The Complainant is Atlantic Industries, of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Simmons & Simmons, United Kingdom.
The Respondent is Insight Visual Communications of Bermuda, Overseas Territory of the United Kingdom.
The disputed domain name <malvernwater.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. On March 5, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 5, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2009.
The Center appointed George R. F. Souter as the sole panelist in this matter on April 17, 2009. 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.
The Complainant is an affiliate of The Coca-Cola Company. The Complainant has drawn the Panel's attention to the website of The Coca-Cola Company, where “Malvern Still Mineral Water” and “Malvern Sparkling Mineral Water” are listed among the company's products, the word “Malvern” being the predominant element of the labels.
The Complainant has also drawn to the Panel's attention a third party website “www.malvern-hills.co.uk/schweppes.html” which delineates the history of Malvern Water, dating from 1851, when J Schweppes & Co supplied The Great Exhibition at the Crystal Palace.
The Complainant claims that it and its predecessors in business have produced Malvern mineral water since 1851. The water is bottled from the Primewell Spring, which lies in the Malvern Hills. At present, over 12 million litres of still and sparkling water are bottled and sold annually in a range of package sizes.
On November 18, 1994 the Complainant applied for a United Kingdom trade mark registration for the word “Malvern”, in Class 32, for “natural and spring waters”. This application proceeded to registration, under No. 2002328, in 1999, on the ground of distinctiveness acquired through use. Although there appears to be some evidence that the town of Malvern, in the English county of Worcestershire, produced mineral waters prior to 1851, and, at least at one period, enjoyed a reputation as a spa town, the fact that the (now) United Kingdom Intellectual Property Office was sufficiently satisfied with the evidence of distinctiveness presented to it to grant the Complainant a monopoly of the word MALVERN in respect of sale of natural and spring waters in the United Kingdom, is sufficient to satisfy the Panel as to the Complainant's trade mark rights to MALVERN in connection with natural and spring waters in the United Kingdom. The Panel also accepts the Complainant's contention that, in addition to its registered trade mark rights, it “owns substantial goodwill and reputation in MALVERN in the UK”.
The Complainant has drawn the Panel's attention to an e-mail which The Coca-Cola Company received on November 11, 2008 from Mr. Murray-Mason, the Respondent's Art Director and Designer, which reads as follows:
“Just curious a few years ago I purchased both these domains (was a Malvern resident) as a back up plan to set up a couple of sponsored shopping and Blogs [sic] sites in the Great Malvern Worcs [sic] area. I now live/work in Bermuda and am patner [sic] /Director my a [sic] branding and design consultancy.
Just wondered if Coca-Cola, UK or Coca-Cola, Worldwide may wish to purchase these domains before I do something else with them?”
The domain name at issue in these proceedings was one of the domain names referred to in this e-mail. The other, <malvernwater.co.uk>, is now the subject of separate proceedings elsewhere.
The Complainant alleges that the domain name at issue in these proceedings “wholly contains the word MALVERN (which has acquired distinctiveness in the United Kingdom for water) in combination with the descriptive word WATER. The domain name is therefore highly similar to and wholly incorporates the Complainant's Rights. The addition of the descriptive word WATER does nothing to distinguish the Domain Name MALVERN. Indeed, it brings them closer, given that it is identical to the goods for which the Complainant has registered rights and reputation.”
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name at issue in these proceedings, and that the domain name was registered and is being used in bad faith.
The Complainant requests that the domain name at issue in these proceedings be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It has been the common view taken by Panels in these proceedings that the mere addition of a generic word such as water to a trade mark such as MALVERN is not sufficient to avoid a finding of confusing similarity. The situation in which the word added to a trade mark is descriptive of the products sold under the trade mark was considered in Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627, as follows: “adding a word such as “vodka,” that is descriptive of the goods offered by Complainants under its Marks, does not distinguish the Domain Names from the Marks but rather supports a finding of confusing similarity. Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 (January 20, 2004); Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001).” The Panel in this case agrees with the panel in WIPO Case No. D2004-0627 and, accordingly, finds that the Complainants have satisfied the condition set out in Paragraph 4 (a)(i) above.
The Respondent did not exercise its right to respond in these proceedings, and, thus, has not presented any viable connection under the Policy with the expression “Malvern water”. There is nothing in the Respondent's name or location which presents any connection with the expression “Malvern water”. Mr. Murray-Mason's unsupported statement in his e-mail of November 11, 2008 (referred to above) that he had been a Malvern resident is too tenuous to confer any right or legitimate interest in the expression “Malvern water”. The Panel concludes that the Respondent lacks any rights or legitimate interests in the domain name at issue in this case, and, accordingly, finds that the condition of Paragraph 4(a)(ii) above has been satisfied.
The fact that Mr. Murray-Mason claims in his e-mail of November 11, 2008 to have been a Malvern resident raises the suspicion that he must, when he registered the domain name at issue in these proceedings have known of the reputation of the Complainant's Malvern water product at the time he registered the domain name. He certainly knew enough to direct his e-mail of November 11, 2008 to the Complainant's affiliate, The Coca-Cola Company.
This, added to the finding that the Respondent lacked any rights or legitimate interests in the domain name at issue in these proceedings, leads the Panel to the inevitable conclusion that the domain name at issue in these proceedings was registered in bad faith.
The Panel must also consider whether the domain name at issue in these proceedings has been used in bad faith. In view of the Panel's opinion that the Respondent must have known of the reputation of Malvern water at the time of registering the domain name at issue in these proceedings, and in view of Mr. Murray-Mason e-mailing the Complainant's affiliate company, The Coca-Cola Company, on November 11, 2008 with a suggestion that the company “may wish to purchase these domains before I do something else with them”, the Panel concludes that the Respondent acted in bad faith in making such an offer. Although no purchase price was mentioned in Mr. Murray-Mason's e-mail, the Panel regards it as highly unlikely that the Respondent would have been happy to accept an offer to substantially reimburse its out of pocket expenses as the purchase price, particularly in view of the rider: “before I do something else with them” (which, in the Panel's opinion could be fairly construed as a threat, the effect of which could be to induce the Complainant to offer/expend a sum greatly in excess of the Respondent's out of pocket expenses to purchase the domain names).
The Complainant certainly perceived a threat, as they commented:
“The Email suggests that the Respondent may ‘do something else' with the Domain Name. Given the Complainant's well-known trade mark MALVERN for water, it is impossible to conceive of any good faith use of the Domain Name.
- any goods or services sold by the Respondent from the domain name (or otherwise) would mistakenly be linked by consumers with the Complainant, and
- the Complainant's customers seeking information on the Complainant's MALVERN water would be diverted away from the Complainant, such that its legitimate business would be unfairly disrupted.”
In all these circumstances, the Panel finds that the domain name at issue in these proceedings has been used in bad faith, and that, accordingly, the conditions of Paragraph 4(a)(iii) above have been satisfied.
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, <malvernwater.com>, be transferred to the Complainant.
George R. F. Souter
Dated: May 4, 2009