WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Diageo p.l.c. v. John Zuccarini

Case No. D2000-0541

 

1. The Parties

The Complainant is Diageo p.l.c. (formerly known as Guinness, p.l.c.), a corporation organized and existing under the laws of the United Kingdom, with its principal place of business located at 8 Henrietta Place, London W1M 9AG.

The Respondent is John Zuccarini, County Walk, 957 Bristol Pike, Suite D-6, Andalusia, PA 19020

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "guinnes.com",

The Registrar of the domain name is CORE Internet Council of Registrars with business address in 29, Route De Pre Bois, Ch-1215, Geneva, Switzerland.

 

3. Procedural History

On June 2, 2000, Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and under the rules for the UDRP implemented by ICANN on the same date ("UDRP Rules").

The Complaint and Exhibits were received by the Center at hardcopy on June 5, 2000. The Center acknowledged receipt of the Complaint on June 12, 2000.

On June 12 and June 22, 2000, a Request for Registrar Verification was transmitted to CORE Internet Council of Registrars. In an e-mail to the Center dated June 22, 2000, CORE Internet Council of Registrars confirmed that it is the Registrar for the domain name "guinnes.com" and that it had received a copy of the Complaint by the Complainant.

Having verified that the Complaint satisfied the formal requirements of the UDRP and the UDRP Rules, the Center sent on June 23 a Notification of Complaint and Commencement of Administrative Proceeding to the Complainantís authorized representative by facsimile and e-mail; to the Respondent by post, facsimile and e-mail; and to ICANN and CORE Internet Council of Registrars. The Center advised the Respondent that the Response was due no later than July 15, 2000.

On July 11, the Center received an e-mail by the Complainant in which the Complainant inquired whether it would be possible to amend the Complaint by adding several other domain names of the Respondent which also conflicted with the Complainantís trademarks and which were a violation of the UDRP.

On July 15, 2000, Respondent forwarded to the Center a Response to the Complaint, which was received by the Center on the same day.

On July 17, 2000, the Center received an amendment to the original complaint by the Complainant requesting the addition of the following eleven (11) domain names to the original complaint:

"guinness-really-sucks.com", guinness-really-really-sucks.com"; guinness-beer-really-sucks.com; guinness-beer-really-really-sucks.com; guinness-sucks.com; "guinnessreallysucks.com"; "guinnessreallyreallysucks.com"; "guinnessbeerreallysucks.com"; guinnessbeerreallyreallysucks.com"; "guinness-beer-sucks.com"; guinnessbeersucks.com".

In response to the Complainantís amendment of the original complaint on July 17, 2000, the Center sent an e-mail to the Complainant stating that in view of the implications the amendment would have for the current proceedings, it would not be possible to accept such an amendment. The Center recommended that the amendments be submitted as a new case.

In an e-mail dated July 17, 2000, the Respondent objected to the amendment of the complaint being part of the current proceedings.

With an e-mail of July 20, 2000, the Complainant submitted further statements in relation to the domain name "guinnes.com".

With an e-mail of July 20, 2000, the Respondent objected that additional statements and documentation by the Complainant were presented to the Panel.

With an e-mail of the same day, the Center replied that, according to paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution, it was at the sole discretion of the Panel to request further statements and documents of either Party.

On August 9, in view of the Complainantís designation of a single panelist, the Center invited Torsten Bettinger of Bettinger & Abel, Munich to serve as a Panelist in this Administrative Proceeding.

On August 2, 2000, the Center issued to the Panelist a Request for Declaration of Impartiality and Independence. Having received the Panelistís Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelistís deadline for issuing a decision of August 22, 2000.

The Center transmitted the case file to the Panelist on August 9, 2000. The case file was received by the Panelist on August 11, 2000.

 

4. Factual Background

The Complainant has provided documentary evidence of the following trademark registrations:

GUINNESS & Design Ė Trademark Reg. No. 1,057,882, Intl. Class 32: Light beverages, incl. stout, porter, ale, etc, February 1, 1977

GUINNESSĖ Trademark Reg. No. 321,014, Intl. Class 32: Light beverages, beer; January 15, 1935

ARTHUR GUINNESS & SON GUINNESS GOLD MASTER BREWERS SINCE 1759 & design, Ė Trademark Reg. No. 1,561,254, Intl. Class 32: Light beverages, beer; October 17, 1989

GUINNESS EXTRA STOUT ARTHUR GUINNESS SON & CO. (DUBLIN) LTD & Design, Ė Trademark Reg. No.861,769, Intl. Class 32: Light beverages, stout; December 10, 1968

PUB DRAUGHT GUINNESS & Design Ė Trademark Reg. No.1,969,268, Intl. Class 32: Light beverages, beer; April 23, 1996

GUINNESS STOUT CERVEZA GUINNESS CABEZA DE PERRO PARA SU SATISFACCION COMPLETA PIDA GUINNESS MUCHO MAS QUE UNA CERVEZA & Design; Ė Trademark Reg. No. 872,710; Intl. Class 32: Light beverages, stout.; July 8, 1969

The Complainant further asserts that it is the proprietor of more than 35 registered trademarks in various countries worldwide, consisting of the mark GUINNESS and numerous other foreign trademark registrations for trademarks that include the term "Guinness" as part of the trademark.

The Respondent has not alleged a trademark registration for "Guinnes" in the US or any other jurisdiction.

The Complainant submitted a Court decision in Shields v. Zuccarini, 54. U.S.P.Q. 2d 1166 (E.D.Pa. 2000) in which the Court found that the Respondent is a wholesaler of Internet domain names and used confusingly similar domain names with a bad faith intent to profit from the plaintiffsís marks.

The Respondent is affiliated with the following entities: Cupcake City, Cupcake Shows, Cupcakes, Cupcake Party, Cupcake-Patrols, Cupcake Movies, and Cupcake-Show, 957 Bristol Pike, Andalusia, PA 19020.

The Complainant has provided evidence of a list of 191 domain names held by the Respondent either individually or by Cupcake City, Cupcake Shows, Cupcakes, Cupcake Party, Cupcake-Patrols, Cupcake Movies, and Cupcake-Show including the domain names

"britaneyspears.com", "britannyspears.com", "britneyspears.com", "starwarspictures.com", "msninstantmessenger.com", "sonycameras.com", "disneywallpaper.com", "yahoofinancial.com", "yahoohome.com", "yahootravel.com", "yahooe-mail.com", "starwarspg.com", "rickymartain.com", "elvispresely.com", "elvispresly.com", "phatommenace.com", "mountiandew.com","excitepersonals.com", "jeneferlopez.com", "backstreetboys.com", "backstretboys.com", "musiclyrics.net".

Respondent used the domain name "guinnes.com" to redirect the host "cupcakeparty.com".

The Respondent currently operates a website under the domain name "guinnes.com" showing a drawing of a snowman and stating "I like lawyers. There are nice people".

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that: (1) The domain name guinnes.com is identical or confusingly similar to the trademark "Guinness" in which the Complainant has world-wide exclusive rights; (2) the Respondent has no rights or legitimate interests with respect to the domain name; and that (3) the domain name was registered and is being used in bad faith.

The Complainant requests that the Administrative Panel issue a decision that the domain name "guinnes.com" be transferred to the Complainant.

  1. Respondent

The Respondent asserts that: (1) Guinness and "guinnes.com" are not identical or confusingly similar; (2) the Respondent has rights and a legitimate interest in the domain name; and that (3) the domain was not registered and used in bad faith.

The Respondent further alleges that the domain name is not identical to the Complainants trademark since for it be considered identical, the Guinness mark for beer would have to be recognizable as the only famous mark for the word "guinness" by the majority of the population.

The Respondent further alleges he was completely unaware at the time of registration that there was a company called Guinness which sold beer, that his intentions for the web site guinnes.com were for a site about "The Guinness Book Of World Records" and "did not attract business from the Complainant as he did not have the plan on having anything for sale on the website and did not intend to have advertising on the site".

 

6. Discussion and Findings

A. Procedural Matters

With respect to the Complainantís request to add eleven domain names to the original complaint, the Panel notes that the Complainantís amendments were submitted to the Center after the Respondent had submitted its response to the original complaint. As a result, the amendments of the Complaint are not in compliance with the time periods established by the UDRP-Rules.

The Panel further notes that, with regard to Paragraph 10 (b) UDRP-Rules which allows the Panel to extend a period of time fixed by the UDRP-Rules, the Panel has taken into consideration the possibility of accepting the amendments by giving the Respondent another 20 days to respond to the amendments of the complaints.

However, i In view of the implications of the acceptance of such an amendment for the administration of the proceedings, the Panel hereby decides that it does not accept the amendments of the complaint, without prejudice to submission of a separate complaint by the Complainant.

B. Substantive matters

Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if it is to prevail:

(i) The Respondentís "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;" and

(ii) The Respondent has "no rights or legitimate interests with respect to the domain name;" and

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

(i) Identical or confusingly similar

The Complainant has registered the domain name "guinnes.com". This domain name is identical to Complainantís trademark Guinness, except that: (1) the domain name adds the generic top-level-domain ".com" and (2) the elimination of the letter "s".

The addition of the generic top-level-domain (gTLD) .com is without legal significance in determining similarity.

The elimination of the letter "s" between "guinnes" and "Guinness" does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark. The Panel therefore concludes that the domain name is identical or confusingly similar to a trademark or service mark in which the Claimant has prior exclusive rights.

(ii) Rights or legitimate interests (paragraph 4(a)(ii))

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(a) 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

(b) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(c) you are making a legitimate non-commercial 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.

The Respondent asserts that he registered the domain name "guinnes.com" to discuss "The Guinness Book of World Records" and not divert the Complainantís clients.

The Panel finds that the plan to use the domain name for "The Guinness Book of World Records", that is also a trademark owned by the Complainant, does not fall within any of the circumstances listed under Paragraph 4 (a) UDRP as evidence of rights or legitimate interests.

For this reason, the Panel concludes that Respondent has no rights or legitimate interests in the domain name "guinnes.com" and that the requirement of the UDRP Paragraph 4 (a) (ii) is satisfied.

(iii) Bad faith (paragraph 4 (a) (iii)

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(a) 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
(b) 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
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(d) 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 complainantís 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 Respondent asserts that the mark Guinness is recognized as a famous mark for "The Guinness Book of World Records" and that he registered the domain name "guinnes.com" to discuss "The Guinnes Book of World Records". The Respondent further admits that he is the owner of 3000 domain names. For example, he has registered obvious misspellings of celebrities names, such as briteneyspears.com, jeneferlopez.com, backstreetboys.com. He has also registered variations of popular products and website names such as sportillustrated.com, mountianbikes.com etc.

This conduct is compelling evidence of the Respondentís bad faith.

 

7. Decision

The Panel thus decides that:

1) the domain name guinnes.com is confusingly similar to the trademark "Guinness";

2) The Respondent has no rights or legitimate interest with respect to the domain name guinnes.com;

3) the domain name guinnes.com has been used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Network Solutions, Inc., transfer the disputed domain name "guinnes.com" to the Complainant.

 


 

Sole Panelist
Torsten Bettinger

Dated: August 22, 2000