Larry Fischer just defended a UDRP on the domain name BrooklynBeer.com, which may not seem as first as a big deal but consider this is just one of 7 UDRP filed by The Brooklyn Brewery Corporation and the only one they lost.
Of the other 6 UDRP filed by The Brooklyn Brewery Corporation, they won 2 (brooklynbrews.com, brooklynale.com) and got three others when the owners transferred them after receiving the UDRP (brooklynbeers.com, brooklynpilsner.com and brooklynlager.com). There is one UDRP pending on brooklynbrew.com.
The company also filed a lawsuit for trademark infringement last week against Black Ops Brewing, Inc.
The Brooklyn Brewery Corporation, only owns a trademark on the term “Brooklyn Brewery” but apparently thinks it own all domains with Brooklyn in the Beer vertical
In this case one panelist, The Honourable Neil Anthony Brown QC would have found Reverse Domain Name Hijacking.
Here is the highlights of the majority decision:
“”Complainant contends that (i) brooklynbeer.com is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant refers its marks as its “Brooklyn marks.”
“Complainant states that it sold “hundreds of thousands of barrels of beer under the Brooklyn marks” in the years 1987 to 2003, and during this same time period spent millions of dollars in advertising and promotion, while making $10 million in revenue.
Complainant contends that with its level of sales, and since Respondent is based in Brooklyn as well, Respondent must be aware of Complainant and its Brooklyn marks.
Complainant contends that Respondent is not using the website associated with the disputed domain name to link to beers specific to Brooklyn, nor to comment on “Brooklyn beer,” but rather generally to link to Complainant’s competitors in the beer and brewery industry, which does not show rights or legitimate interest, but rather indicates Respondent’s bad faith.
This Panel must first determine whether the disputed domain name brooklynbeer.com is identical or confusingly similar to trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
“The Panel finds that it is”
“Although Complainant does not own a mark for the terms “Brooklyn” alone or for “Brooklyn beer,” Complainant does own rights to the mark “Brooklyn Brewery,” which has the same first term, as well as the same connotation and commercial impression, as the disputed domain name brooklynbeer.com with the latter adding the non-source-identifying Top-Level Domain,”.com”.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute.
“Respondent uses the URL associated with the disputed domain name to resolve to a pay-per-click web page from which it offers sponsored links. As Respondent notes, these links are generated by Google. The evidence shows that the advertisements include those for competitors of Complainant in the beer and brewery industry. The Panel finds that the website is not being used in a truly descriptive manner since the advertisements are not specific to beers or breweries from Brooklyn.
Accordingly, although the combined terms “Brooklyn” and “beer” in the disputed domain name are descriptive, the Panel finds that Complainant has demonstrated Respondent’s lack of rights or legitimate interest, which Respondent has not rebutted.”
Registered and Used in Bad Faith
The Fischer affidavit attests that Respondent registered the disputed domain name in 2004 without intent to profit from Complainant’s rights in Complainant’s marks, a point that the Panel finds plausible in light of the evidence provided. As Respondent points out, Complainant does not own registrations for the term “Brooklyn” by itself, nor for “Brooklyn Beer,” nor does Complainant appear to have common law rights to such marks, particularly as Complainant’s registrations all claim section 2F, which indicates that the term “Brooklyn” is merely descriptive of Complainant’s beer and brewery services. The Panel also notes that Complainants existing trademark registrations were all issued after Respondent’s registration of the disputed domain name in 2004. Although Complainant formerly owned the disputed domain name from 1999 through 2002, Complainant did not object for over ten years after Respondent registered the disputed domain name in 2004.
On the balance, the Panel finds that there is insufficient evidence that Respondent registered and has used the disputed domain name in bad faith. Therefore, this Panel finds for Respondent on the third element, in accordance with paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As stated previously, Complainant began use of its Brooklyn Brewery mark in 1987 and owned the registration for the disputed domain name from 1999 through 2002.
Respondent registered the disputed domain name in 2004.
The Panel has found that the disputed domain name shares the same first term, and is similar in connotation and commercial impression to Complainant’s Brooklyn Brewery mark.
Furthermore, the Panel has found that Complainant has used that mark since prior to the date that Respondent registered the disputed domain name. Accordingly, the Panel finds that Complainant did not initiate this UDRP proceeding in bad faith or primarily to harass Respondent.
The request for a finding of reverse domain name hijacking is denied.
