WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arthur Guinness Son & Co. (Dublin) Limited v. Kevin Graham / Kevin Paul Wayne

Case No. D2000-1699

 

1. The Parties

The Complainant is Arthur Guinness Son & Co. (Dublin) Limited of St. Jamesís Gate Brewery, Dublin 8, Ireland, represented by Mr. Dan Enraght-Moony of SJ Berwin & Co. of London, United Kingdom. The Respondent is Kevin Graham / Kevin Paul Wayne, of 5 Foxford, Lucan, Dublin, Ireland.

 

2. The Domain Names and Registrar

The disputed domain name is <guinness-ireland.com> and the Registrar is Register.com of New York, NY, United States of America.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint, which named Kevin Paul Wayne as the Respondent, was received by the Center by email on December 5, 2000, and in hard copy on December 7, 2000. The Center acknowledged receipt on December 7, 2000 and that day sought registration details from the Registrar. On December 13, the Registrar stated that Kevin Graham is the registrant, the Policy applies to the domain name and that its status is "active."

On December 13, 2000, the Center asked the Complainant to amend the Complaint so far as concerned the name of the Respondent. On December 14, 2000 an amended Complaint was filed by email and on December 15, 2000 in hardcopy, naming as Respondent "Kevin Graham / Kevin Paul Wayne". On December 18, 2000 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On December 19, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly December 19, 2000. The last day specified in the notice for a response was January 7, 2001. On January 9, 2001 the Center notified the Respondent that he was in default.

On January 16, 2001, the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 29, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; no Response was filed and the single-member administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

In Dublin, Ireland, the Complainant (a subsidiary of Diageo plc) has brewed and sold beer under the name and trademark GUINNESS since 1764. Under that name it has exported beer around the world since 1769 and its beer is now brewed in 50 countries and sold in 150. Approximately 10 million glasses are purchased daily. GUINNESS beer has 80% of the "black beer" or stout sector of the world market. It is heavily promoted and advertised.

The trademark GUINNESS has been registered in Ireland in International Class 32 since 1931. It is registered in many other countries.

The Complainant and other members of the "Guinness Group" operate a Website at http://www.guinness.com, accessible from anywhere in the world and containing information about the GUINNESS brand.

The Respondent, having an address in Dublin, where the Complainantís brewing activities originated, registered the domain name <guinness-ireland.com>. The precise date of the Respondentís registration is unclear. The Registrarís record was created on February 8, 2000 but:-

"The date of a domain registration can refer to the beginning of an initial registration period, or it can refer to the date that a prior registration was transferred to a new owner, or it can indicate the date that a prior registration was transferred from one registrar to another by the same owner." K2r Produkte AG v. Jeremie Trigano (WIPO case D2000-0622)."

By February 9, 2000 the disputed domain name was being offered for sale by auction by Kevin Paul Wayne on "Irelandís No.1 on-line auction" site, <ebid.ie>, where a starting bid of £300 was sought and the "item" was described thus:

"Imagine the click throughs you would get with this address. www.guinness-ireland is for sale to the highest bidder".

On 9 February, 2000, the Complainantís representative wrote to the Respondent objecting to his use and offering for sale of the disputed domain name and requesting that he transfer the domain name registration to the Complainant.

The Respondent replied by e-mail on February 14, 2000 confirming that the domain name had been taken off the <ebid.ie> site and that he was in the process of complying with the remaining terms of the letter.

The domain name remains registered in the name of the Respondent.

 

5. Partiesí Contentions

A. Complainant

Identity of the Respondent

Kevin Graham and Kevin Paul Wayne should be considered as one and the same since both names appear as Registrant in a Register.com WHOIS database search.

Rights

The Complainant has common law as well as registered trademark rights in the name GUINNESS, which is famous.

Identity and confusing similarity

The disputed domain name contains a word which is confusingly similar to the common law and Registered trademark GUINNESS.

Illegitimacy

The Complainant has not authorized the Respondent to use the trademark GUINNESS nor to register nor use a domain name incorporating that mark.

Given the worldwide fame and notoriety of the mark GUINNESS, no trader would choose the domain name <guinness-ireland.com> unless to create a false impression of association with the Complainant or its beers; to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent.

Bad Faith

By virtue of the widespread use and reputation of the GUINNESS trademark, members of the public in Ireland and around the world would mistakenly believe that the registrant of the <guinness-ireland.com> domain name was the Complainant or was in some way associated with the Complainant. Given the widespread use and notoriety of the famous GUINNESS mark, the Respondent must have been aware that in registering the domain name he was misappropriating the valuable intellectual property of the owner of the GUINNESS trademark.

The Respondentís registration of the <guinness-ireland.com> domain name has also prevented the Complainant from registering a domain name which corresponds to the Complainantís trademarks contrary to paragraph 4(b)(ii) of the Policy.

The domain name was registered in circumstances which indicate that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant owner of the relevant trade marks in breach of paragraph 4(b)(i) of the Policy.

In support of its allegations of bad faith the Complainant relies upon the correspondence of February 2000 and the fact that the Respondent has not transferred the domain name as he agreed.

The Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of GUINNESS is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the GUINNESS trade mark.

Therefore, having regard to all the facts and circumstances, the domain name in issue was registered and is being used in bad faith.

In two earlier successful complaints, D2000-0541 and D2000-0996, the Panel ordered the transfer of third party domain names containing the trade mark GUINNESS or typographical variations of the GUINNESS trade mark. These cases confirm the legitimacy of the Complainantís claim to have rights in the Guinness name and that the registration of Guinness (or related) domain names by third parties unconnected with the Complainant amounts to bad faith on the part of the Registrant.

B. Respondent

No response was filed.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered and is being used in bad faith.

Identity of the Respondent

Despite the information from the Registrar that the domain name registrant is Kevin Graham, the Registrarís own WHOIS database shows Kevin Paul Wayne / Kevin Graham under both "Organization" and "Administrative Contact". Accordingly, the panel accepts the Complainantís submission that, for the purposes of this complaint, both should be treated as one.

Failure to file a Response

Numerous cases under the Policy have adopted and applied the principle that a Respondentís failure to dispute the allegations of the Complainant permits the inferences that the Complainantís allegations are true and that the respondent knows its Website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).

A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (Case D2000-0441):

"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."

Rights

There is no dispute that the Complainant has rights in the trademark GUINNESS.

Identity or confusing similarity

It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO case D2000-0102), holding disputed domain names confusingly similar to the trademark of the complainant, despite the addition of generic words.

In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainantís mark and the mark being strong and immediately recognizable.

The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491):

"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".

This applies equally where a domain name is composed in whole or in part of a trade mark.

Because the Complainantís trademark is so well known, Internet users finding <guinness-ireland.com> on search engines or elsewhere are likely to be misled into thinking the Complainant is the registrant or is otherwise associated with the disputed domain name or, if not misled, at least confused into wondering whether this is so.

The panel finds that the disputed domain name <guinness-ireland.com> is confusingly similar to the Complainantís trademark GUINNESS. The Complainant has established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrantís rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.

The Complainant has not authorized the Respondent to use the GUINNESS name and mark nor to include that mark in any domain name.

The Respondent has not asserted that he is commonly known by the disputed domain name and has offered no explanation of his choice of that name. Significantly, the Respondent has not asserted that he was unaware of the Complainantís mark when he registered the disputed domain name. The Respondent has not challenged the Complainantís assertions. When the Respondent was challenged on February 9, 2000, he agreed to transfer the domain name to the Complainant and did not then seek to put forward any explanation for his registration of the domain name.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (NAF case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (NAF case FA94970).

The panel finds that the Respondent, from Dublin, cannot have been unaware of the fame of the Complainantís mark when he chose to register the disputed domain name. The only use shown is the offering of the domain name for sale to the highest bidder in circumstances in which the Respondent must have been seeking to cash in on the value of the Complainantís goodwill in its trademark.

The Respondentís failure to respond to the Complaint leads inevitably to the finding, which the panel makes, that he has no rights or legitimate interest in the disputed domain name.

Bad faith

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037). The panel has found that the Respondent must have known of the famous mark GUINNESS when he registered the disputed domain name and accordingly the panel finds that name was registered in bad faith.

The offering of the disputed domain name for sale by auction and the failure of the Respondent to respond to the Complaint lead inevitably to the conclusion that the domain name was registered primarily for the purpose of selling the registration to the Complainant or to a class which included the Complainant, for more than the out-of-pocket costs of registering that domain name, within paragraph 4(b)(i) of the Policy.

This finding is evidence of both bad faith registration and bad faith use and the panel therefore finds the Complainant has proved this element.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name <guinness-ireland.com> to be transferred to the Complainant.

 


 

Alan L Limbury
Sole Panelist

Dated: January 23, 2001