WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo
Case No. D2001-0020
1. The Parties
The Complainant is Arthur Guinness Son & Co. (Dublin) Ltd, of St James Gate Brewery, Dublin 8, Ireland.
Complainant is represented by SJ Berwin & Co., 222 Gray's Inn Rd., London WC1X 8XF, United Kingdom
The Respondent is Steel Vertigogo of Tverskaya St. 1-34 Moscow RV 14007, Russia.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: " guinessbeer.com".
The Registrar with which the domain name is currently registered is Network Solutions, Inc. of 505 Huntmar Park Drive Herndon, VA 20170, USA.
3. Procedural History
3.1 The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on January 4 and 5, 2001, respectively.
3.2 On January 12, 2001, the Registrar verified that:
(i) the domain name is registered with it;
(ii) the current registrant of the domain name is the Respondent;
(iii) the Policy applies to the domain name;
(iv) the domain name is currently in "active" status;
(v) Respondent's Administrative Contact and Billing Contact is Respondent.
(vi) Respondent's Technical contact is Domain Registration, Network Commerce Inc., 411 First Avenue South Suite 200, Seattle, WA 98104, USA.
3.3 On January 17, 2001, all formal requirements for the establishment of the Complaint having been checked by the Center were found to be in compliance with the Uniform Domain Name Dispute Resolution Policy ("the Policy), and WIPO’s Supplemental Rules ("the Rules").
3.4 On January 17, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows.
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact the Billing Contact and the Technical Contact;
(ii) by e-mail to the postmaster at the domain name.
3.5 The Administrative Proceeding commenced on January 17, 2001, and the Response was due on February 2, 2001. Due to an administrative error the transmission of the Complaint was incorrect. The error was corrected on January 31 and the time for response was extended to February 13, 2001.
3.6 No response was filed on February 14, so Notice of Respondent Default was dispatched to Respondent and the Technical Contact.
3.7 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on February 9, 2001.
4. Factual Background
4.1 Complainant is an Irish corporation with its principal place of business in Dublin, Ireland.
4.2 Complainant's name and trademark GUINNESS is one of the world's best known trademarks for beer, particularly black beer or stout. Complainant's history and the use and reputation of its trademark is summarized succinctly in paragraph 16.2 of the Complaint as follows:
"The Complainant began selling its GUINNESS brand products in Dublin, Ireland as early as January 1764, and the Complainant has exported beer products around the world since at least as early as 1769. Since then, 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."
4.3 Complainant is the proprietor of over 70 registered trademarks throughout the world which comprise the word GUINNESS or of which the word GUINNESS is the dominant particular. Complainant has two registered trademarks in Russia, number 23486 dated October 4, 1963 and 69506 dated August 19, 1981 (Complaint Annex D and E).
4.4 No information is available with respect to Respondent save for that which appears from communications between Respondent and Complainant referred to below.
4.5 Complainant asserts that it first discovered the registration of the domain name in July 2000 and on December 20, 2000, its Russian lawyers sent a letter of demand to Complainant (Complaint Annex G). On December 23 and 25, 2000, Respondent replied by e-mail offering to sell the domain name and in the December 25, 2000 message, stated that legal proceedings would be costly for Complainant and that it had experience with the Emergildo Zegna Group where they agreed to buy his domain name after spending $1,500 on lawyers (Complaint Annex H and I). Complainant responded stating that as a gesture of goodwill it would pay any genuine transfer costs and on December 30, 2000, Respondent replied "I no deal with you anymore. I am selling domain names, not giving them away."
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By its contract with the Registrar registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the 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 in the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
6. Parties' Contentions
6.1 Complainant contends that its trademark is a famous mark and that the domain name is substantially identical to Complainant's registered and common-law trademark.
6.2 Complainant contends that Respondent has no rights or legitimate interests in the domain name.
6.3 Complainant asserts that it has not licensed or otherwise permitted Respondent to use the domain name or the trademark and that Respondent can have no rights or legitimate interests in it. Complainant contends that having regard to the worldwide fame and notoriety of the trademark the domain name is not one which another trader would legitimately choose unless it sought to create an impression of association with Complainant or with its beers, or attract business from the Complainant, or misleadingly divert customers from Complainant to Respondent.
6.4 Complainant submits that the domain name was registered and is being used in bad faith.
6.5 Complainant again points to the worldwide reputation of the GUINNESS trademark and asserts that Respondent must have been aware that in registering the domain name he was misappropriating the valuable intellectual property of Complainant. Complainant further submits that the circumstances indicate that Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant or to a competitor. Complainant points to the correspondence referred to in paragraph 4.5 above. Complainant submits that having regard to the notoriety of the GUINNESS trademark use of the domain name would always give rise to an assumption of an association between Respondent and Complainant or its GUINNESS trademark.
6.6 Complainant refers to prior administrative panel decisions in its favour in Diageo PLC v. John Zuccarini-WIPO Case No. D2000-0996 and Diageo PLC v. John Zuccarini-WIPO Case NO. D2000-0541.
6.7 Respondent has filed no response and has made no attempt to rebut Complainant's prima facie showing.
7. The Panel's Findings
Identical or Confusingly Similar Trademarks
7.1 Complainant has established beyond doubt the notoriety and widespread registration of its GUINNESS trademarks. The domain name differs from the trademark only by the addition of the word "beer" and the spelling of the name with one "N" instead of two. Neither of these differences serve to negative the dominant impression created by the word GUINNESS. The Panel therefore finds that the domain name is confusingly similar to trademarks in which Complainant has rights.
Rights or Legitimate Interests
7.2 Having regard to the ancient lineage and widespread reputation of Complainant's trademarks Complainant has made a prima facie showing that Respondent cannot have legitimate rights or interests. Respondent has failed to rebut this showing. The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name.
Bad Faith Use and Registration
7.3 In the light of the finding in paragraph 7.2 it is unnecessary to consider whether Complainant has established bad faith use in registration. In any event however, were it necessary to do so the Panel would find for Complainant on this ground. The notoriety of Complainant's trademark is such that a prima facie presumption is raised that Respondent registered the trademark for the purpose of selling it to Complainant or to a competitor of Complainant or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant's mark. Though the domain name does not presently resolve to a website this is a case where the concept of passive use referred to in the Telstra-Case WIPO Case No. D2000-0003 is applicable.
8.1 The Panel decides and orders:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) The domain name has been registered and is being used in bad faith;
(iv) The domain name should be transferred to Complainant.
Dated: March 22, 2001,