Complainant is Diageo Ireland of Dublin, Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Guinnessclaim of Pretoria, Gauteng, South Africa.
The disputed domain name <guinnessclaim.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2009. On May 25, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 2009, Tucows Inc. 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 June 3, 2009. On June 3, 2009, the Center received an informal email communication from one of Respondent's contacts stating, “We are no longer in any shape or form involved with guinnessclaim.com”, communication of which the Center acknowledged receipt.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 24, 2009.
The Center appointed Mark Partridge as the sole panelist in this matter on July 8, 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.
Complainant Diageo Ireland, a subsidiary of Diageo Plc., markets and sells premium beverages throughout the world under the GUINNESS brand. Complainant's Guinness stout is by volume the largest stout brand sold worldwide. Complainant owns trademark registrations for GUINNESS in over 150 countries, including South Africa and the United States of America.1 These include, among others, a registration for GUINNESS for “Non-alcoholic and alcoholic beverages” in South Africa, filed June 12, 2001 (Reg. No. 2001/10133) and GUINNESS for “Beer” in the United States, filed on January 15, 1935 (Reg. No. 0321014). Complainant and its successors in interest have sold beverage products under the GUINNESS name and mark for over two-hundred years. Complainant also hosts the website “www.guinness.com”.
The domain name in dispute, <guinnessclaim.com>, was registered on September 29, 2008. The website associated with the domain name is inactive. Complainant alleges, however, that the domain name was used illegitimately in association with scam e-mail messages sent unsolicited to members of the public. An example of the scam e-mail attached in an annex to the Complaint contains in the subject line “Congratulations!!! Winner…” It informs the recipient that the recipient has won a large monetary prize awarded by Guinness & Co. The e-mails instruct the recipient to contact <firstname.lastname@example.org> to “begin the claims processing of your prize winnings.”
Complainant sent several letters to Respondent notifying Respondent of Complainant's rights in the GUINNESS mark and requesting transfer of the disputed domain name to Complainant. Respondent did not respond to the letters.
Complainant contends that the Domain Name is confusingly similar to its famous GUINNESS mark, that Respondent lacks any right or legitimate interest in the Domain Name, and that the Domain Name was registered and used in bad faith.
Respondent is in default and did not submit a reply to Complainant's contentions. The Center did receive an informal response from one of the numerous e-mail addresses associated with the domain name, stating “We are no longer in any shape or form involved with guinnessclaim.com.”
It is undisputed that Complainant owns the GUINNESS marks by virtue of its long and worldwide use of the mark and ownership of numerous trademark registrations for the mark. The disputed domain name <guinnessclaim.com> incorporates the GUINNESS mark in its entirety and adds only the non-distinctive term “claim” to the mark. The addition of a non-distinctive or generic term to Complainant's mark is insufficient to avoid confusion. Accordingly, the Panel finds the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant need merely make a prima facie showing that Respondent has no rights or legitimate interests in the <guinnessclaim.com>. Here, Complainant has met its prima facie burden by alleging that Respondent owns no trademark or trade name registrations for the disputed domain name; is not commonly known by the name; has not used the domain name in a manner that would provide Respondent with rights to the domain name; and is not licensed or authorized by Complainant to use Complainant's GUINNESS marks. Complainant further alleges that Respondent's use of the disputed domain name in association with a scam e-mail scheme is intended “to make the receivers think that the email comes from the Complainant or at least someone related to the Complainant” and that Respondent profits from this illegitimate confusion. Such a use is not a bona fide offering of goods or services under the Rules, and is not a legitimate noncommercial or fair use of the domain name.
Once the prima facie showing is made, the evidentiary burden shifts to Respondent to show its rights, if any, in the domain name. However, Respondent failed to submit a Response and the Panel therefore decides this dispute based upon the Complaint. Rules, paragraph 5(e). In light of Complainant's persuasive evidence that the disputed domain name is held passively and used in association with scam e-mail messages, this Panel draws all necessary inferences from Respondent's default and accepts Complainant's allegations are true. The Panel finds Respondent has no rights or legitimate interests in the disputed domain name.
Complainant's uncontroverted evidence establishes that Respondent registered and used the disputed domain name long after Complainant established its rights in the GUINNESS marks to perpetuate a scam e-mail scheme for commercial gain based on confusion with Complainant's marks. Respondent's use of the domain name under these circumstances shows bad faith use. Give the deliberate attempt to trade on the GUINNESS mark, it is also apparent that Respondent registered <guinnessclaim.com> with actual knowledge of Complainant's rights in the GUINNESS mark for the sole purpose of creating confusion with Complainant's mark for Respondent's illegitimate profit. Accordingly, the Panel finds Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <guinnessclaim.com> be transferred to Complainant.
Dated: July 26, 2009
1 In Complainant's list of trademark registrations attached to its Complaint, Complainant is shown as owner of most, but not all of the GUINNESS marks. The remaining domain names are owned by Arthur Guinness Son & Co. (Dublin) Limited or Guinness Plc. Complainant has previously been joined in UDRP complaints by the former company, where both were recognized as the legitimate owners of the GUINNESS marks. See Diageo Ireland, Arthur Guinness Son & Co. (Dublin) Limited v. The Director, WIPO Case No. D2003-0885 (WIPO Dec. 23, 2003). Complainant now alleges that it is the “beneficial owner of these trade marks (which have been transferred to Complainant) but the transfers have yet to be recorded at the respective trade mark registries hence the registers showing the previous trade mark owners' names.” Complaint at p.8. The Panel accepts the unrebutted allegations that Complainant is the owner of record for some of the GUINNESS trademark registrations and is the beneficial owner of the remaining GUINNESS registrations.