WAGG, Inc. v. 1070903 Ontario Limited

[Indexed as: WAGG v. 1070903 Ontario Limited]
[Indexed as: whiskeyagogo.com]

Administrative Panel Decision
Case No. AF-0205

Commenced: 19 May 2000 
Judgement: 3 July 2000 

Presiding Panelist: Christiane FJral-Schuhl


Domain name – Domain name dispute resolution policy – International trademarks – Identical – Confusingly similar – Legitimate rights – Bad faith.

Complainant holds a US trademark for the name Whiskey a Go GO.  Respondent owns the Canadian trademark whiskey a gogo, and operates an adult website incorporating this name.  Complainant alleged that Respondent has no rights to the name outside the site, and that the name is identical or confusingly similar to its own name.  Complainant also alleged that Respondent registered and used the name in bad faith.

Held, Name Not Transferred.

Respondent’s name is unquestionably similar to Complainant’s name.  The signification are the same, thus the domain name and the brand are therefore confusingly similar.
Respondent has demonstrated that it has legitimate rights to the name.  It has been running a business for several years with the name in dispute, and it presented evidence of the trademark registration for the name.
Complainant has not presented any evidence to support its claim of bad faith registration or bad faith use.  The Panel will not add conditions to the Policy which demonstrate bad faith.

Policies referred to
Uniform Domain Name Dispute Resolution Policy
FJral-Schuhl, Panelist: - 
Complainant: WAGG, INC.
Respondent: 1070903 ONTARIO LIMITED
Case Number: AF-0205
Contested Domain Name: www.whiskeyagogo.com
Panel Member: Christiane Féral-Schuhl

1. Parties and Contested Domain Name 
WAGG Inc., 8901 Sunset Blvd, West Hollywood, California, represented by Mr. Gabirel Jonathan of Encino, California, is running a rock club on Sunset Blvd in Los Angeles called Whisky a gogo. 
The registrant is 1070903 Ontario Limited, 544 Rivermede Road, Concord, Ontario, Canada. 
The contested domain name is whiskeyagogo.com.

2. Procedural History 
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 27, 2000. The hardcopy of the Complaint Form was received on May 12, 2000. Payment was received on May 9, 2000. 
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 the Respondent; 
- Verify if the contested Domain Name resolved to an active Web page; 
- Verify if the Complaint was administratively compliant. 
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information apart from the billing contact, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant. 
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 15, 2000. The requested information was received on May 18, 2000. 
The Clerk's Office then proceeded to send 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's Office fulfilled all of its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 19, 2000, which is the commencement date of the administrative proceeding. 
On May 19, 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 June12, 2000, the Respondent submitted, via eResolution's internet site, his response. The signed version of the response was received on the same date. 
On June 14, 2000, the Clerk's Office contacted a panelist in this case. 
On June 19, 2000, the contacted panelist refused the case. 
On June 20, 2000, the Clerk's Office contacted Ms. Christiane Feral Schuhl, and requested that she act as panelist in this case. 
On June 21, 2000, Ms. Christiane Feral Schuhl accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. 
On June 21, 2000, the Clerk's Office forwarded a user name and a password to Ms. Christiane Feral Schuhl, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. 
On June 21, 2000, the parties were notified that Ms. Christiane Feral Schuhl had been appointed and that a decision was to be handed down on July 4, 2000, save exceptional circumstances. 

3. Factual Background 
WAGG Inc. is running a rock club, located on Los Angeles' Sunset Strip. 
WAGG Inc. holds a US registered trademark, issued on December 29, 1998, for the name "Whisky a Go GO", under international classes 25 (clothing) and 42 (restaurant and club). 
WAGG Inc. is also running a web site located at promoting the activities of the club. 
The Respondent (1070903 Ontario Limited) is the owner of the Canadian trademark "whiskey a gogo" filed June 19, 1999. 
1070903 Ontario Limited is operating an adult oriented web site located at www.whiskeyagogo.com. 

4. Parties' Contentions 
The complainant states that the site www.whiskeyagogo.com has no legitimate use of the name "whiskyagogo" "outside of its use as a porn site address on the web". 
The complainant emphasizes that by adding an "e" to the spelling of whisky, the respondent has obviously taken deliberate steps to usurp the goodwill created more than 35 years ago. 
According to the complainant, the absence of good faith in using the name "whiskey a gogo" can be gleaned from the fact that the respondent has no business outside of its web site, and is in violation of a registered U.S. trademark. 
The Respondent states that it is the owner in Canada of the trademark "whiskey a go-go" (Serial No. 1,003,537), filed January 29, 1999 on the basis of use in association with the services of a food and beverage establishment featuring adult entertainment in Canada since September 30, 1994, and that this application was allowed for registration by the Canadian Trademarks Office on April 27, 2000, and the registration fee had been paid by the Respondent on May 23, 2000. 
Respondent submits it has never used the name "whisky a gogo", and that it has rights to and legitimate interests in the domain name. 1070903 Ontario Limited emphasizes that it has used the trade-mark and trade-name "whiskey a go-go" in Canada since at least as early as September 30, 1994, that is, prior to the filing date of Complainant's trademark "whisky a go go" in the U.S, and prior also to the registration by Complainant on October 6, 1995, and the filing of a trade-mark application with the Canadian TradeMarks Office on January 28, 1999. 
Respondent states that it has continuously operated under the tradename Whiskey A Go-Go since late 1994, a popular adult entertainment establishment located in Concord, Ontario, employing over three hundred individuals and offering restaurant and live adult entertainment services in the Toronto area. 
As evidence of such activity, Respondent explains that it began, as early as March 1995, a comprehensive advertising campaign for Whiskey A Go-Go, which included advertisements placed in one of two major Toronto daily newspapers, the Toronto Sun, prominently featuring the Whiskey A Go-Go name and logo and that it has regularly placed a substantial number of similar advertisements in the Toronto Sun, examples of which can be found in the exhibits furnished by the Respondent. 
Respondent registered the domain name whikeyagogo.com on May 20, 1997 and had begun to develop at this location a website, which is currently still under construction. Respondent alleges that its intention is to establish a website on which to post information about its business, ongoing promotions and events organized by Whiskey A Go-Go, and not to divert individuals browsing the Internet from Complainant's website to that of the Respondent. 
Respondent further submits that far from not having any business outside of its web site, the web site comprises, or relates to, only a single aspect of the Respondent's active and successful business. 
In addition, Respondent notes that the registration date of the domain name, May 20, 1997, predates the filing of the application for the Complainant's U.S. trademark by nearly six months. 

5. Discussion and Findings 
Complainant has the burden under section 4 of the Uniform Domain Name Dispute Resolution Policy (UDPR) of showing (A/) that the Respondent's domain name is identical to or confusingly similar to its trademark, (B/) that Respondent has no rights or legitimate interests in the domain name, and (C/) that Respondent has both registered and used the domain name in bad faith. 
A/ Similarity of domain name to mark: 
whiskeyagogo.com is not identical to the trademark "whisky a gogo", but they are unquestionably similar. 
In order to determine whether the trademark and the domain name are confusingly similar it is to be noted that the only difference between them is that a "e" is added in the domain name whiskeyagogo.com. 
The spelling is not identical, but the word and the signification are the same. 
The domain name and the brand are therefore confusingly similar. 
B/ Respondent's rights or legitimate interests in the domain name: 
Paragraph 4(c) of the UDRP provides that a registrant may demonstrate its rights or legitimate interests in its domain name by showing any one of the following: 
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have not acquired trademark or service mark rights; or 
(iii) you are 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". 
It appears that the Complainant has not presented any evidence to substantiate its claims that Respondent has no rights or legitimate interests in respect to the domain name. 
On the contrary, the Respondent has presented evidence of the existence of its business, the use of its trademark and its right in the disputed domain name. 
In particular, the Respondent has produced a certificate from the Canadian patent office of the application for the registration of the trade-mark "whiskey a gogo" dated, June 29, 1999 and has produced evidence that it has been running a business under the name "whiskey a gogo" for several years. 
Pursuant to Paragraph 4(c) (i) of the UDPR, the Respondent has therefore demonstrated its rights or legitimate interests in its domain name. 
C/ Bad faith Registration and Use: 
Paragraph 4(b) of the UDRP describes the following circumstances as probative of a registrant's bad faith: 
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or 
(ii) you have 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 you have engaged in a pattern of such conduct; or 
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location". 
According to the Complainant, bad faith can be gleaned from the fact that the Respondent "has no business outside of its web site, and is in violation of a registered U.S. trademark". 
However, deciding that the registration by the Respondent of a domain name identical to a Canadian trademark should be transferred because it is contrary to a US Trademark would result in adding a new condition to Article 4(b) of the UDPR. 
In addition, the argument set forth by the Complainant, stating that the Respondent has no business outside of its web site is not substantiated by any evidence. 
Therefore, it appears that the Complainant has failed to show bad faith registration, as well as bad faith use. 
6. Conclusions 
It appears to the Panel that the Respondent has demonstrated its rights and legitimate interests in respect of its domain name, based on its rights to the trade-mark and trade-name WHISKEY A GO-GO, in accordance with the provisions of the UDRP. 
In conclusion, the panel decides to reject the complaint and to maintain the respondent's right to use the domain name whiskeyagogo.com. 
7. Signature 
At Paris 
July 3rd, 2000

Domain Name Not Transferred