Complaint as Exhibit B. Both marks have been continuously used in commerce in connection with retail store services for beverages since June 23, 1994.

The Domain Name registered by Respondent and at issue in this Complaint is beveragesandmore.com (the "Domain Name").

Complainant states that it intends to use the marks BEVERAGES, & MORE! and Design in connection with online retail store services for beverages.

Registrant does not contest that it is in the business of selling domain names and operates a number of web sites expressly for that purpose.

Registrant's web sites include: members.aol.com/YourWebURL, DomainNameAdvisor.com and Firms.findlaw.com/domlaw/index.htm.

The Registrant's "members.aol.com/YourWebURL", web site states that "[t]he following URL's  are  available for  purchase, lease,  or  revenue sharing arrangement".

One of the domain names Registrant listed is beveragesandmore.com, and it was advertised as: "Perfect for a directory site to soft drink companies, nightclubs, bars, beverage recipes  (mixed drinks, etc.) and related products.  Great merchandising potential for everything from specialty coffees and teas to bottle openers and bar stools!"

No specific price for the domain names is stated. Rather it is expressly noted that "it is our belief that property of this nature is not suitable for valuation in a vacuum" and the reader is invited to "enter into a dialogue" with Respondent  (Sobel) if the reader is interested in purchasing any of the domain names listed.

 Respondent acknowledged receipt of the Complaint from eResolution by a five page email including attachments directed to Mr. Robert Cassius de Linval dated February 19, 2000 from the email address "YourWebURL@aol.com" with copy to Claimant's counsel.

 Respondent specifically stated in that email, "I will not be filing your official response form in opposition to the complaint."

 Respondent subsequently filed an unsigned and incomplete "Response Form".

 Respondent appends to his name in the February 19, 2000 email the academic law degree "J.D." (Juris Doctor), but neglects or refuses to comply with the ICANN Domain Name Dispute Resolution Policy which he acknowledges was furnished to him.  Respondent has actual notice of these proceedings according to the ICANN Regulations.

 4. The Parties' Contentions.

 Complainant's Contentions:

The Complainant asserts that the Domain Name and the Mark are identical in look, sound, and meaning as the ampersand, comma, and exclamation point cannot be used in a domain name address. Therefore, the minor differences in look are irrelevant and thus it contends that for all intent and purposes, the Domain Name and Mark are identical and confusingly similar.

 Claimant further asserts that the Registrant Glenn Sobel Mgt. has no rights or legitimate interests in respect of the Domain Name "beveragesandmore.com". It makes this assertion in part by requesting the Panel to note the fact that the Registrant is not using the Domain Name in connection with a bona fide offering of goods or services and that currently, the Domain Name is not being used as an active address. Instead, one encounters a "Coming Soon!" message at that web site. The Registrant, Glenn Sobel Mgt, is not commonly known  (and never was referred to) as "beveragesandmore.com". Furthermore, Claimant asserts that Registrant is not making a legitimate noncommercial or fair use of the Domain Name and does not use the Domain Name as a trademark in connection with any goods and services.  Rather it asserts that Registrant's sole purpose for registering the Domain Name was to profit from its sale or transfer to a third party.

Claimant also contends that the Registrant registered and is using the domain name beveragesandmore.com" in bad faith. In the "Illegitimacy" Section of the claim it asserts that Registrant Glenn Sobel Mgt. is in the business of selling domain names.  The Registrant's company operates the various web sites referenced above for that express purpose and at "members.aol.com/YourWebURL" Registrant candidly states that  "[t]he following URL's  are  available for  purchase, lease,  or  revenue sharing arrangement".

 Claimant finally asserts that since the Registrant operates a business which sells Domain Names, it is clear that Registrant registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant, one of Complainant's competitors, or a third party. Should the Domain Name be purchased and used as Registrant suggests, i.e., for a soft drink company, Claimant contends that it would undoubtedly create a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the web site.

 Consequently, Claimant maintains that the Registrant's sole purpose in registering the Domain Name was to profit from its sale or transfer. It claims that the circumstances demonstrate that the Registrant registered the domain name beveragesandmore.com in bad faith and is using the domain name in bad faith because it is offering the domain name for sale on its web site. Such use, i.e., offering to sell the domain name, constitutes using the domain name in bad faith.  See World Wrestling Federation Entertainment, Inc. v.  Michael Bosman, Case No. D99-0001, Administrative Panel Decision (WIPO Jan. 14, 2000).

 Respondent's Contentions:

 Respondent acknowledged receipt of the Complaint from eResolution by a five page email including attachments directed to Mr. Robert Cassius de Linval dated February 19, 2000 from the email address "YourWebURL@aol.com" with copy to Claimant's counsel.

 Respondent specifically stated in that email, "I will not be filing your official response form in opposition to the complaint."

 Respondent subsequently filed an unsigned and incomplete "Response Form".

 Respondent's contentions, where relevant, generally deny Claimant's assertions and the right to any remedy.
 

 Relief Sought:

Complainant, Beverages and More, Inc. requests that the ownership of the domain name at issue be transferred to Beverages and More, Inc..

 4. Discussion and Findings.

 The ICANN Policy in Paragraph 4.a. requires Beverages and More, Inc. to prove, with respect to the Domain Name at issue, each of the following:

   i. The Domain Name at issue is identical or confusingly similar to a trademark or service mark in 
      which Beverages and More, Inc. has rights; and

  ii. Glenn Sobel Mgt. has no rights or legitimate interests in respect of the domain name; and

 iii. The Domain Name has been registered and is being used in bad faith.

The ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a domain name in bad faith.

The ICANN Policy at Paragraph 4.c. sets out three exemplar defenses which, if proved by respondent, shall demonstrate respondent's rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii), supra.

a. Identity or Confusing Similarity

Beverages and More, Inc. urges both virtual identity and confusing similarity. Thus, Beverages and More, Inc. must prove that the Domain Name at issue is  "identical" or  "confusingly similar" to its corresponding marks.

The Domain Name at issue is patently identical to the corresponding Beverages and More, Inc. service mark in the context of the Internet.Glenn Sobel Mgt.'s bald assertion that the Domain Name is not identical to the corresponding marks in his irregular  "Response" email and incomplete Response Form is not remotely credible. As the United States Court of Appeal for the Second Circuit recently noted in Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App.     LEXIS 1246, 53 U.S.P.Q.  2D (BNA) 1570, "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names.  The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com. n3" Any consumer attempting  to do so presently would not be directed to Beverages and More, Inc.

b. Rights or Legitimate Interests

Glenn Sobel Mgt.'s basic defense on this point consists of the assertion that "Registration of an available Domain Name is clearly legal". Unsurprisingly, Sobel makes no challenge to  (1) validity of any of the Beverages and More, Inc. marks, (2) Beverages and More, Inc.'s rights in those marks with respect to Beverages and More, Inc. goods and services,  (3) the reputation or goodwill inherently associated with those marks, or (4) any fact represented by Beverages and More, Inc. as to its' present or future use of the marks.

Glenn Sobel Mgt. does not deny Beverages and More, Inc.'s assertion that Glenn Sobel Mgt. has no active website under the Domain Name at issue.  Rather in his irregular "Response" email and incomplete Response Form, Sobel makes the curious statement that  " the Domain Name has never been linked to a web site, it has only been parked."  This is precisely the type of behavior envisioned by the United States Congress when it articulated the public policy of the United States by passing the Anticybersquatting Consumer Protection Act of 1999 and the Court of Appeals in Sporty's Farm, supra.  There the Court pointedly quoted the United States Senate stating "cybersquatters have become increasingly sophisticated as the case law has developed and now take the necessary precautions to insulate themselves from liability.  For example, many cybersquatters are now careful to no longer offer the domain name for sale in any manner that could implicate liability under existing trademark dilution case law." The Court went on to note that "(The American) Congress passed the ACPA.  (Anticybersquatting Consumer Protection Act) 'to protect consumers and American  businesses, to  promote the growth  of online commerce, and to provide  clarity in the law  for trademark owners by prohibiting the  bad-faith  and abusive  registration of  distinctive marks as  Internet domain names  with the  intent to profit  from the      goodwill associated with  such marks -- a  practice commonly referred to as 'cybersquatting'." S. Rep. No. 106-140, at 4.

Had Glenn Sobel Mgt. legitimately intended to use the Domain Name at issue for any purpose other than to sell it at a profit, Sobel could easily have adduced more persuasive evidence than the pedestrian, transparent and unimaginative tactic of filing his irregular "Response" email and incomplete Response Form in support of his position.

 c. Bad Faith.

The registration and use of the Domain Names at issue in bad faith according to the exemplars contained in the ICANN Regulations is easily determined in this case. It is uncontroverted that the Domain Name at issue has not been used in commerce on an active website by Glenn Sobel Mgt. Rather, as noted above, Sobel admits that  " the Domain Name has never been linked to a web site, it has only been parked."   Sobel's admissions, evasive tactics, gratuitously vituperative and wholly unsupported allegations about the purported motives and actions of opposing counsel, as well as the other facts and circumstances adduced by Claimant clearly demonstrate that the Domain Name was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to  the Domain  Name. As the requisite Bad Faith is established, it is unnecessary to further document this finding by additional references to Sobel's statements and admissions in his irregular "Response" email and incomplete Response Form.

d. Paragraph 4.c. Defenses.

Glenn Sobel Mgt. has failed to prove any of the three circumstances set out in ICANN Policy at paragraph 4.c., viz.:

i. before any notice to Glenn Sobel Mgt. of the dispute, Glenn Sobel Mgt. used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services, or
ii. Glenn Sobel Mgt. or a related entity has been commonly known by the Domain Name, or
iii. Glenn Sobel Mgt. is making 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"

e. Due Process and Ethics.

Respondent, Glenn Sobel Mgt. knew, or reasonably should have known that when he registered the Domain Name at issue, he agreed to and accepted the procedures, rules and regulations established by the Registrar and its' successors. For reasons known only to Glenn Sobel Mgt., he or it has chosen not to comply with those obligations. Instead of a proper and timely Response under the Regulations, the peculiar tactics of an evasive "non-response Response" and irrelevant and unsubstantiated attacks on opposing counsel were decided upon.

Despite the entirely appropriate urgings of Claimants counsel to ignore and dismiss Respondent's  "non-response Response", the Panel recognizes it has a duty to treat the parties equally and to afford them a fair opportunity to present their case. Likewise the Panel is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight of the evidence. All of the Respondents submissions, statements and representations have been very carefully considered for their relevance, materiality and admissibility. All have been given due and appropriate weight.

      The Panel also expressly notes that the evidence submitted by both parties in this dispute indisputably demonstrates that counsel for the Claimant has always communicated and acted in a manner completely consistent with the ethics, customs, norms and duties of attorneys practicing in the federal courts of the United States.  The Panel affirmatively finds that no reasonable person could construe any of the submitted communications as deceitful, trickery, libelous or calculated to ensnare or entrap anyone.

5. Conclusions and Decision.

The evidence, submissions of the parties, ICANN Regulations and guidance provided by the laws of the United States and the jurisprudence interpreting them compel this Panel to conclude and decide that (a) the Domain Name registered by Glenn Sobel Mgt. and at issue herein is identical to the registered marks of Beverages and More, Inc., (b) Glenn Sobel Mgt. has no legitimate interests in respect of any of the domain names, and (c) the Domain Name at issue was registered and is being used in bad faith by Glenn Sobel Mgt..

Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Name at issue, "beveragesandmore.com" be transferred from Glenn Sobel Mgt. to Beverages and More, Inc.

Thus done and signed in Dallas, Texas, United States of America on March 9, 2000.

(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.
Presiding Panelist