The Complainant is C & C International Limited of Dublin, Ireland, represented by FR Kelly, Ireland.
The Respondent is Libor Kalvach, Okruzni of Czech Republic.
The disputed domain name <tullamoredewopen.com> (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 6, 2010, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the Domain Name. On May 6, 2010, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com. 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 May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2010.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 16, 2010. 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. Owing to exceptional circumstances, it has been necessary for the Panel to extend the due date for its decision, Rules paragraph 15(b).
The Complainant is an Irish company. It has a history going back some 150 years. It manufactures and distributes alcoholic beverages. One of its leading products is an Irish whiskey branded as Tullamore Dew which is the second most popular Irish whiskey in the world with sales of over 600,000 cases in 2007. The Complainant has registered trade marks in respect of the words Tullamore Dew in many countries throughout the world.
As part of its marketing activities the Complainant is the title sponsor for the largest amateur golf tournament in Europe which takes place each year on the coast in Northern Ireland. The tournament is accordingly named The Tullamore Dew Causeway Coast Amateur Golf Tournament. The Complainant operates a web site at “www.tullamoredewgolf.com” which promotes the tournament.
The Respondent appears to be an individual with an address in the Czech Republic. The Respondent registered the Domain Name on June 14, 2005. The Domain Name does not appear to have been used other than to host a web page which carries an “out of service” message.
The Complainant's contentions are expressed relatively briefly. The main points may be summarised as follows.
The Complainant is the owner of the trademark Tullamore Dew (the “Trade Mark”).
The Complainant has used the Trade Mark for many years and it is registered in, many countries throughout the world including the United States of America.
The Trade Mark has very strong brand recognition.
The Domain Name is confusingly similar to the Trade Mark.
The Domain Name must have been chosen because of its similarity to the Trade Mark and the addition of the word “open” does not alter that.
The Domain Name must be intended to “piggy back” off the Complainant's reputation and in particular the famous golf tournament it sponsors.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name has been registered and used in bad faith.
The Respondent did not reply to the Complaint.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the Trade Mark acquired through registration and use. The evidence clearly establishes the Tullamore Dew brand and the Trade Mark as being well known.
The Domain Name is confusingly similar to the Trade Mark. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here “open”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel finds that the addition of the generic word “open”, as a suffix after the words “tullamoredew”, in the Domain Name, does little to distinguish the Domain Name from the Trade Mark, and the likelihood of confusion between the Domain Name and the Trade Mark is high.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Trade Mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(1) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondents' registration and use of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish their rights or legitimate interests in the Domain Name. Accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled.
This is a case where there is no evidence before the Panel of any use which the Domain Name has been put to, beyond the fact that it is used as the relevant domain name for a web page which carries an “out of service” message. The consensus view of panellists in these types of case is that the lack of active use of the domain name in question 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 the 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. Relevant decisions include Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; and Ladbroke Group Plc v. Sonoma International LDC., WIPO Case No. D2002-0131.
In the present case the unusual and entirely non-descriptive nature of the Trade Mark, and the evidence as to the extent of the reputation the Complainant enjoys in the Trade Mark, mean that the Panel concludes the Respondent was undoubtedly aware of the Complainant when he registered the Domain Name. It is inconceivable the Respondent could have selected the Domain Name for any other reason than its similarity with the Complainant's Trade Mark. The addition of the word “open”, a term commonly used to refer to golf tournaments, suggests to the Panel that the particular connection the Respondent had in mind was the well known amateur golf tournament which is sponsored by the Complainant. The Panel is unable to conceive of any use which the Respondent could make of the Domain Name which would be legitimate based on the evidence of record. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any legitimate use case that it might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <tullamoredewopen.com>, be transferred to the Complainant.
Nick J. Gardner
Dated: August 2, 2010