WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C & C IP SÀRL and Tennent Caledonian Breweries Limited v. Private Registration

Case No. D2013-0569

1. The Parties

The Complainants are C & C IP SÀRL of Luxembourg, Luxembourg; and Tennent Caledonian Breweries Limited of Glasgow, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by FRKelly, Ireland.

The Respondent is Private Registration of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“U.K.”).

2. The Domain Name and Registrar

The disputed domain name <tennentslager.net> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2013. On March 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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. On March 28, 2013, the Center requested the Complainant to confirm the Complaint had been transmitted to the Respondent in electronic format. The Center received the confirmation from the Complainant on April 2, 2013.

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 April 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2013.

The Center appointed John Swinson as the sole panelist in this matter on April 30, 2013. 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.

4. Factual Background

The Complainants are C & C IP SÀRL of Luxembourg and Tennent Caledonian Breweries Limited of Scotland, U.K. (together, the “Complainant”). Tennent Caledonian Breweries Limited is a beverage manufacturing company, created in 1966 (but operating in some form since the 1770s). It was acquired by C & C Group Plc in 2009. C & C IP SÀRL is the intellectual property holding company for C & C Group Plc.

C & C IP SÀRL holds registered trade marks in numerous countries, including the U.K., for TENNENT’S (the “Trade Mark”).

The Respondent is Private Registration of the Cayman Islands, a privacy service.

The Disputed Domain Name was registered on September 20, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Multiple Complainants

C & C IP SÀRL is the registered proprietor of the Trade Mark. Tennent Caledonian Breweries Limited is a trading company which uses the Trade Mark with the consent of C & C IP SÀRL. Both companies are related companies, being part of the group of companies headed by C & C Group Plc. The Complainant submits that these companies should be joint Complainants.

Identical or Confusingly Similar

The Complainant has both registered and longstanding common law rights in the Trade Mark.

The Disputed Domain Name is nearly identical to the Trade Mark, with the addition of “lager”.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- there has been no evidence prior to 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;

- the Respondent has not previously been known by the Disputed Domain Name;

- the Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to carry out activities on its behalf; and

- there is no commercial advantage associated with the Disputed Domain Name other than selling it to the Complainant or a competitor.

Registered and Used in Bad Faith

The Disputed Domain Name was registered primarily for the purpose of selling the registration to the Complainant or a competitor. The website at the Disputed Domain Name refers to the Complainant’s Trade Mark.

The Respondent is preventing the Complainant from reflecting the Trade Mark in a corresponding domain name.

The Respondent seeks to disrupt the Complainant’s business, by attracting visitors looking for information about the Trade Mark. The Respondent may also be seeking to benefit from click-through revenue.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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 onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.

A. Procedural Matters

Multiple Complainants

The Panel accepts that C & C IP SÀRL and Tennent Caledonian Breweries Limited have common legal interests in the Trade Mark, as the owner, and as an authorized user of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute, but for the purposes of the remedy requested the Panel will refer to C & C IP SÀRL as the party requesting transfer of the Disputed Domain Name.

Proper Respondent

The use of privacy services to hide the “true owner” of domain names is becoming more common. Where a privacy service has been used, it is the Center’s usual practice to confirm the “true owner” of the domain name (see e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 and Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).

Previous UDRP panels have found that in certain circumstances it may be appropriate to treat the provider of a privacy service as the proper respondent. Here, as the “true owner” of the Disputed Domain Name has not been identified, the Complainant was not be able to amend the Complaint to name the “true owner” of the Disputed Domain Name as the Respondent, and the privacy service must accept responsibility for the Disputed Domain Name as the Respondent (see e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753).

Failure to Respond

The Panel confirms that the Center has taken the steps required under the Policy and the Rules regarding notification. The Panel is satisfied that the Respondent has been given adequate notice of the Complaint and a reasonable opportunity to file a Response.

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Panel has verified that the Complainant has rights in the Trade Mark.

The Disputed Domain Name is a combination of the “tennents” element with the descriptive term “lager”. The “.net” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and is thus ignored.

The Panel finds that “tennents” remains the dominant element in the Disputed Domain Name. The lack of apostrophe is not enough to differentiate the Disputed Domain Name from the Trade Mark. It is well established that the addition of a descriptive term (such as “lager”) to a trade mark does not prevent confusingly similarity (see e.g. Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and the cases cited therein).

It is therefore clear that the Disputed Domain Name is confusingly similar to the Trade Mark. As such, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;

- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark; and

- the Respondent registered and began using the Disputed Domain Name after the Complainant had established rights in the Trade Mark through registration and use.

The website at the Disputed Domain Name is arguably a fan site. It contains information about Tennent’s branded beverages and products and includes statements such as “What is so special about this name?” and “Which Scottish beer drinker would not be proud of drinking a truly Scottish lager like Tennent’s off these glasses?”. Under specific circumstances, “clearly active and non-commercial” fan site can generate rights or legitimate interests in a domain name (see paragraph 2.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).

The Panel acknowledges that the “active” requirement comes from the WIPO Overview 2.0, not the Policy itself. However, the Panel considers it a useful guideline in addressing whether a fan site is actually being used for a legitimate purpose as opposed simply to keeping the domain name from the mark owner. Previous UDRP panels have found fan sites with non-commercial activities (e.g. discussion forums for fans) to be legitimate (see e.g. Joseph Brandstetter v. Attn: Fenderrhodes.Com / James Garfield, WIPO Case No. D2007-0628; Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001). Here, however, the content of the website is static.

Additionally, the Respondent’s use is not entirely “non-commercial”. The website at the Disputed Domain Name contains pay-per-click links.

In summary, the Panel finds that the website at the Disputed Domain Name is not a fan site. The Respondent is using the website as a simple form of parking the Disputed Domain Name using a static information page with facts available from any number of public sources.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The above discussion regarding the “non-commercial” nature of the website at the Disputed Domain Name also supports the Complainant’s submission that Respondent registered and has used the Disputed Domain Name in bad faith. The Panel has found that the Respondent’s use of the information page was a pretext for parking. As such, the website’s use has been limited to unrelated click-through revenues.

Even if the website was not being used to generate click-through profits, non-use (or “passive use”) has been held to illustrate use in bad faith (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and the cases cited therein). With no connection to the Trade Mark or the Complainant, the Panel is also permitted to infer that the Respondent registered the Disputed Domain Name in bad faith, to take commercial advantage of the Complainant’s reputation.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <tennentslager.net>, be transferred to the Complainant (C & C IP SÀRL).

John Swinson
Sole Panelist
Date: May 11, 2013