WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arthur Guinness Son & Co. (Dublin) Limited v. Gisoo Cho
Case No. D2000-1731
1. The Parties
The Complainant in this administrative proceeding is Arthur Guinness Son & Co. (Dublin) Limited, a corporation having its principal place of business at St James’s Gate Brewery, Dublin 8, Ireland.
The Respondent in this Administrative Proceeding is Gisoo Cho, whose address is listed as Buyoung Apt 106-910, Oggedong 616-1, Gumi Kyongbuk, 730-380, Korea.
2. The Domain Names and Registrar
The disputed domain name is <guinnessnet.com>. The Registrar of this domain name is Network Solutions, Inc., of Herndon, Virginia, United States of America.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules.
The Administrative Panel consisting of one member was appointed on January 10, 2001 by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on December 12, 2000 by email and on December 15, 2000 by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on December 18, 2000. On December 21, 2000, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On January 4, 2001 the Center received an email from the Complainant re: Suspension of Proceedings. The Center responded on January 4, 2001. The Respondent was notified that its Response would be due by January 11, 2001. The Respondent did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The Complainant is the proprietor of more than 70 registered trade-marks in various countries worldwide, for the mark "GUINNESS". The Complainant also is the registered proprietor or a large number of trade-marks that include the term "Guinness" as part of the trade mark, for example, Guinness Extra Stout.
The Complainant is the registered proprietor of a number of South Korean trade-mark registrations (the Respondent has a South Korean address) including the following: GUINNESS, 53736, Intl. Class 32, January 28, 1978; GUINNESS (word in Korean characters), 271355, Intl. Class 32, August 9, 1993.
The Complainant and its associated companies rely upon the notoriety of the GUINNESS trade-mark for beers. In addition to its registered trade, the Complainant says that it has common-law trade mark rights in and to the trade mark GUINNESS in South Korea and in many other countries.
The Complainant began selling its GUINNESS brand products in Dublin, Ireland as early as January 1764 has exported beer products around the world since at least as early as 1769. Through continuous sales, advertising and promotion, GUINNESS brand beers have become some of the world’s most famous and best-selling alcoholic beverages. The GUINNESS branded product is brewed in fifty countries and sold in one hundred and fifty countries. Approximately ten million glasses of GUINNESS brand products are purchased each day. Beer sold under the mark GUINNESS is heavily promoted and advertised throughout the world, and is the world’s market leader in the "black beer" or stout sector having approximately 80% of the world-wide market in that sector.
The GUINNESS Group has a global presence on the internet through its website http://www.guinness.com. This site is accessible from anywhere in the world and contains extensive information about the GUINNESS brand, promotions, games and other material.
The Complainant has not licensed or otherwise permitted the Respondent to use the GUINNESS trade mark or any other trade mark incorporating the GUINNESS mark and has not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the GUINNESS mark.
On September 15, 2000, the Complainant’s South Korean lawyers wrote to the Respondent, demanding the transfer of the domain name. The Respondent replied by e-mail on September 20, 2000 stating that subject domain name "…has nothing to do with the world-famous liquor manufacturer, Guinness". He apologised "…for causing confusion to consumers by using the well-known source identifier". In addition the Respondent stated that he "…only registered the domain name and did not even think about establishing a web site". In the e-mail the Respondent also offered to transfer the subject domain name, but this was linked to a request for compensation.
On October 4, 2000, the Complainant’s lawyers replied stating that the Complainant was prepared to pay the direct out-of-pocket expenses of the transfer, but no other compensation. Initially the Respondent was receptive to this idea.
In a subsequent telephone conversation with a representative of the Complainant’s lawyers on October 5, 2000, the Respondent indicated that he had changed his mind and demanded around US$ 1,800 for the transfer.
In two earlier previous ICANN cases, Administrative Panels ordered the transfer to the Complainant of third party domain names containing the trade mark GUINNESS or typographical variations of the GUINNESS trade mark.
5. Parties’ Contentions
The Complainant relies on its registered trade-marks and common law rights and says that the subject domain name is identical to or confusingly similar to its rights. It notes that the Respondent has admitted that he has nothing to do with the Complainant and contends that the Respondent has no legitimate interest in the subject domain name.
As to bad faith, the Complainant relies on the attempted sale of the subject domain and the course of conduct of the Respondent.
The Respondent has taken no position in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has provided information that establishes that it has rights to the name and mark "Guinness". Decisions of other ICANN Administrative Panels which have found that the Complainant has the requisite right to maintain an ICANN proceeding are not binding on this panel and, of course, reflect the information provided to those Administrative Panels, but they are corroborative of the Complainant’s contentions in this proceeding.
The Respondent has admitted that the subject domain name could cause "…confusion to consumers by using the well-known source identifier". Clearly, this is so.
Arguably, the subject domain name is essentially identical to the Complainant’s name and mark. It differs only by the addition of the letters "net" and the concluding ".com".
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The Respondent admits that it does not intend to make use of the subject domain name. It offered to sell it and initially expressed contrition at registering. It has offered no explanation for the registration, which would support any legitimate interest in the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
There is no direct evidence that the offer to sell in the range of US $1,800 exceeds the Respondent’s out-of-pocket expenses, but an inference can be drawn that it does so. The Complainant was prepared to compensate the Respondent for his costs. His proposal was not responsive to that offer. He clearly wanted more.
The Respondent’s clear recognition that the subject domain name is likely to confuse the public also is some evidence of bad faith.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and the finding, which it has made, the Administrative Panel concludes that the Complainant has established its case. The Complainant asks that the subject domain name be transferred to it.
The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: February 1, 2001