WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

R & A Bailey & Co. v. WYSIWYG

Case No. D2000-0375

 

1. The Parties

The Complainant

R & A Bailey & Co., a corporation organized and existing under the laws of the Republic of Ireland, with its principal place of business located at:

Nangor House
Nangor Road
Western Estate, Dublin 12
Republic of Ireland

R & A Bailey & Co. is a subsidiary of the United Distillers & Vintners Group of companies.

Represented by:

Ms. Serena Tierney
United Distillers & Vintners
Kingsley House
1A Wimpole Street
London W1M 8DB
United Kingdom

The Respondent

According to paragraph 6 of the Complaint, the WHOIS database of the Registrar indicates that the registrant of the disputed domain name is "WYSIWYG" located at 5067 Auburn Drive, San Diego, California. Paragraph 6 notes further that the administrative contact for the domain name is Mr. Ciaran MacNeill of the PocketIT.com, Inc. located at 1770 Grand Avenue, Suite E, San Diego, California.

Represented by:

Frank A. Bottini, Esq.
Symphony Towers
750 B Street, Suite 2770
San Diego, California 92101
USA

 

2. The Domain Name and Registrar

The domain name at issue is:

baileysirishcream.com

It is registered with:

Network Solutions Inc. (NSI)
505 Huntmar Park Drive
Herndon, Virginia 20170
United States of America

Fax: 703-742-8706

 

3. Procedural History

· On May 4, 2000, the Complaint was filed with the Center by R & A Bailey & Company by e-mail with a hard copy following.

· On May 7, 2000, the Center acknowledged receipt of the Complaint.

· On May 7, 2000, the Center requested Registrar (NSI) verification, and received on May 11, 2000, the Registrarís answer to that request.

· On May 12, 2000, a formal requirements compliance review was completed pursuant to Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules.

· On May 12, 2000, the Center confirmed by printing off a hard-copy that the website <www.baileysirishcream.com> was blank. It stated that it was "coming soon".

· On May 12, 2000, Notification of Complaint and Commencement of Administrative Proceeding was made.

· On May 15, 2000, the Center received an e-mail from the Complainant.

· On May 24, 2000, the Center received a request for a 45-day extension from the Respondent.

· On May 25, 2000, the Center granted the Respondent an extension until June 11, 2000 in order to file a response to the Complaint.

· On June 14, 2000, the Center received the Response to Complaint dated 6 June 2000 which showed, inter alia, that the Respondent was represented by counsel.

· On June 19, 2000, the Center notified the parties that the Administrative Panel had been appointed. The Panelist initially accepted the appointment by e-mail and formally documented his acceptance by Statement of Acceptance and Declaration of Impartiality and Independence dated June 26, 2000.

 

4. Jurisdictional Basis for the Mandatory Administrative Proceeding

Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph. The grounds are:

(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name was registered and is being used in bad faith.

In accordance with certain findings made below, the Panel finds that the Complainant has complied with the applicable rules and this dispute is properly within the scope of the ICANN Policy and, further, that the Panel has jurisdiction to decide the dispute.

 

5. Factual Background

At paragraph 12 of the Complaint, the Complainant lists four U.S. trademarks which have been registered by it. It includes an Annexure F, a further list of registered trademarks of BAILEYS and/or BAILEYS IRISH CREAM in many other countries.

The domain name at issue was registered by the Respondent on April 2, 1999.

As the Respondent is not an authorized licensee of the Complainant nor authorized to use the Complainantís trade marks, the Complainant caused a cease and desist letter dated February 11, 2000, to be sent to Mr. MacNeill of WYSIWYG objecting to WYSIWYGís registration of the domain name. It alleged that the registration violated U.S. laws.

By letter dated February 29, 2000, Mr. MacNeill responded to the Complainantís counsel that he was familiar with "Baileys Original Irish Cream", was unaware of any U.S. trademarks at the time of registration and that he was, inter alia, "currently in development of a baileysirishcream.com and the site is still in the parking stage and has not been made available as of yet." He stated further that "much time and money" had been spent in the development of this and other related sites and expressed his willingness "to discuss a more favorable resolution that make take (sic) into account the loss PocketIT.com, Inc. would incur, the time and money spent and the value your client would receive."

 

6. Partiesí Contentions

A. The Complainant contends that:

The domain name at issue is confusingly similar to its U.S. Trade Mark No. 1,185,890, which incorporates the words "Baileys", "Irish" and "Cream". It contends further that it is confusingly similar to three other U.S. registered trade marks for Baileys.

It asserts further that a trader would not register the domain name in question unless it sought to create an impression of association with the Complainant or its product and/or to attract business away from the Complainant and/or misleadingly divert members of the public. [See paragraph 20 of the Complaint.]

The Complainant notes further [at paragraph 22] that it has not licensed or otherwise permitted the Respondent to use the trade mark for Baileys Irish Cream or any other trade mark incorporating Baileys.

In the circumstances, it is contended that the Respondentís primary purpose in registering the domain name was to:

sell, rent, or otherwise transfer the domain name registration to the Complainant, the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.

B. The Respondent contends that:

WYSIWYG is not a legal entity and although it is the name under which the domain name was registered, the true owner is PocketIT.com, a company incorporated subsequent to the nameís registration and owned by Mr. MacNeill. The Respondent contends, therefore, that the Complainant "has sued the wrong entity, which is, in fact, not a legal entity at all". [See Response at paragraph 2.]

It contends further that even if the actual name of the legal owner of the domain name was identified in a refiled Complaint, the Complainant has not shown bad faith such as to justify the transfer of the disputed domain name to it. It is asserted in particular:

4. Second, even if Complainant subsequently files a Complaint that actually names the legal owner of the disputed domain name as the Respondent, Complainant has made no showing of bad faith to justify the transfer of the disputed domain name to Complainant. Significantly, Complainant has the burden of proof in this proceeding to demonstrate the Respondentís bad faith. Complainant lists only two factors which allegedly demonstrate bad faith: (1) the assertion that Respondent has not yet actively developed a web site for the disputed domain name; and (2) the fact that, when contacted by Complainant regarding the domain name, and told that Complainant was interested in obtaining the domain name, Respondent indicated that any transfer of the domain name would have to take into consideration the out-of-pocket expenses incurred by Respondent.

5. Neither of these two allegations support any inference of bad faith. Respondent was contacted by Complainant a mere nine months after the domain name was registered. Respondent is a start-up company, and other WIPO decisions have held that the non-use of a domain name for this short period of time by a start-up company does not indicate bad faith. See, e.g., Meredith Corp. v. City Home, Inc., WIPO Case No. D2000-0223 (May 18, 2000) (Creel, T., Panelist) ("the non-use of the name for eight months is not an unduly long time for a new business in the planning stage of expansion")Ö

6. Second, the fact that Respondent, when contacted by Complainant, offered to discuss an amicable resolution to the dispute, including consideration of the out-of-pocket costs which Respondent has incurred in registering the domain name and commencing efforts to develop the web site, does not support a finding of bad faith. Bad faith is only demonstrated by a domain name holder requesting compensation far in excess of its out-of-pocket costs. The documents submitted by Complainant unequivocally demonstrate that: (1) Complainant contacted Respondent, not vice versa; and (2) Respondent never demanded any sum of money from Complainant and in fact never mentioned any remuneration other than compensation for Respondentís out-of-pocket expenses actually incurred.

The Respondent also raises certain jurisdictional objections.

 

7. Discussion and Findings

The Jurisdictional Objections

The Respondent has registered what the Panel views as two objections to jurisdiction.

The first is based on constitutional grounds. The Respondent observes that the disputed domain name was registered on April 2, 1999, but the ICANN Policy not "enacted" until October 24, 1999. It argues that the Panel has no jurisdiction due to questions pertaining to the "constitutionality of the retroactive application" of the ICANN Policy on the grounds that it was not established until October 24, 1999, some five months after the domain name was registered. It asserts that there has been a retroactive application of the ICANN Policy to the Respondentís "property interests" and that this violates the United States Constitution, including the right to due process of law and the takings clause.

Having given due consideration to this submission, the Panel concludes as follows:

First, the Panel is comprised of a single panelist who is of non-United States nationality and is not a United States judge. It does not have the jurisdiction to pass upon issues of U.S. constitutional law and will not speculate as to what a U.S. court of competent jurisdiction might hold were the argument to be advanced before it.

Secondly, the Respondent has expressly preserved "any and all objections" to the jurisdiction of this Panel and has reserved the right to challenge the constitutionality of the Policy in any court of law, including any state or federal court in the State of California [see paragraph 7 of the Response]. The Panel takes note of this express reservation and observes that paragraph 4(k) of the ICANN Policy preserves the availability of court proceedings to the disputing parties. Moreover, paragraph 5 expressly excludes from the jurisdiction of an administrative panel "[a]ll other disputes" between the parties other than the registrant "regarding Ö[the] domain name registrationÖ".

Accordingly, the Panel dismisses the first jurisdictional objection. Appropriate avenues exist for the review of the constitutionality of the ICANN Policy by a court with the requisite jurisdiction to do so, should the Respondent be inclined to pursue them.

The Respondent raises another objection that the Panel, upon reflection, considers can also be characterized as jurisdictional in nature. It asserts that WYSIWYG, the name under which the domain name was registered, is not a legal entity. It is noted further that the actual owner of the name at issue is PocketIT.com, a company incorporated subsequent to the registration of the disputed name, which itself is owned by Mr. Ciaran MacNeill. Accordingly, it is contended [at paragraph 3 of the Response] that "the Complainant has sued the wrong entity".

In the Panelís view, this argument also cannot succeed. This proceeding is not a law suit per se. It is instead a mandatory administrative proceeding of very limited and specific jurisdiction which is designed to resolve disputed domain names for interested parties and, indirectly, for registrars. As noted above, the ICANN Policy does not purport to oust the jurisdiction of the courts.

Under the ICANN Policy, the registrar in the instant case, Network Solutions Inc., has agreed to comply with the mandatory administrative process, specifically, with any decision that may result therefrom [See paragraph 4(k) of the Policy]. Accordingly, the Panel is of the view that it does have the power, should it choose to exercise it in this proceeding, to effectuate the cancellation or transfer of the disputed domain name.

Quite aside from the question of its powers, given the fact that the registrant of the domain name at issue is WYSIWYG yet the name is apparently owned by another person, the Panel is, of course, concerned to ensure that notice of this proceeding has been effective. It is of fundamental importance to the administration of a proceeding such as this that the interested Respondent, de jure or de facto, be given notice of the Complaint. Here, a question might have arisen had notice been given to WYSIWYG but neither Mr. Ciaran MacNeill nor PocketIT.com had become aware of the proceeding. Mr. MacNeill evidently indirectly owns the name through his ownership of PocketIT.com. [See Response at paragraph 2.]

However, it is clear that Mr. MacNeill and PocketIT.com were given notice of the Complainantís position. First, the record shows that WYSIWYG and Mr. MacNeill share the same address (see the invoices filed as Exhibit A to the Response; the address listed in them is the same as the WHOIS database address for WYSIWYG). Second, it was Mr. MacNeill who responded to counselís cease and desist letter dated February 11, 2000. Third, WYSIWYG (whatever its legal status may be) has retained legal counsel to make submissions both on its behalf and to the benefit of Mr. MacNeill and PocketIT.com. The common interest of WYSIWYG, Mr. MacNeill and PocketIT.com is underscored by: (i) the contact person for the Respondent identified in the Response (Mr. MacNeill), (ii) certain factual allegations in the body of the Response [see, for example, paragraphs 15-21] and (iii) the Exhibit A invoices.

For these reasons, the Panel considers that, notwithstanding the status of WYSIWYG and PocketIT.comís apparent ownership of the domain name, the Panel has jurisdiction over this dispute and the Respondent and the other two affected parties who have an interest in the matter from the Respondentís perspective have been duly and effectively notified.

The Merits

The Panel is constituted in order to determine whether the Respondentís registration of <baileysirishcream.com> complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999). As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:

 

Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In order to succeed, a Complainant must prove each of the three elements set out above.

Element 1

The Complainant contends that the domain name at issue is "identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

The Panel finds that the Complainant has proved this element. In its view, the domain name <baileysirishcream.com> is confusingly similar to the Complainantís product and trade name and the registered trade marks in relation thereto.

Element 2

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.

The Panel agrees that Respondent has no rights or legitimate interests in respect of the domain name. The Complainantís rights and legitimate interests in the name Baileys Irish Cream are well founded and settled. They are manifested not only in the registration of Baileys and Baileys Irish Cream trademarks, but also by the well-known nature of the product in question. The Panel accepts the pleading in paragraph 17 of the Complaint that the evidence of world-wide sales and marketing expenditure demonstrates that the trademark is exclusively associated with the Baileys Irish Cream liqueur product and the Complainant.

Element 3

Thirdly, the Complainant contends that the domain name has been registered and is being used in bad faith.

Paragraph 4 of the ICANN Policy sets out in illustrative terms the circumstances which shall be evidence of the registration and use of a domain name in bad faith. Before proceeding further it is appropriate to set out the subparagraph in full:

 

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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.

The Respondentís main argument on the merits is that the Complainant has not made a showing of bad faith such as to justify the transfer of the domain name to it. The Respondent correctly asserts that the burden of proof is on the Complainant to demonstrate bad faith. This is made clear by paragraph 4(a) of the ICANN Policy which states that: "In the administrative proceeding, the Complainant must prove that each of these three elements [relating to the domain name at issue and certain intellectual property rights] are present."

With respect to the contention that there is no evidence of bad faith, the Panel notes that the Response contends [at paragraph 15 of the Response], without citing any evidence in support, that the domain name was registered "in a good faith attempt to establish a non-commercial fan web site for Baileyís Irish Cream" [emphasis added]. No affidavit or other evidence in support of this claim (or others made in the balance of the response) was filed. Accordingly, the Panel is left with the documentary evidence on the record.

The Panel is unable to accept this factual pleading. It notes that Mr. MacNeillís response to Baileyís cease and desist letter did not disclose the intention to create a "fan web site". In fact, far from lauding the product or expressing interest in establishing a "fan web site" for it, Mr. MacNeillís letter of February 29, 2000, stated:

Being from Ireland, I am familiar with Baileys Original Irish Cream. I Ö dispute your claim that "Baileys Original Irish Cream is famous"Ö

I am currently in development of a baileysirishcream.com and the site is still in the parking stage and has not been made available as of yet.

ÖI have spent much time energy and money in the development of this and other related sites. Pocketit.com Inc. [the company of which Mr. MacNeil identified himself as CEO] was set up to use the Internet to promote products and services and not for any illegal activities.

ÖIf your client believes that this site would be of value to them, I would be willing to discuss a more favorable resolution that make take (sic) into account the loss Pocketit.com Inc. would incur, the time and money spent and the value your client would receive.

In the Panelís view, this letter is evidence that Mr. MacNeillís intention was not to create a non-commercial fan web-site but rather to seek the payment of moneys from Baileys in exchange for the transfer of the domain name. There is no statement of fan-like sentiment (which in the normal understanding would connote support and approval of the product, service or person in question), there is a reference to having spent "much time energy and money" (sic) in development of the site, and there is a less than veiled reference to the prospect of being paid for the site. It is noted further that the "more favorable resolution" to which Mr. MacNeill referred, covered not only his "documented out-of-pocket costs directly related to the domain name" but to an alleged unspecified loss that PocketIT.com would incur and "the value Ö[Baileys] would incur".

The Panel does not agree with the claim at paragraph 33 of the Response that this statement "mentioned only a desire to receive compensation for out-of-pocket expenses actually incurred" [emphasis in original]. The Panel views the reference to the value that Baileys would incur as one of the components of an as-yet unspecified sum that Mr. MacNeill expressed interest in discussing. Read in the context of the full sentence, it is clear that he was referring to the payment of more money than the documented out-of-pocket costs directly related to the domain name. This, according to paragraph 4.b(i) of the ICANN Policy, is evidence of the registration and use of a domain name in bad faith.

The Panel is fortified in this conclusion by the evidence adduced by the Complainant showing that Mr. MacNeill has registered other domain names of other established companies of well-known reputation. The Complaint refers to two such examples, <callawayballs.com>, which could be expected to be of interest to the Callaway Golf Company, and <thedailyracingform.com>, which could be expected to be of interest to The Daily Racing Form. These registered names, drawn from Annexure J of the Complaint, are both examples of other established businesses that would ordinarily be assumed to be associated with the true owner of trademarks, business names or company names incorporating the whole or part of those domain names.

The fact that the Respondent claimed not to be aware of the Complainantís trademarks at the time that he registered the name, does not assist him. First, it strains credulity to accept that Mr. MacNeill, a person of Irish nationality, did not understand that Baileyís, an Irish company with an internationally recognized product, would not have intellectual property rights associated with its name and product in the United States. Secondly, even if that statement was accepted, it does not assist the Respondent. The Panel accepts the assertion that ignorance of the existence of a registered trademark does not constitute a defence to allegations of its infringement. [See Complaint at paragraph 22.]

In the circumstances, the Panel has no doubt in concluding that the domain name has been registered and is being used in bad faith. In the Panelís view the Respondentís actions are, at a minimum, evidence of bad faith within paragraph 4.b(i) of the Policy.

 

7. Decision

At paragraph 32 of the Complaint, the Complainant requested that the Panel issue a decision that the contested domain name be transferred to it. In light of the findings made above and having regard to the remedies stipulated in paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <baileysirishcream.com> be transferred to the Complainant, R&A Bailey & Co.

 


 

J.C. Thomas
Panelist

Dated: July 4, 2000