WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bulmers Limited, Wm. Magner Limited v. Applepie Solutions Limited

Case No. D2005-1274

 

1. The Parties

The Complainants are Bulmers Limited and Wm. Magner Limited of Dublin, Ireland, represented by F.R. Kelly & Co., Ireland.

The Respondent is Applepie Solutions Limited of Galway, Ireland, represented by Keaveny Walsh & Co., Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <magners.com> is registered with Easyspace.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2005. On December 8, 2005, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain names at issue. On December 12, 2005, Easyspace transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2006. The Response was filed with the Center on December 30, 2005.

The Center appointed Adam Taylor as the Sole Panelist in this matter on January 13, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Preliminary Issues

The Complainant filed an additional unsolicited submission on January 24, 2006.

While the Rules do say that the Panel may request further submissions (paragraph 12 of the Rules), they make no provision for a party to file an additional submission without leave of the Panel. The principles which the Panel should apply in exercising such discretion have been considered in many cases under the Policy and Rules. See, eg, The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447.

The principles are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

Here, the additional submission consists of a detailed five page document with exhibits. The Complainant states in the opening paragraph that it wishes to make certain comments arising from the matters raised in Response but there is no suggestion, let alone explanation, of any exceptional circumstances justifying the additional submission. Instead the submission proceeds as if there was an automatic right of reply to the Response, which there is not. The Panel therefore declines to exercise its discretion to admit the additional submission.

 

5. Factual Background

The Second Complainant has been using the mark “Magners” for cider in the UK since October 1999, when it was launched in Northern Ireland as an export version of the Complainant’s brand in the Republic of Ireland: “Bulmers”. The launch involved large marketing events in Belfast and coverage in the Irish press.

Magners quickly established a substantial 6% market share of the “entire long alcohol drink” market in Northern Ireland and it was launched soon thereafter throughout Europe and in the US. Magners is now a leading cider brand in Europe and the US.

The First Complainant has registered trademarks many countries consisting of or comprising the word MAGNERS, including:

Community Registration No. 1411594 MAGNERS, December 6, 1999

Australian Registration No. 816500 MAGNERS, December 7, 1999

Canadian Registration No. 1038693 MAGNERS, December 7, 1999

German Registration No. 39955652 MAGNERS, September 9, 1999

New Zealand Registration No. 604383 MAGNERS, September 9, 1999

South African Registration No. 1999/22698 MAGNERS, December 8, 1999

All of these registrations are for cider and cider beverages.

The Respondent registered the disputed domain name on February 26, 2000.

On June 12, 2000, the Complainants sent cease and desist letters to the Respondent in relation to its registration of the disputed domain name and of another domain name: <magnersirishcider.com>.

The Respondent replied on June 28, 2000 claiming that the disputed domain name was registered for use “as a portal site and home page for the Magners”. The Respondent said that like other family and genealogy sites, the disputed domain name was used as an internet starting point by members of the Magner family, providing a gateway to “all things Magner” and that the site linked to sites related to the many Magners throughout the world. Magners would be able to purchase family paraphernalia through the site. The Respondent said it would consider posting a link to the Complainants’ own website if there was concern about Internet users visiting the Respondent’s websites by mistake.

The Respondent also asserted that, when researching “all things Magner” for the disputed domain name it was surprised to discover that <magnersirishcider.com> was available. Although unsure whether the domain would be used, the Respondent registered it “to prevent it being hijacked by ‘cybersquatters’”. The Respondent offered to transfer this domain name for “a small professional fee” to cover its time and services as well as outlays of $100 on the domain registration and transfer.

On August 21, 2000, the Complainants replied saying that they noted the reasons given for registration of the disputed domain name but that there was no legitimate reason for registering <magnersirishcider.com>. They offered to pay IR £200 for <magnersirishcider.com> or IR £1000 for both domain names.

On August 29, 2000, the Respondent agreed to sell <magnersirishcider.com> for £200 plus VAT but stated that its business plan did not include any plan to sell the disputed domain name.

In or about October 2000, the domain name <magnersirishcider.com> was transferred to the Complainants for £200 plus VAT.

As of November 4, 2001, there was a website at the disputed domain name headed “Welcome to Magner.com, Your online guide to all things Magner!” The site listed 29 links to diverse websites with information by or about people with the name “Magner” as well as to some websites relating to “Castlemagner”. The site also stated that Magner merchandise such as “quality clothing bearing the Magner emblem” would be coming soon. There was an invitation to join the “magnificent Magners mailing list” as well as a request for users to send in links to Magner resources. Printouts show that the website was unchanged as of February 9, 2003, June 2, 2004, and September 25, 2004.

On May 16, 2005 the Complainant offered the Respondent €1,500 for the disputed domain name.

There was a telephone call with the Complainants’ trademark attorneys on June 16, 2005, the contents of which are disputed – see the parties’ submissions below.

As of November 18, 2005, the website at the disputed domain name featured a holding page simply stating “Under Construction, please come back soon” plus a link entitled “Magners family, since time immemorial”. This link led to a page about Castlemagner Castle.

 

6. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Through extensive sales, advertising and marketing, the Complainant has acquired a very substantial reputation in its mark Magners.

The disputed domain name is identical and confusingly similar to the Complainant’s trademarks.

The use of the disputed domain name is an “instrument of fraud” for the purposes of passing off in accordance with the English decisions in British Telecommunications plc v. One in a Million Ltd, [1999] FSR 1, and Global Projects Management Ltd and another v Citigroup Inc and others (Park J, Chancery Division, October, 2005).

Rights or Legitimate Interests

There has been no evidence prior to notice of this dispute of any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It is sufficient that the Complainant make a prima facie case in order to shift the burden of proof to the Respondent.

There is no apparent link between the Respondent and the mark MAGNERS nor the surname ‘Magner”. The Respondent is not in any way connected or affiliated to the Complainant or authorised to carry out activities on behalf of the Complainant. The Respondent is not known through a website corresponding to the disputed domain name. The Respondent is using the link to the page about Castlemagner as a device to try to claim some entitlement to use the disputed domain name. The Respondent is not based in that area.

The Respondent’s original website was posted in 2001, after the Complainant wrote to the Respondent in 2000. There is no such surname as “Magners” and to use this in a domain name allegedly relevant to the surname “Magner” makes no sense. Little or no effort was made to select links of genuine interest to visitors looking for information on the name “Magner”. This webpage remained on the Internet without any updates or additions until it was replaced by the current “under construction” page. The purported plans to launch a web portal for “all things Magner” with merchandise bearing the name were not implemented. The webpage was posted in response to the Complainant’s approach to as a ploy to substantiate its claim.

There is no commercial advantage in setting up such website other than to sell to the Complainant or a competitor. The surname Magner is very rare.

No use of the mark MAGNERS by the Respondent has been established.

The Registrant is not commonly known by the disputed domain name or by the name “Magners” or even “Magner”. The name under which the Respondent trades is Applepie Solutions Limited.

Holding the disputed domain name for five years without genuine use is prima facie evidence of a lack of rights or legitimate interests. Using the domain name with only a holding page further illustrates the lack of rights or legitimate interests. An “under construction” notice means that for all practical purposes the website is not being used. The preceding webpage was effectively a holding page, being a single uninformative page which did not change while it was in existence. The Respondent only posted the previous webpage after the Complainant’s approach. This use, particularly in conjunction with the simultaneous registration of <magnersirishcider.com> is in bad faith and cannot establish rights or legitimate interests.

The business of the Respondent as described on its own website “www.aplpi.com” is “software development, project management, systems consulting and technology training”. None of these activities bear any relationship to the alleged plans for use of the disputed domain name <magners.com>.

The mere assertion by a Respondent that it had plans for future commercial use of a domain name is not sufficient to show rights or legitimate interests.

Further, the Complainant is entitled to take action for trademark infringement against use of identical or similar Marks for dissimilar goods or services (so long as reputation can be shown) in the EU.

Registered and Used in Bad Faith

The disputed domain name was registered primarily for the purpose of sale to the Complainant or to a competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs.

The Respondent acknowledged that both domain names were registered by it. In its response to the Complainant’s August 21, 2000 offer, the Respondent did not agree to transfer the disputed domain name but agreed to transfer <magnersirishcider.com>. However, the Respondent did not deny that it was willing to sell the disputed domain to the Complainant. This response of the Respondent was as an offer to sell the disputed domain name for more than IR£758, considerably in excess of the Respondent’s out-of-pocket expenses.

In May 2005, the Complainant became aware that the Respondent had not taken any action in respect of its alleged intentions, concluded that it had acted in bad faith and revived correspondence.

On May 16, 2005 the Complainant offered the Respondent €1,500 for the disputed domain name.

In a telephone call with the Complainants’ trademark attorneys on June 16, 2005, the Respondent declined to sell the disputed domain name for €1,500 previously offered by the Complainants and said that it had “received higher offers”. The attorneys then offered €3000 which the Respondent also refused. The Respondent declined to give any indication of the amount it would accept.

The Respondent’s comments implied a “bidding war” with other parties, putting pressure on the Complainant to increase its offer in case a competitor should secure the disputed domain name. The Respondent has been careful not to express willingness to sell the domain name or to name a price and has simply waited for the Complainant to increase its offer further before agreeing to sell. If the Respondent has not already demanded a sum in excess of its out of pocket costs, it will at some stage do so. It is bad faith even if the Respondent never tried to sell the disputed domain name to the Complainant as it nonetheless continuously exercises pressure over the Complainant.

It cannot be a coincidence that the Respondent registered <magnersirishcider.com> and the disputed domain name simultaneously, particularly given the Respondent’s launch its mark MAGNERS some five months beforehand. This is analogous to a registration following a merger announcement.

The Respondent intended in registering these domain names to elicit a lucrative offer from the Complainants for fear they would be put to damaging use. The Respondent did not address why it registered <magnersirishcider.com> allegedly in the interests of the Complainants when it had no connection with them. The Respondent’s claim that it did so to prevent hijacking by cybersquatters is implausible. If this was genuinely the Respondent’s intention, it would have approached the Complainant and offered to transfer it for a nominal amount. There is no conceivable non-infringing use to which the Respondent could put <magnersirishcider.com>.

If the Respondent’s alleged intentions were genuine, there were more obvious domain names available such as <magnerfamily.com> or <magner.name>.

The Respondent’s offer to post a link to the Complainants’ website acknowledged the substantial risk that persons looking for the Complainants’ site may happen upon the Respondent’s site. This factor would increase the value of the disputed domain name as regards sale to any third party.

By registering the disputed domain name, the Respondent is preventing the Complainants from reflecting their trademark in the corresponding domain name.

Registration of the disputed domain name and <magnersirishcider.com> which both include the Complainants’ trademarks constitutes a pattern of conduct.

The Respondent seeks to disrupt the Complainant’s business by attracting visitors looking for information about the Complainants.

There has been no unreasonable delay in the instigation of these proceedings. In any event, it is well accepted that laches and delay are not relevant to domain name complaints.

B. Respondent

Identical or Confusingly Similar

The Respondent admits that the disputed domain name is identical to a trademark in which the Complainants have rights.

Rights or Legitimate Interests

The domain name is the plural of the surname “Magner” which is relatively common in certain parts of Ireland (around parts of County Cork). It also exists in other countries, including the United States. It is legitimate for the Respondent or any other person to target a website at the Magners of the world.

In choosing a pre-existing surname name for its cider brand, the Complainants presumably wanted to attain certain qualities including a sense of Irishness, a sense of authenticity and a certain history. While the Complainants may well have rights capable of protection in connection with the sale of cider, use of the name to target Magners (i.e. persons of the surname “Magner”) is not an infringement of the Complainants’ rights.

Registered and Used in Bad Faith

The Respondent became interested in establishing a website aimed at the Magners of the world for a number of reasons. The surname “Magner” is relatively uncommon, meaning that the genealogy-based marketing opportunity is more meaningful. The surname exists in Ireland but also in many other European countries as well as amongst Americans of Irish descent, a good market for the sale of genealogically-based goods and services. The launch and growth of the “Magners Irish Cider” brand might be expected to cause people of this surname to become more aware of their genealogy and therefore to be more receptive to genealogy-based marketing.

The registration of the disputed domain name was inspired by the launch of the “Magners” cider brand. If as a result of the growth of this brand, there is an increase in awareness of the surname “Magner”, this creates genealogy-based marketing opportunities which can freely and openly be exploited by any party including the Respondent.

The passing off cases cited by the Complainant relate to marks or well known business names such as “British Telecommunications” or “Citigroup”. These cases concern novel and/or invented word or combination of words. However the Complainants’ mark is a pre-existing surname (albeit in the plural) and this cannot confer on the Complainants the exclusive right to use that surname, in singular or the plural.

The Respondent has no interest in being associated with the sale of cider or in damaging the cider brand. To the contrary, the prosperity of the “Magners” cider brand creates a business opportunity which the Respondent or others can legitimately exploit.

The Respondent decided to enter into such a business but received a very poor response to its initial website offering. It therefore decided to postpone a substantial business effort for a few years but has made no real progress due to other business priorities. This does not take from the legitimate use made (and to be made) by the Respondent of the disputed domain name.

The history of dealings between the parties contradicts the claim that the two domain names were registered to attract a lucrative offer. The registration of <magnersirishcider.com> and transfer to the Complainants for a nominal sum is inconsistent with a “cybersquatting” intent. It is consistent with the Respondent’s case that <magnersirishcider.com> was registered as a modest goodwill gesture. The charge for its transfer only covered out of pocket expenses. If the Respondent was “cybersquatting”, it would certainly have charged substantially more. This transaction in fact demonstrates good faith.

It is irrelevant that the Respondent did not register other domain names for its project. If it had, the Complainants would have alleged a cybersquatting pattern of conduct. The Respondent required only the disputed domain name.

The surname is concentrated in the South and West of Ireland. In any event, its relative rarity makes it attractive for genealogy based marketing – it is rare enough for its holders to want to know how many of their kin exist, but it still exists in sufficient number to create a market.

It is irrelevant that the Respondent is not known by the mark MAGNERS and has not otherwise used or registered it. The Complainants are well aware of the Respondent’s intended use of the disputed domain name. The Respondent does not plan to trade under the name; rather, it plans to target consumers who bear the name.

There is not a “mere assertion” by the Respondent of plans for future commercial use of the disputed domain name. There has in fact been a detailed website offering.

A refusal to sell is a refusal to sell. The Respondent has not refused to sell at a particular price, with the implicit suggestion that it might sell at a higher price. The Respondent is not interested in selling and has never sought to do so. The Respondent stated more than once that the domain name is not for sale.

The Respondent received several calls from the Complainants’ attorneys and each time it stated clearly that the domain name was not for sale. The Respondent does not recall the reference to “higher offers” but it was probably in the context of responding that it was not prepared to take either the offer made or higher offers, as the domain name was not for sale. The Complainants should have produced detailed notes of the conversations and not quoted selectively from them.

It is true that there is no conceivable non-infringing use to which the Respondent could have put <magnersirishcider.com>. This is, however, irrelevant as the Respondent never used that domain name but voluntarily transferred it for a sum equivalent out of pocket expenses. The facts do not support the Complainants’ theories about bad faith.

The Respondent has not sought to disrupt the business of the Complainants. The Complainants’ web presence is simply a promotional tool. Any person seeking the Complainants’ home page only needs to Google the words “Magners + Cider”. It is nonsense to suggest that the business of brewing and selling cider might in some way be disrupted by the Respondent.

 

7. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent rightly concedes that the disputed domain name is identical to a trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainants have not licensed or otherwise authorized the Respondent to use their trademark.

As to paragraph 4(c)(i) of the Policy, there is no evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before notice to the Respondent of the dispute. While the Respondent does claim that there has been a detailed website offering, not just a mere assertion of plans for future commercial use, the Respondent has not denied the Complainants’ claim that that offering postdated the Complainants’ initial cease and desist letter of June 12, 2000. All that there is in relation to the period before notice to the Respondent of the dispute is indeed a mere assertion of future commercial plans which is not sufficient for paragraph 4(c)(i).

Paragraph 4(c)(ii) of the Policy does not apply as the Respondent admits the Complainant’s assertion that it has not been commonly known by the disputed domain name.

Paragraph 4(c)(iii) of the Policy does not apply as the Respondent describes its website activities as a “business” and nowhere denies that it is out for commercial gain.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The first issue to consider is the purpose for which the Respondent registered the disputed domain name.

The gist of the Respondent’s case is that it registered the disputed domain name as a “genealogy-based marketing opportunity” aimed at persons with the surname “Magner”, who are to be found in Ireland, Europe and the United States. The Respondent says that the idea was in fact inspired by launch of the Complainants’ brand which might be expected to cause people of this surname to be more aware of their genealogy and therefore more receptive to such marketing.

The Respondent is no doubt right when it says that the Complainants’ trademark rights in relation to cider cannot be used to prevent the Respondent or anyone else from targeting a website at the Magners of the world. But the issue for the Panel is whether this Respondent did indeed genuinely register this domain name for this purpose. The Panel cannot of course know what was in the mind of the Respondent. And in this kind of proceeding, the Panel does not have the benefit of the tools available in litigation such as discovery of documents or testimony from witnesses. The Panel can only make its best assessment based on the evidence before it.

The Panel notes that the Respondent does not itself claim any connection with the surname “Magner” or any other involvement or experience in “genealogy based marketing”. Its business proposition does not seem a promising one given that the surname is admittedly quite rare (notwithstanding that the Respondent considers this an advantage).

The Respondent does not appear to have devoted much effort to developing the business. The initial website (described above under “Factual Background”), which was posted after the Complainants’ initial approach, appears to the Panel as an attempt to justify the holding of the disputed domain name rather than a serious try at genealogy marketing. The site remained unchanged for at least the period from November 2001 to September 2004 and later turned into an “under construction” page with a single link. The Respondent says that it shelved the project after a “very poor response” to its initial website offering but gives no details of exactly what response it received or had expected.

At about the time of registration of the disputed domain name, the Respondent also registered <magnersirishcider.com>. The Respondent admits that there was no conceivable non-infringing use for the latter registration but claims that it was a goodwill gesture “to prevent it being hijacked by ‘cybersquatters’”. In the Panel’s view, this is implausible, not least because there is no evidence that Respondent took any steps to inform the Complainants about its registration of <magnersirishcider.com> before being confronted by them.

The Respondent says that the fact that it only charged a sum equivalent to out of pocket expenses for <magnersirishcider.com> and not substantially more demonstrates good faith, not bad faith. In the Panel’s view, a more likely explanation for acceptance of a nominal sum is that the Respondent knew that its case in relation to <magnersirishcider.com> was an especially weak one.

The Panel’s conclusion from the above factors, taken together, is that the disputed domain name was not registered for the genuine purpose of targeting persons called Magner. Rather, the likelihood is that both the disputed domain name and <magnersirishcider.com> were registered to capitalise in some way on the Complainants’ trademark Magners, which, to the Respondent’s knowledge, had been launched with some fanfare about four months before.

Accordingly, the Panel is satisfied that the disputed domain name was registered in bad faith. Has it also been used in bad faith?

In the Panel’s view there is no positive act of bad faith within the non-exhaustive circumstances in Paragraph 4(b) of the Policy. The Panel disagrees with the Complainants’ claim that the correspondence between the parties evinces an offer by the Respondent to sell the disputed domain name for a sum in excess of out of pocket costs. Nor is there any evidence of use as a website to attract and confuse Internet users for commercial gain. However, that is not the end of the matter.

In the well known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.

The panelist stated that “it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ – that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.

He went on to say that “[t]he question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”.

See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (http://www.wipo.int/amc/en/domains/search/overview) which states the following consensus view on this issue: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

The Panel considers that the following factors, taken together, are indicative of bad faith use in this case:

1. The Respondent’s failure over a period of some five years to produce any meaningful website at the disputed domain name.

2. The Respondent’s posting of its initial website which remained unchanged for some three years at least and which appears to the Panel to have been primarily an attempt to justify the holding of the disputed domain name.

3. The Respondent’s registration of <magnersirishcider.com> in conjunction with the disputed domain name in the knowledge of the public launch of the Complainant’s trademark some four months earlier, indicating an intention to use domain names embodying the Complainant’s marks with a view to profit from the goodwill flowing therefrom

The Panel concludes that the disputed domain name was registered and has been used in bad faith.

 

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <magners.com> be transferred to the Complainant.


Adam Taylor
Sole Panelist

Dated: January 27, 2006