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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carlsberg Breweries A/S v. Benjamin Cairns / Clap Your Peepers

Case No. D2014-1080

1. The Parties

Complainant is Carlsberg Breweries A/S of Copenhagen, Denmark, represented by Wallberg IP Advice, Denmark.

Respondent is Benjamin Cairns / Clap your Peepers of South Yarra, Australia.

2. The Domain Names and Registrar

The disputed domain names <sethandrileys.com>, <sethandrileysgarage.com> and <sethrileys.com> are registered with Crazy Domains FZ-LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. On July 4, 2014, Respondent sent an email to the Center. Respondent did not submit any formal response. Accordingly, the Center informed the parties of the commencement of the Panel Appointment process on July 25, 2014.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 5, 2014. 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

Complainant is a Danish brewing company, founded in 1847, with headquarters in Copenhagen. In 2013, it was the 4th largest brewing company in the world. Complainant is the owner of the mark SETH & RILEY’S GARAGE in several jurisdictions including the European Union, China, and Russian Federation, via WIPO No. 1183178 (registered August 29, 2013).

On April 8, 2014, Complainant sent out a global press release regarding the global expansion of its Seth & Riley’s Garage beverage. Complainant also promotes this mark on social media such as Facebook.

The disputed domain names <sethandrileys.com>, <sethandrileysgarage.com>, and <sethrileys.com> were created on April 11, 2014. Respondent has no affiliation with Complainant. Respondent has the disputed domain names linked to URLs with parked web pages. In response to correspondence from Complainant, Respondent has offered the disputed domain names for sale for AUD 7,950.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) <sethandrileys.com>, <sethandrileysgarage.com>, and <sethrileys.com> are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not file a formal reply to Complainant’s contentions in this proceeding.

On July 4, 2014, Respondent sent an email to the Center stating that his email address on file was incorrect, and giving an updated address for receipt. He did confirm that he had received hard copies by mail. At Respondent’s request, the Center answered with a copy of the Complaint and attachments the same day, but received no further response.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <sethandrileys.com>, <sethandrileysgarage.com>, and <sethrileys.com> are identical or confusingly similar to a trademark or service mark in which the Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that they are.

The disputed domain name <sethandrileysgarage.com> directly incorporates Complainant’s registered trademark SETH & RILEY’S GARAGE, merely converting the ampersand into its equivalent word, “and.” The other two disputed domain names are shortened versions of Complainant’s mark. The Panel finds that in context, the shortened versions on the mark would be perceived by web users as pointing to a source where they can access information about Complainant’s brand. Seefor example, Pebble Beach Company v. Buy This Domain, WIPO Case No. D2002-0150 (transferring <pebble-beach-concours.com>).

This Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent did not formally reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has offered to sell the disputed domain names to Complainant for significantly higher than out-of-pocket cost without any showing of legitimate use. Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set the disputed domain names to parked webpages.

Complainant has evidenced that Respondent has “registered or ... acquired the domain name primarily for the purpose of selling ... for valuable consideration in excess of ... documented out-of-pocket costs,” in a showing of bad faith as contemplated by paragraph (4)(b)(i) of the Policy. When first contacted by Complainant’s counsel regarding the disputed domain names, Respondent replied in an email on May 2, 2014 “When I read about the Seth & Reiley’s [sic] product range, I immediately thought that there would be great scope for such a product here in Australia ... hence the reason for securing these particular domain names.” Shortly thereafter, Respondent offered to sell the domain names to Complainant in an email dated June 10, 2014 “on the condition that Carlsberg agrees to reimburse me for my time spent – a total of $7,950 AUD (transferred into a nominated bank account).” Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.

7. Decision

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 names <sethandrileys.com>, <sethandrileysgarage.com>, and <sethrileys.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: August 18, 2014

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