The Complainant is Bulmers Limited of Dublin, Ireland, represented by FRKelly, Ireland.
The Respondent is Geoff Gillan of Rochdale, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <fantasymagnersleague.com> is registered with Tucows Inc.
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 Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 27, 2010. The Response was filed with the Center on May 27, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 7, 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 paragraph 7 of the Rules.
The Complainant is a leading Irish cider manufacturer. The Complainant is part of the group of companies headed by C&C Group Plc, an Irish based company established 150 years ago, which is one of the largest manufacturers, marketers and distributors of branded beverages and savory snacks in Ireland, which has been listed on the Irish and London Stock Exchanges since May 2004. The Complainant has been using the trademark MAGNERS in the United Kingdom (“UK”) since at least 1999, when it was first launched, followed by launches throughout Europe and in the United States of America (“U.S.”), and has established a 6% market share of the entire long alcohol drink (LAD) market.
The Complainant is the registered owner of numerous trademarks containing the word “Magner”, including Irish Trademark Registration No. 219867 MAGNERS, registered on September 12, 2000; Community Trademark Registration No. 1411594 MAGNERS, registered on September 4, 2002; and US Trademark Registration No. 2722739 MAGNERS, registered on on the U.S. Supplemental Register on June 3, 2003 (hereinafter referred to as the “MAGNERS Marks”).
The Complainant sponsors a number of sporting events, including rugby in the UK through key sponsorships of the Magners League, a championship which includes teams from Ireland, Scotland and Wales.
The disputed domain name was registered on August 18, 2006 and is used in connection with a “Fantasy Sports” type game based on the Magners League. The website includes advertising links to third parties' websites.
On November 6, 2009, the Complainant wrote to the Respondent, requesting a transfer of the disputed domain name. Thereafter, the URL was redirected to the website at “www.fantasyml.com” and a disclaimer was inserted.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the registered MAGNERS Marks as well as to the unregistered trade mark MAGNERS used in trade in the UK, in particular for cider by an associated company, Wm. Magner Limited, and to the sponsorship title Magners League, from which it differs only by the addition of the word “Fantasy”.
(2) The Respondent has no rights to or legitimate interests in the disputed domain name as there has been no evidence prior to notice of this dispute of any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Additionally, no elements appear to exist that can link the Respondent to the mark MAGNERS or the surname “Magner”, as the Respondent is not connected or affiliated with the Complainant or authorized to carry out activities, either commercial or noncommercial, on behalf of the Complainant, and as the Respondent is not known by a name corresponding to the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the disputed domain name intending to attract the attention of the Complainant and to elicit a lucrative offer to purchase it for fear it would be put to damaging use. The Complainant further contends that there is no conceivable non-infringing use to which the Respondent could put the disputed domain name, given its lack of any connection with the Complainant, and that by registering the domain name, the Respondent is preventing the Complainant from reflecting its mark in the corresponding domain name. The Complainant finally contends that the Respondent may also be seeking to benefit from click-through fees when his website is mistakenly opened by a person looking for the Complainant's website, and that the Respondent operates a spread betting website on rugby games played within the league sponsored by the Complainant.
The Respondent denies the Complainant's allegations.
He contends that the website at the disputed domain name was designed and built purely as a means of having fun and sharing this interest with like-minded individuals who want to play a game. The Respondent further contends that the disputed domain name was only purchased as the name “Magners” is a common name used for the sports league, and not as a means to confuse or attract MAGNERS cider drinkers. Furthermore, the Respondent states that the disputed domain name was bought purely with the intention of setting up a free fantasy manager's league for rugby followers of teams from Ireland, Scotland and Wales, participating in the Celtic league.
The Respondent also contends that the disputed domain name was not registered to attract the Complainant's attention or to elicit a lucrative purchase of the name, that he paid for the hosting of the site from day one, believing that he was purely doing something he enjoyed, i.e. designing and developing a website that people are interested in, for the love of the game of rugby and not to make money. The Respondent states that the disputed domain name reflects exactly the website's content, namely a “Fantasy Sports” type of game based on the rugby league commonly known as the “Magners League”, and that the term “Fantasy” is distinctive and very important for such website, as it shows the type of game that can be played there.
The Respondent denies the accusation that he is running a “spread betting” web site, stating that this is simply wrong and a further attempt at trying to enforce the Complainant's claim “through an over-the-top and threatening manner, with the intention to harass, something which they claim to not do in part XII Certification, Section 20 of their claim”, which shows that the Complainant has not “acted in good faith”.
The Respondent finally contends that the disclaimer on the front page of the web site at the disputed domain name was introduced after the Complainant got in touch with him as per the advice of his trade mark lawyers.
The Respondent states that he will not be using the disputed domain name again and has no objections to its cancellation. However, he would not like to see it transferred to the Complainant.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name fully incorporates the Complainant's MAGNERS Marks.
The additional words “fantasy” and “league” in the disputed domain name are both generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “fantasy” or “league” (cf. Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896, <yahoofantasy.com et a.l>; Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156 – <fantasyplayboy.com et al.>; National Westminster Bank plc v. Mohamad Musthafa, NAF Claim No. 1235902 - <natwestpremierleague.com et al>.). The fact that the word “fantasy” may have a special meaning with regard to the content available at the disputed domain name does not hinder a finding of confusing similarity under the Policy.
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panels that the Complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will then shift to the Respondent.
The Complainant has substantiated that the Respondent has no rights to or legitimate interests in the disputed domain name, while the Respondent denied the Complainant's contentions. On balance, the Panel cannot find that the Respondent has any rights to or legitimate interests in the disputed domain name for the following reasons:
Firstly, the Panel is aware that a right or legitimate interest may result from the use of a domain name in connection with a fan site (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.5, with further references). However, the Respondent in the present case neither provided a noncommercial website nor clearly distinguished his website from the Complainant's official website at “www.magnersleague.com” before any notice of the dispute. Screenshots of the website available at the disputed domain name show that the Respondent provided advertising links on such website, which is evidence of a commercial interest and not merely a noncommercial or fair use. Furthermore, the overall impression of such website is similar compared to the overall impression of the Complainant's website. The Panel deems a risk of confusion between both websites to be likely.
Secondly, even a noncommercial use of the disputed domain name by the Respondent would not have resulted in a right to or legitimate interest in the disputed domain name. The Respondent contends that he provided a “Fantasy Magners League” at the disputed domain name. However, the Respondent does not use this name to identify such league on the website itself, but merely calls it “Free Fantasy Celtic League” or “Fantasy Celtic League”. The name “Fantasy Magners League” is used only in the disputed domain name and in the title of the website, but not on the website itself. The main interest of the Respondent therefore apparently is to provide a fantasy league based on a rugby league without any reference to the Complainant other than the fact that the Complainant is at present the main sponsor of the league. The Respondent could easily have chosen a domain name for his website which does not incorporate the Complainant's MAGNERS Marks, i.e. <fantasycelticleague.com> or similar in order to achieve his purpose. The Panel cannot see any legitimate need for the Respondent to refer to the Complainant's marks in the disputed domain name, and, as a result, considers that the Respondent does not have any right to use the MAGNERS Marks in the present case.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the disputed domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
With regard to the Respondent's bad faith registration, the Respondent itself stated that he registered the disputed domain name to provide a “Fantasy Sports” type of game based on the rugby league sponsored by the Complainant, commonly known as “Magners League”. Therefore, the Respondent was aware of the Complainant and its rights in the MAGNERS Marks when registering the disputed domain name and thus registered it in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the MAGNERS Marks into the disputed domain name and by using the website at such domain name in connection with a website providing advertising from third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <fantasymagnersleague.com> be transferred to the Complainant.
Dated: June 21, 2010