WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allied Domecq Spirits & Wine Limited, James Burrough Limited, James Burrough Distillers Limited, The Hiram Walker Group Limited v. PWX - beefeaters
Case No. D2008-0118
1. The Parties
The Complainant is Allied Domecq Spirits & Wine Limited, together with its associated companies, James Burrough Limited, James Burrough Distillers Limited and The Hiram Walker Group Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by its legal department.
The Respondent is PWX - beefeaters of Bristol, United Kingdom of Great Britain and Northern Ireland, represented by Mr. A Doyle.
2. The Domain Name and Registrar
The disputed domain name <beefeaters.net> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January 25, 2008 and in hard copy on January 29, 2008. The Complaint identified the Respondent as “Domain Management Services at 3cm.co.uk”. The Center transmitted its request for registrar verification to the Registrar by email on January 28, 2008. The Registrar replied on January 29, 2008, implicitly confirming that it was the registrar of the Domain Name, confirming that it had been placed under a locked status to prevent transfers or changes during the proceedings, and stating that its registration agreement is in English and requires the registrant to submit to the jurisdiction of the courts of King County, Washington. The Registrar provided the contact details of the registrant, identifying the organization name as “PWX – beefeaters”, first name as “Host” and last name as “Master”.
The Center notified the Complainant by email of January 31, 2008 that the Complaint was administratively deficient, in that the name of the respondent did not accord with the contact details provided by the Registrar. The Complainant filed an amendment to the Complaint, identifying the Respondent as “PWX – beefeaters”, by email on February 4, 2008, and in hardcopy on February 7, 2008. The Center then verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2008. In accordance with paragraph 5(a) of the Rules, the due date for the Response was February 28, 2008. No Response was received by the Center by that date and the Center notified the Respondent of its default on February 29, 2008. The Respondent submitted a Response with the Center by email later that day. The Respondent claimed that the Response had been sent on February 27, 2008, and forwarded an email purporting to confirm that. The Respondent stated that “Our IT department have confirmed that several emails had been suspended on our servers due to routing issues”.
By email of February 29, 2008, the Complainant requested an opportunity to make a supplemental submission on a particular point in the Response if it was admitted. The Respondent replied by email the same day reiterating and explaining this point, and asking for an opportunity to submit further evidence if the Complainant was permitted to make a supplemental submission on this point. The Respondent subsequently submitted a signed statement relating to this point on March 19, 2008.
The Complainant elected in the Complaint to submit the dispute to a three-member Panel. The Center appointed Jonathan Turner, W. Scott Blackmer and Antony Gold as panelists in this matter on March 20, 2008. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint, together with the amendment to the Complaint, complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Rulings
The Complainant is identified in the Complaint as “Allied Domecq Spirits & Wine Limited, together with its associated companies, James Burrough Limited, James Burrough Distillers Limited and The Hiram Walker Group Limited”. Nearly all of the registered trademarks relied on in the Complaint are in the name of Allied Domecq Spirits & Wine Limited. The involvement of the associated companies appears to be unnecessary and the Panel will proceed on the footing that Allied Domecq Spirits & Wine Limited is the sole Complainant.
B. Late Response
The Panel admits the Response under paragraph 10(c) of the Rules. The delay was insignificant and did not prejudice the Complainant or the procedure.
C. Supplemental Filings
The Complainant’s email requesting an opportunity to make a supplemental submission is of particular relevance to the allegation of reverse domain name hijacking made by the Respondent in its Response. The Panel will therefore admit the Complainant’s request and the Respondent’s responses to it. In view of the conclusions reached by the Panel on the material already submitted, it is not necessary to afford the Complainant an opportunity to make a further submission.
5. Factual Background
The Complainant produces spirits and wines, including gin sold under the brand BEEFEATER. The brand was named by a predecessor of the Complainant in about 1883 after the “Beefeater” Guards of the Tower of London. Between July 2005 and June 2007, 63 million litres of gin were sold under this brand, including 1.2 million litres in the United Kingdom (“UK”). BEEFEATER is registered as a trademark in the name of the Complainant in numerous countries, including the UK as of 1958.
The Domain Name was registered in November 2001. It is currently directed to a web page which has a picture of slices of uncooked beef or steak and sets out links relating to different types of beef and steak. Alongside the header “beefeaters.net” it provides a search facility. Underneath the header it states “Inquire About This Domain Please contact us for more information”. The underlined words link to a standard page of the domain name broker, Sedo, which states “beefeaters.net is for sale”. At the foot of the page there is a copyright notice stating “�2008 beefeaters.net All rights reserved”. Archiving of the address “www.beefeaters.net” by the “Way Back Machine” at “www.archive.org” has been blocked.
6. Parties’ Contentions
The Complainant contends that it has longstanding registered and unregistered rights in the trademark BEEFEATER by virtue of registrations since 1958 and use since 1883. The Complainant asserts that the Domain Name is confusingly similar to this mark since the addition of the letter “s” in the second level domain is insufficient to distinguish it from the mark.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that it has not granted any licence or right to use the mark to the Respondent. It alleges that the Respondent adopted the name used in the registration of the Domain Name to match the Domain Name rather than vice versa. It points out that its rights precede the registration of the Domain Name and suggests that the Domain Name must have been chosen to create an impression of association with itself.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith. It submits that in view of the fame of the BEEFEATER trademark, particularly in Britain where the Respondent resides, it is fair to assume that the Respondent was at all times aware of the Complainant’s rights in this mark.
The Complainant exhibits copies of what it describes as the home page of the Respondent’s website on November 12, 21 and 22, 2007. It points out that the exhibited page of November 12, 2007, contains links to web pages through which the Complainant’s “Beefeater” gin could be purchased, but that the pages from subsequent dates displayed links relating to beef or travel services. The Complainant assumes that the Respondent provides these links in return for commissions.
The Complainant draws attention to the link to the web page offering the Domain Name for sale and infers that the Respondent purchased the Domain Name in order to sell it at a profit. The Complainant further alleges that by its use of the Domain Name the Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent contends that the Complainant has not shown that its BEEFEATER mark is deserving of a global monopoly of protection in every top level domain, pointing out the absence of evidence concerning the scope of use or strength of the Complainant’s mark prior to July 2005, which was some four years after the registration of the Domain Name.
The Respondent submits that there is no likelihood of confusion and that if someone looking for the Complainant mistakenly accessed the Respondent’s website, any confusion would be quickly dispelled. According to the Respondent, US courts have found that initial interest confusion is not actionable under US trademark dilution law. The Respondent adds that it is fantasy to suggest that a “.net” domain name would be associated with a drinks manufacturer.
The Respondent asserts that the Domain Name is based on a common word in the English language which numerous potential trademark owners might claim.
The Respondent states that there is no support for the Complainant’s claim that it has no right or legitimate interest in respect of the Domain Name, pointing out that it is currently using it as a link portal about beef and beef-related products.
The Respondent denies that it registered the Domain Name in an attempt to extort money by attempting to sell it to the trademark holder. According to the Respondent, it is not readily apparent from the website that the Domain Name is for sale. The Respondent states that it merely registered common words and phrases which it believes may have value, and that this is not improper. It contends that it is not a pirate holding corporate trademarks to ransom, but rather an entrepreneur speculating as to the value of domain names to unknown parties.
The Respondent alleges that the screenshot of November 12, 2007, exhibited to the Complaint is not a homepage as represented in the Complaint, but rather is a page generated in response to a search on the term “Beefeater” using the facility on the homepage. The Respondent submits that this misrepresentation is an attempted reverse domain name hijacking.
The Respondent states that there is no evidence to support the Complainant’s claim that it intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. According to the Respondent, none of the elements indicative of bad faith identified in the Policy apply to its conduct.
The Respondent asks the Panel to dismiss the Complaint and to make a finding of reverse domain name hijacking.
C. Supplemental submissions
By its email of February 29, 2008, the Complainant denied the Respondent’s allegation that it attempted to falsify the homepage to which the Domain Name was directed on November 12, 2007. The Complainant affirmed that the page exhibited was that produced when it entered the Domain Name into a url address bar and asked for an opportunity to make a supplemental submission in relation to the Respondent’s allegation if the Response were submitted.
The Respondent’s email in reply of February 29, 2008, stated that it was irrefutable that the exhibited page dated November 12, 2007 had been generated as it had described, whether intentionally or not. The Respondent subsequently submitted a statement signed by the General Manager of Thought Convergence, Inc. dba TrafficZ which confirmed that the exhibited page was one to which the user had navigated and did not appear when the page was first viewed.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar
It is clear that the Complainant has registered and unregistered rights in the trademark BEEFEATER.
The Panel considers that the Domain Name is confusingly similar to this mark. The second level domain differs from the mark only in the addition of the final letter “s”. It is common for the letter “s” to be added to a mark in use since it represents the plural or possessive in the English language. Consumers do not normally differentiate between a mark and the same mark with an “s” added at the end.
The “.net” domain suffix is not reserved to Internet companies and is in practice used by many non-Internet companies. In the Panel’s view many consumers would not regard it as disassociating the Domain Name from the Complainant’s mark and business.
The fact that the Respondent’s current home page presents a picture of beef and related links does not alter the Panel’s assessment that the Domain Name is confusingly similar to the Complainant’s mark. It is well established that the first requirement of the Policy requires a comparison between the Domain Name and the mark, and that the content of any website to which the Domain Name is directed is irrelevant: see paragraph 1.2 of the Center’s “Overview of WIPO Panel Views on Selected UDRP Questions” and cases cited there.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a registrant may demonstrate that it has rights or legitimate interests in a domain name where (i) it used or made demonstrable preparations to use the domain name or a corresponding name in connection with a bona fide offering of goods or services before notice of the dispute; (ii) it has been commonly known by the domain name; or (iii) it is making a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert consumers or tarnish the complainant’s mark. These examples are not exhaustive, but can be regarded as indicating the kinds of circumstances which may be regarded as giving rise to a right or legitimate interest of a registrant in a disputed domain name.
In this case, the Respondent is identified as “PWX - beefeaters” in the Registrar’s Whois database. However, it does not appear that the Respondent is commonly known by the Domain Name. The Respondent has not disputed the Complainant’s allegation that it adopted the name used in the registration to match the Domain Name rather than vice versa. The Panel is satisfied that the Respondent cannot claim a right or legitimate interest in the Domain Name on this basis.
It appears from the Respondent’s website that it displays sponsored links. Furthermore, the Respondent describes himself as “an entrepreneur speculating as to a domain name’s value to unknown parties”. The Panel is satisfied that the Respondent is not making non-commercial use of the Domain Name.
It remains to consider whether the Respondent has used the Domain Name in connection with a bona fide offering of goods or services or otherwise made fair use of it so as to obtain a right or legitimate interest in it. The Respondent has directed the Domain Name to a web page containing links referring to beef and related products. It is likely, and not disputed by the Respondent, that it obtains click-through commissions from these links. The Respondent’s page also includes a search facility and when the word “Beefeater” is entered, a page containing links to websites selling various products, including the Complainant’s gin and competing products, is generated.
By this use of the Domain Name, the Respondent is likely to profit from Internet users visiting its web page when looking for a website relating to the Complainant’s product, and then either being diverted by a link to a website relating to another product or persevering through the search facility to locate a website relating to the Complainant’s product.
It is not clear when the Respondent commenced this use of the Domain Name. However, the Respondent does not deny the Complainant’s allegation that it knew of the Complainant’s mark when it registered the Domain Name and hence when it directed the Domain Name to this web page. Furthermore, while “Beefeater” can be understood as referring to a person who eats beef, it is not in common use in this sense. The term is clearly in use as the name of the guards of the Tower of London, but there is no suggestion that the Respondent has used it in that connection. Given these facts, it is likely that the Respondent commenced its present use of the Domain Name in the knowledge that a significant part of the traffic, and hence the revenue, would result from association of the Domain Name with the Complainant’s mark.
In these circumstances, the Panel considers that the Respondent’s use of the Domain Name has not been fair or bona fide. Even if use of a wholly descriptive domain name in good faith for a website solely comprising automatically generated pay-per-click links could establish a right or legitimate interest for the purpose of the Policy, the Panel considers that the Respondent’s use in this case does not qualify. The Panel concludes that the Respondent does not have a right or legitimate interest in respect of the Domain Name or a corresponding name and that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
As discussed above, the Panel considers that the Respondent is using the Domain Name to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark for commercial gain in the form of click-through commissions. In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence that the Domain Name was registered and is being used in bad faith.
It is also clear that the Respondent is offering the Domain Name for sale. The Respondent’s web page provides a link to a standard page offering the Domain Name for sale through the domain name broker, Sedo. Although the Respondent states that it merely registered common words or phrases that it believed might have value, the Respondent does not dispute the Complainant’s allegation that it knew of the Complainant’s mark when it registered the Domain Name. The Panel considers that it is more likely that not that the Respondent realized at the time that the Domain Name would have value to the Complainant or a competitor of the Complainant and registered it with that primarily in mind. This constitutes evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy.
In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
D. Reverse Domain Name Hijacking
Since the Complaint succeeds, the allegation of reverse domain name hijacking must be dismissed.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <beefeaters.net> be transferred to the Complainant Allied Domecq Spirits & Wine Limited.
W. Scott Blackmer
Date: April 3, 2008