WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol

Case No. D2000 - 0996

 

1. The Parties

The Complainant is Diageo plc (formerly known as Guinness plc), 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, United Kingdom.

The Respondent is John Zuccarini who is the administrative, technical and zone contact for the domain names in dispute and who the Complainant alleges it the true owner of the said domain names which have been registered in the name Cupcake Patrol, located at Country Walk, 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, U.S.A.

 

2. The Domain Names and Registrar

The domain names in issue in this proceeding are <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>; and <guinnessbeersucks.com> ("said domain names"). CORE Internet Council of Registrars ("CORE") is the Registrar of each of the said domain names.

 

3. Procedural History

On August 10, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on August 11, 2000. The appropriate fees were paid by the Complainant.

On August 15, 2000 the Center sent a Request for Registrar Verification to the Registrar and on August 23, 2000 the Registrar responded, stating that it had not received the Complaint from the Respondent, confirming that it is the registrar of the said domain names, that the Cupcake Patrol is the current registrant of the said domain names, that the Respondent is the Administrative contact, Technical contact and Zone contact, that the Policy applies to the said registrations and that the said registrations had an active ("production") status at that time.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.

On August 25, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by Post/Courier, by facsimile and by e-mail. A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar (without enclosures).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on August 25, 2000 and that the Respondent was required to submit a Response to the Center on or before September 13, 2000.

No Response was received by the Center from the Respondent and on September 25, 2000, the Center sent a Notification of Respondent Default to the Respondent by post/courier and by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorised representative of the Complainant by e-mail. Said Notification inter alia advised the Respondent that the Respondent was in default and that in accordance with the Rules, and the Supplemental Rules, the Center would proceed to appoint a single member Administrative Panel as designated by the Complainant, that the said Administrative Panel would be informed of the said default, and that the Center would continue to send all case-related communications to the Respondent.

On October 2, 2000 the Center invited James Bridgeman to act as Administrative Panel in this Administrative Proceeding, and, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint said James Bridgeman as Administrative Panel on October 6, 2000. On the same day the case file was transmitted to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant and its predecessors in business have sold alcoholic beverages products under the <GUINNESS> trademark for many years, commencing in Ireland as early as January 1764. In the course of this business, the predecessor of the Complainant has exported lager and pilsner beer, stout, porter, and ale products around the world since the 1800's. Over the years, through continuous sales, and extensive advertising and promotion, <GUINNESS> brand lager and pilsner beer, stout, porter, and ale products have become some of the worldís most famous and best-selling alcoholic beverages. At the present time, the Complainantís <GUINNESS> brand products are sold in approximately 150 countries.

The Complainant has spent many millions of dollars promoting and advertising the <GUINNESS> brand in numerous jurisdictions across the world.

The Complainant is the owner of the following trademarks registered in the USA:

<GUINNESS & Design> registration number 1,057,882 registered since February 1, 1977, for the following goods: "Light beverages, incl. stout, porter, ale, etc." in International Class 32:

<GUINNESS> registration number 321,014 registered since January 15, 1935 in International Class 32 for the following goods: "Light beverages, beer.";

<ARTHUR GUINNESS & SON GUINNESS GOLD MASTER BREWERS SINCE 1759 & design> registration number 1,561,254 in International Class 32 for the following goods: "Light beverages, beer.";

<GUINNESS EXTRA STOUT ARTHUR GUINNESS SON & CO. (DUBLIN) LTD & Design> registration number 861,769 registered since December 10, 1968in International Class 32 for the following goods "Light beverages, stout";

<PUB DRAUGHT GUINNESS & Design> registration number 1,969,268, registered since April 23, 1996 in International Class 32 for the following goods: "Light beverages, beer"; and

<GUINNESS STOUT CERVEZA GUINNESS CABEZA DE PERRO PARA SU SATISFACCION COMPLETA PIDA GUINNESS MUCHO MAS QUE UNA CERVEZA & Design> registration number 872,710, registered since July 8, 1969 in International Class 32 for the following goods: "Light Beverages, stout."

The Complainant is also the proprietor of other registered trademarks in various other jurisdictions throughout the world, consisting of the word mark <GUINNESS> or a device mark incorporating the word <GUINNESS>. The Complainant has furnished details of a sample number of these registrations in Europe and North America and in each case the trademarks are registered for use in connection with "Light beverages including stout, porter, ale and lager beer".

As no Response has been filed, there is little information relating to the Respondent. The said domain names were registered in the name of Cupcake Patrol and in the absence of any evidence to the contrary this Administrative Panel accepts the Complainant's submission that this is a trading name of the Respondent.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that the Respondent registered the said domain names after Complainant filed earlier ICANN proceeding entitled Diageo plc v. John Zuccarini, WIPO Case No. D2000-0541 against the Respondent seeking transfer of the domain name <guinnes.com>. The Complainant submits that the Respondent registered the said domain names to harass the Complainant for enforcing its trademark rights, and to deliberately interfere with and disrupt Complainantís legitimate business activities.

The Complainant submits that the said domain names in issue are virtually identical to or confusingly similar to the Complainant's U.S. Trademark Nos. 1,057,882; 321,014; 1,561,254; 861,769; 1,969,268; and 872,710 (as well as all other trademark registrations owned by Complainant that include or incorporate the term <GUINNESS>) and to the trademark <GUINNESS> in which the Complainant submits it has common law trademark rights. The Complainant states that this is supported by authority cited infra.

The Complainant submits that in order to determine the question of whether a domain name is confusingly similar to a trademark, this Administrative Panel should adopt the same approach as the administrative panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 and apply the multi-factor test set forth in the decision of the United States Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

The Complainant states that in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 the administrative panel concluded that the disputed domain names were confusingly similar to the complainantís trademark. In that case, the administrative panel found that two factors were most compelling in the determination that there was a likelihood of confusion between the complainantís trademark and the disputed domain names: (i) the strength of the WALMART trademark; and (ii) the respondentís intent in selecting the domain names.

As regards the Complainant's rights in the said trademarks, it is submitted that the Complainantís rights "are expansive and predate Respondentís June 5, 2000 registration of the said domain names".

The Complainant submits that the <GUINNESS> mark is famous, in part because the mark has been in continuous use for many years and because Complainant engages in extensive advertising of its products, and uses the <GUINNESS> trademark in this regard.

It is further submitted by the Complainant that there is a clear similarity of the mark and the said domain names in their entireties as to appearance, sound, connotation and commercial impression. The first word in each of the said domain names is <GUINNESS> which is identical to Complainantís <GUINNESS> mark. Respondent took Complaintís famous <GUINNESS> trademark and tacked on other words, such as "beer," "really," and "sucks" to form the said domain names.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the said domain names. In this regard, the Complainant submits that it has not licensed or otherwise permitted the Respondent to use the <GUINNESS> trademark, or any other trademark incorporating the <GUINNESS> mark. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the <GUINNESS> mark.

The Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the said domain names. In support of this claim the Complainant has submitted a print out of the Respondent's www site accessible via the <guinnes.com> domain name in which it is alleged that the Respondent has stated that he registered the said domain names because he was angry with the Complainant for filing an ICANN complaint seeking the transfer of the said <guinnes.com> domain name. It is alleged that the Respondent posted the said domain names on his said www site accessible via the said <guinnes.com> www site address during the approximate period from June 1 to July 14, 2000. The Complaint states that the said domain names had not been used in connection with active www sites as of the date of filing of the Complaint.

The Complainant states that the Respondent has not ever been commonly known by the domain names at issue, or by the term <GUINNESS>.

The Complainant submits that the domain names in issue were registered and are being used in bad faith by the Respondent.

It is alleged that the Respondent registered the said domain names for retaliatory purposes in direct response to Complainant initiating the above mentioned administrative proceedings against the Respondent regarding the <guinnes.com> domain name. The Complainant has furnished a detailed history of the administrative proceedings relating to the said <guinnes.com> as explanatory background to the instant administrative proceedings.

In support of its argument that the said domain names were registered by the Respondent as a result of the earlier administrative proceedings, the Complainant has submitted a print-out of a page on the Respondentís said www site and alleges the following statement was posted on that www site during the period from June 1 through July 14, 2000:

"I tell you, I was so upset when I got this STUPID ASS LETTER from the GOOFBALL JACKASS LAWYERS at guinness beer, that I went to register the domain name, GUINNESSSUCKS.COM, but guess what, that domain name is already owned by someone. Guess who. Thatís right. Guinness beer owns it themselves. Iím glad Iím not the only one who thinks they suck. THEY THINK THEY SUCK THEMSELVES!! . . . So anyway I did go and register a few names about guinness beer and pillsbury. Tell me what you think....Coming Soon to a website near you!!"

On the said print-out of the page on the Respondentís www site there is a list of what the Complainant describes as twenty-two (22) "Guinness sucks" and "Pillsbury sucks" domain names allegedly registered by the Respondent in response to the Complainants initiation of the said earlier administrative proceedings.

The Complainant argues that the Respondent admitted on the said <guinnes.com> www page that he registered the said domain names at issue in this proceeding because he was angered by the Complainantís attempt to take the domain name <guinnes.com> away from him. The registration of the said domain names at issue in this proceeding was done in bad faith and not for a legitimate purpose, rather Respondentís intent is to harass the Complainant for its attempts to enforce its trademark rights and to tarnish the <GUINNESS> trademark.

Given the widespread use and notoriety of the Complainantís <GUINNESS> trademark, the Complainant submits that the Respondent must have been aware that in registering the said domain names he was misappropriating the valuable intellectual property of the Complainant as owner of the <GUINNESS> trademark.

The Complainant argues that if the Respondent were to use the said domain names in connection with active www sites, it is likely that such use would disrupt the Complainantís legitimate business and divert members of the public from the Complainantís www sites. It is further argued by the Complainant that if the Respondent were to use said domain names in connection with active www sites, consumers searching the Internet for the term <GUINNESS> would likely discover any such site established by the Respondent. The Complainant further submits that it would be likely that such consumers would choose to visit the such sites established by the Respondent, if only to satisfy their curiosity as to the content of such sites. Respondent would thus divert potential consumers of Complainant to his www sites by the use of said domain names. The Complainant submits that there is authority that such diversion constitutes a basis for a finding of bad faith under the Policy.

The Complainant submits that the Respondent is a wholesaler of Internet domain names (defined as someone who acquires multiple domain names with the intent to profit from them). The Respondent has registered approximately 3000 domain names, approximately 1400 of which are registered with the Registrar. In support of this statement, the Complainant has submitted a print-out, running to thirty one pages, of the results of a search which the Complainant caused to be carried out on the Registrarís WHOIS database for domain names with NIC handles allegedly associated with the Respondent.

The Complainant submits that it would be unrealistic to assume, given the approximately 3000 domain name registrations allegedly held by the Respondent (either individually or by entities such as Cupcake City, Cupcake Shows, Cupcakes, Cupcake Party, Cupcake-Patrols, Cupcake Movies, and Cupcake-Show, all of which are controlled by Respondent), that the Respondent could have intended to use all of those domain name registrations in good faith. The Complainant points out that the Respondent is no stranger to ICANN administrative proceedings and has been found on numerous occasions to have been acting in bad faith.

The Complainant submits that there have been at least five ICANN decisions against the Respondent in which it has been found that he registered and used domain names that are identical or confusingly similar to famous trademarks in bad faith and without a legitimate business purpose viz. Hewlett-Packard Company v. Cupcake City, NAF Case No. FA0002000093562; Encyclopedia Britannica, Inc. v. John Zuccarini et al., WIPO Case No. D2000-0330; Hewlett-Packard Company v. John Zuccarini, NAF Case No. FA00040000994454; Bama Rags, Inc. v. John Zuccarini d/b/a Cupcake Confidential, NAF Case No. 0003000094380 and Bama Rags, Inc. v. John Zuccarini, NAF Case No. 0003000094381.

In addition, the Complainant submits that a federal court has issued a preliminary injunction against the Respondent in a suit brought against him under the Anticybersquatting Consumer Protection Act, 15 U.S.C.A. ß 1125(d). See Shields v. Zuccarini, individually and t/a Cupcake City, 54 U.S.P.Q. 2d 1166, 89 F. Supp. 2d 634 (E.D. Pa. 2000). The Complainant submits that the said decision should be deemed persuasive in this case.

The Complainant submits that the Shields case is analogous to the facts at hand in that the Respondent changed the content of his www sites from commercial uses to purported "protest sites" after being served with a complaint by the owner of the trademark that he was infringing. The Court found that "the vast majority of Zuccariniís many websites are not political fora but are merely vehicles for him to make money. . . .It strains credulity to believe that he uses 99.9% of his domain names for profit but reserves his Joe Cartoon domains for fair and lawful political speech." Id. at 640 (emphasis added by the Complainant in its submission). The Complainant submits that it is relevant that in Shields, the Respondent admitted that he "put up the protest pages . . . just hours after being served with [the plaintiffís] complaint." Id. at 640 n.10.

The Complainant further submitted that in Shields, the Court granted a preliminary injunction against the Respondent and found that he registers confusingly similar domain names with a bad faith intent to profit from other entitiesí trademarks. The Court found that the Respondent was a wholesaler of Internet domain names (defined as someone who acquires multiple domain names with the intent to profit from them), who owns approximately 3000 domain names, and that many of his sites featured advertisements for other sites and credit card companies where "visitors were trapped or Ďmousetrappedí in the sites, unable to exit without clicking on a succession of ads. Zuccarini received between ten and twenty-five cents from the advertisers for every click." Id. at 635, 641. The Respondentís "click-based revenue now approaches $1 million per year." Id. at 640 n.7. In addition, the Complainant states that the Court found that the Respondentís business "depends upon his parasitic use of othersí names" and that the Respondent "admitted that he registered [the domain names] because they are confusingly similar to othersí famous marks or personal names -- and thus are likely misspellings of those names -- in an effort to divert Internet traffic to his sites." Id. at 639-640. The Court further noted that "Zuccarini admits that he is literally in the business of profiting on the publicís confusion" and that the Respondent testified before the Court that he "was amazed to learn Ďpeople mistype [sought domain names] as often as they doí and thus variants on actual spellings of likely search names would result in many unintended visitors to Zuccariniís sites." Id. at 639, 640 n. 7.

The Complainant further submits that more recently, the Plaintiff in Shields moved for and was awarded statutory damages and attorneyís fees against the Respondent in Shields v. Zuccarini, 2000 WL 1053884 (E.D. Pa. July 18, 2000). The Court noted that "since our entry of the preliminary injunction, Zuccarini has registered hundreds of misspellings of the names of celebrities . . . . He has also registered variations on Survivor, Big Brother, Mission: Impossible, L.L. Bean and even the Pillsbury Doughboy. Clearly, he has not gotten the crystalline message in our March 22 Opinion and June 5 Order." Id. at n.2. The Complainant submits that the Court awarded the Plaintiff statutory damages of $10,000 per infringing domain name and, based upon the "egregiousness of Zuccariniís conduct and his complete lack of contrition" the Court found that the case was "exceptional" and therefore found the Plaintiff entitled to an award of counsel fees. Id. at 1-2. The Court noted that on June 5, 2000, it granted Plaintiffís (unopposed) motion for summary judgment, holding that Zuccarini had registered the five domain names at issue "willfully, in bad faith, and in violation of the ACPA . . . ." Id. at 1.

The Complainant submits that the Administrative Panel would be entitled, under the circumstances, to draw the same inferences from Respondentís registration of a domain name that features Complainantís famous trademark, as that drawn by the Administrative Panel in Hewlett-Packard Company v. Cupcake City (NAF Case No. FA0002000093562).

The Complainant submits that the recent decision in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 should be deemed persuasive authority as the facts in that case were similar to the facts in the present Administrative Proceedings. In that case, the Respondent had incorporated the word "sucks" in domain names which were, in the absence of that word, confusingly similar to Complainantís mark.

Therefore, upon consideration of all the facts and circumstances, the Complainant submits that the domain names in issue were registered and are being used in bad faith.

B. Respondent

The Respondent did not file any Response.

 

6. Discussion and Findings

Preliminary Issue

In the view of this Administrative Panel, the Complainant has established that the Respondent is the regisrant of the said domain names and that he has registered same under a business name or alias.

Substantive Issues

Paragraph 4(a) of the Policy places on the Complainant the onus of proving in respect of each of the domain names in dispute that:-

(i) the said domain name in dispute 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 in respect of the said domain name; and

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

In order to succeed in its application, the Complainant is obliged to satisfy each of the three elements in the test.

As to the first element of the test in paragraph 4(a)(i) of the Policy, this Administrative Panel has considered the Complainant's submissions that the said domain names in issue are virtually identical to or confusingly similar to the Complainant's U.S. Trademark Nos. 1,057,882; 321,014; 1,561,254; 861,769; 1,969,268; and 872,710 (as well as all other trademark registrations owned by Complainant that include or incorporate the term <GUINNESS>) and to the trademark <GUINNESS> in which the Complainant submits it has common law trademark rights.

Since the said domain names and the said trademarks are not identical, this Administrative Panel is required to consider whether the Complainant has established that they, or any of them are confusingly similar.

There remains many questions to be decided in the developing jurisprudence as to the appropriate test that should be applied in deciding the issue of confusing similarity under the Policy. For example in the decision of the administrative panel in Cabela's Incorporated v. Cupcake Patrol NAF FA95080 of 24 July 2000 in directing a transfer of the domain name < cabelassucks.com>, the administrative panel summarised the issue of confusing similarity in the following terms:-

"Courts and other UDRP Panels have recognized that the intentional registration of a domain name while knowing that the second-level domain contains anotherís valuable trademark weighs in favor of a likelihood of confusion. See Minnesota Min. and Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1235-1236 (N.D.Ill. 1996).

Courts and UDRP Panels have also addressed the issue of appending the term "-sucks" to anotherís trademark. See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000); Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998); Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000). The Panel does not infer that "-sucks" domain names are immune from scrutiny as being confusingly similar to trademarks to which they are appended. Each case must be considered in light of the facts presented. The Panel in Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico identified that the confusingly similar test may be held to a different standard when used with Internet search engines. See Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000).

By using Complainant's marks in its domain names, Respondent makes it likely that Internet users entering "CabelaŪs" into a search engine will find "CABELASSUCKS.COM" in addition to the Complainant's site <cabelas.com>. Respondent's domain name is sufficiently similar to Complainant's marks that the search engine results will confusingly list the Respondent's domain name when searching for Complainant's mark. See id.

The Panel concludes that the Respondent's domain name is confusingly similar to the Complainant's marks."

A similar approach had been taken by the adminisrative panelist in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., (WIPO Case No. D2000-0047, Mar. 24, 2000) where it was proposed that "[w]hen a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar". This formula was also applied in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale (WIPO Case No. D2000-0662, July 14, 2000).

Having considered the caselaw referred to by the Complainant and earlier decisions of administrative panels in ICANN proceedings, this Administrative Panel can see the merit of such a test, since a search of the www against the trademark in such circumstances would inevitably result in the respondent's domain name being generated, if it was being used as an address for an active www site. However in the view of this Administrative Panel, such a test is not sufficient in all circumstances, and particularly it is not sufficient to provide a satisfactory resolution to the question of confusing similarity in cases such as the present.

In the absence of any Response from the Respondent, this Administrative Panel accepts that in the present state of development of the jurisprudence in this area, in cases where the administrative panel is being guided by the principles developing in the laws of the USA, the appropriate test to apply is the multi-factor test set forth in the decision of the United States Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). In doing so, this Administrative Panel is conscious that this test may not be entirely suited to the determination of these issues as can be seen from the difficulties experienced by this Administrative Panel in its application (infra). Nonetheless it is the test that has been applied in a number of cases where there has been a "-sucks" element. Furthermore, in the present case the Complainant has submitted that this is the appropriate test to apply and the Respondent has made no submissions on the point. In the circumstances, this Administrative Panel with some reservations, accepts that this is the appropriate test to apply.

The multifactor test applied in Sleekcraft was described by the administrative panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 in the following terms:

"The question whether a domain name and a trademark are confusingly similar involves the application of a multifactored test exemplified in the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The Sleekcraft factors are directed to whether there is a "likelihood of confusion" between two marks. While developed in the context of comparing two trademarks, the Sleekcraft factors have more recently been employed by the federal courts to compare domain names to trademarks, and domain names to domain names. The Sleekcraft factors were, for example, employed by the federal district court in Bally Total Fitness discussed infra. The Sleekcraft factors were relied upon by the Court of Appeals for the Ninth Circuit in Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1053-61 (9th Cir. 1999).

In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated eight factors to be weighed on the question of likelihood of confusion. These are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines."

In applying the Sleekcraft test by comparing each domain name with each of the trademarks in issue in these proceedings this Administrative Panel concludes as follows:

(1) As regards the strength of the mark: without doubt, the Complainant is the owner of a very strong and famous trademark viz <GUINNESS>.

(2) As to proximity of the goods: this point illustrates the difficulty of slavishly applying a test developed in the context of trademark law to these disputes. The Complainant is a manufacturer and merchant of beers in trademark terms whereas the Respondent, on the evidence before this Administrative Panel is a wholesaler of domain names. However given the history of the relationship between these parties and the fact that the word "beer" is mentioned in a number of the domain name registrations in issue, this Administrative Panel is satisfied that the said domain names directly refer to the Complainantís goods.

(3) As to similarity of the marks: In comparing the marks for similarity, this Administrative Panel has used the formula suggested by the Complainant, and compared each in their entireties, as to appearance, sound, connotation and commercial impression. In the absence of any submissions by the Respondent, this Administrative Panel accepts that this is the appropriate approach to take. In applying this formula, this Adminsitrative Panel has compared each of the said domain names with each of the Complainantís trademarks and accepts that insofar as each of them include the word "guinness" as the only or first word in the sequence of words, there is certainly a degree of similarity in each case.

(4) As to evidence of actual confusion: the Complainant has not submitted any evidence of confusion, however it is unrealistic to require such evidence, especially in cases such as these where the domain names in issue have not been used as addresses for active www sites.

(5) With regard to the marketing channels used: this issue also illustrates the distinction between trademarks and domain names. This Administrative Panel accepts that a search via a www browser against the Complainant's trademark <GUINNESS> will probably generate the domain names in dispute in the list of sites.

(6) As to the type of goods and the degree of care likely to be exercised by the purchaser: What does this mean in the context of a domain name dispute such as the present Administrative Proceeding?

The type of goods which are sold by the Complainant for which it has registered trademarks are alcoholic beverages.

If the Administrative Panel is required to consider in the alternative or in addition, the fact that domain names are essentially addresses for www sites, the question should be posed: who is the purchaser in this context? Is this not the same as asking in the context of the paragraph 4(a)(i) of the Policy, who is the person likely to be confused? The Policy does not assist the Complainant or the Administrative Panel by stating whether the persons in contemplation in the test in paragraph 4(a)(i) are Internet users in general, the "reasonable person", the "reasonable person" using the Internet or some other class of persons. It is hardly likely however that the Policy would be restricted to English speaking persons using the Internet, so there must be some wider group than those who would immediately recognise that the addition of the word "-sucks" to a trademark in which a complainant has rights, would mean that the address is plainly dissociated from that complainant.

The fact that each of the said domain names in issue in these proceedings constitute an abusive, insulting or possibly even defamatory statement would in the view of this Administrative Panel be sufficient to alert most English speaking users of the Internet that the domain name is not the address of a www site associated with the Complainant. This was accepted by the administrative panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico WIPO case D2000-0477, in a similar case, where it was stated:

"Internet users with search engine results listing Respondentís domains are likely to be puzzled or surprised by the coupling of Complainantís mark with the pejorative verb "sucks". Such users, including potential customers of Complainant, are not likely to conclude that Complainant is the sponsor of the identified websites."

In that case however the administrative panel went on to consider the next element of the Sleekcraft test and concluded that:

"it is likely (given the relative ease by which websites can be entered) that such users will choose to visit the sites, if only to satisfy their curiosity. Respondent will have accomplished his objective of diverting potential customers of Complainant to his websites by the use of domain names that are similar to Complainantís trademark."

As the Internet extends far beyond the Anglophone world, a more difficult question arises as to whether non-English speaking users of the Internet would be confused into believing that such a site is owned and/or controlled by the Complainant. Because the word "-sucks" is a slang word with which all English speakers may not be familiar, this Administrative Panel concludes that there may well be circumstances where Internet users are not aware of the abusive connotations of the word and consequently associate the domain name with the owner of the trademark.

The administrative panel in Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I.T., Purge I.T. Ltd (WIPO Case D2000-0583, June 28, 2000) concerning the domain name <directlinesucks.com> stated the position in the following terms:-

"Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainants' name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com))."

The same panelist came to similar conclusions in Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd, D2000-0584 June 28, 2000 in which the domain name in issue was <dixonssucks.com>, in Freeserve PLC v. Purge I.T. and Purge I.T. Ltd, D2000-0585 June 29, 2000 in which the domain name in issue was <freeservesucks.com> and in National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd D2000-0636 July 4, 2000, in which the domain name in issue was <natwestsucks.com>

(7) The Defendant's intent in selecting the mark: This Administrative Panel accepts that on the evidence submitted by the Complainant, the Respondent lacked any bona fides in selecting the Respondentís mark to incorporate same into these domain names;

(8) As to the likelihood of expansion of the product lines: There was no evidence of any liklihood of expansion of product lines.

In considering each element of the test, it is clear to this Administrative Panel that, even if it is agreed that Sleekcraft is the appropriate test to apply where the administrative panel is guided by the laws of the USA, it is obvious that there remains many areas of doubt as to how the various elements of the test can be transposed in its application to disputes involving a comparison of domain names and trademarks.

The Complainant has argued that there is a clear similarity between the Complainant's <GUINNESS> mark and each of the said domain names in their entireties as to appearance, sound, connotation and commercial impression. The first word in each of the said domain names is <GUINNESS> which is identical to Complainantís <GUINNESS> mark. It is accepted that the Respondent took the Complainantís famous <GUINNESS> trademark and tacked on other words, such as "beer," "really," and "sucks" to form the said domain names.

The legal principles applicable to this element of the test in paragraph 4(a) remain unclear and the matter deserves debate. Many questions remain open. For example should an administrative panel accept the argument proposed by the administrative panel in Wal-Mart Stores Inc. v. Richard MacLeod d/b/a For Sale WIPO Case D2000-0662 that the phrase "identical or confusingly similar" is greater than the sum of its parts? Or would this be an extension of the test beyond that intended? It is inappropriate to engage in this debate in undefended proceedings such as the present.

Since these are undefended proceedings and in the absence of any Response from the Respondent this Administrative Panel is satisfied that the Complainant has made out a prima facie case that on balance, there is a likelihood of confusion between each of the said domain names and the trademarks in which the Complainant has rights. Although this Administrative Panel is conscious that there are strong arguments to the contrary, in the circumstances of this particular case, the Complainant is therefore entitled to the benefit of the decision on this issue. This Administrative Panel therefore decides that the Complainant has established a prima facie case that each said domain name in dispute is confusingly similar to a trademark in which the Complainant has rights.

As to the Respondent's rights or legitimate interest in the said domain names. This Administrative Panel accepts that the Complainant's <GUINNESS> mark is famous. The Complainant has not licensed or otherwise permitted the Respondent to use the <GUINNESS> trademark, or any other trademark incorporating the <GUINNESS> mark. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the <GUINNESS> mark.

The Complainant has further made out a prima facie case that the Respondent is not making a legitimate non-commercial or fair use of the said domain names and that the Respondent registered the said domain names because he was angry with Complainant for filing an ICANN complaint seeking the transfer of the said <guinnes.com> domain name.

The Complainant has also alleged that the Respondent has not ever been commonly known by the domain names at issue, or by the term <GUINNESS> and in the absence of any denial by the Respondent, this Administrative Panel accepts that the Complainant has made out a prima facie case that it is so.

There is no evidence before this Administrative Panel that the Respondent intends to use the said domain names as the addresses or links to any sites which could be described as "complaint sites". For this reason the issues canvassed in any of the decisions relating to free speech are not relevant in this case.

In the circumstances, this Administrative Panel is satisfied that Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the said domain names or any of them.

As to the Complainant's submissions that the domain names in issue were registered and are being used in bad faith by the Respondent, this Administrative Panel accepts that the said domain names were registered by the Respondent for retaliatory purposes in direct response to the Complainant initiating the above mentioned administrative proceeding against the Respondent regarding the <guinnes.com> domain name.

The Complainant has submitted a print-out of a www page which the Complainant alleges was posted by the Respondent on which there is a statement by the Respondent that he registered the said domain names at issue in this proceeding because he was angered by Complainantís attempt to take the domain name <guinnes.com> away from him. This Administrative Panel accepts that the Complainant has made out a prima facie case that the Respondent registered said domain names with the intention of harassing the Complainant for its attempts to enforce its trademark rights and to tarnish the <GUINNESS> trademark.

Furthermore this Administrative Panel accepts the Complainant's submissions that if the Respondent were to establish www sites at the said domain name addresses, it is likely that such use would disrupt Complainantís legitimate business and divert members of the public from Complainantís www sites.

This Administrative Panel also accepts that the Complainant has established a prima facie case that the Respondent is a wholesaler of Internet domain names (defined as someone who acquires multiple domain names with the intent to profit from them). The Respondent has registered approximately 3000 domain names for this purpose. This Administrative Panel does not however accept the Complainant's submission that it would be unrealistic to assume, given the large number domain name registrations held by the Respondent that the Respondent could have intended to use all of those domain name registrations in good faith. Ownership of a large number of domain names should not in itself give rise to any inference of mala fides.

The Complainant has stated that the Respondent is no stranger to ICANN administrative proceedings and that there have been at least five ICANN decisions against the Respondent in which it has been found that he registered and used domain names that are identical or confusingly similar to famous trademarks in bad faith and without a legitimate business purpose. The Complainant has further referred to court proceedings in which the Respondent has been a party. This Administrative Panel is not required to take any inference from any such findings relating to other domain names and does not do so.

On balance, this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has registered and is using the said domain names primarily to disrupt the Complainantís legitimate business and divert members of the public from Complainantís www sites and in the circumstances and in the absence of any Response from the Respondent, this is sufficient to satisfy this Administrative Panel that the Respondent has registered each of the said domain names and is using each of said domain names in bad faith.

 

  1. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain names <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>; and <guinnessbeersucks.com> which are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of said domain names or any of them and that the Respondent has registered and is using said domain names in bad faith.

Accordingly, this Administrative Panel decides that said domain names <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>; and <guinnessbeersucks.com> should be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: October 22, 2000