About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guinness World Records Limited v. Solution Studio

Case No. D2016-0186

1. The Parties

The Complainant is Guinness World Records Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Marshall Gerstein & Borun, LLP, United States of America.

The Respondent is Solution Studio of Maribor, Slovenia.

2. The Domain Name and Registrar

The disputed domain name <guinnessworldrecords.xyz> is registered with Dynadot, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2016, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint on February 9, 2016, and the proceedings commenced on February 9, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2016.

The Center appointed Torsten Bettinger as the sole panelist in this matter on March 14, 2016. 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 Complainant is the publisher of the well-known publication “Guinness World Records”, formerly named the “Guinness Book of World Records”, first published in 1955. The annual Guinness World Records book is published in more than 100 countries and in 25 languages. The Complainant first published a Slovenian edition of the Guinness World Records (Guinnessova Knjiga Rekordov) in 1978. Slovenia and Slovenians have participated in the establishment of more than 30 records. In addition to the book, the Complainant also publishes related media offerings featuring superlative achievements and record attempts. More than a dozen television series have been filmed documenting world record breaking attempts in various countries including the United Kingdom, China, the United States, Australia, Italy, Spain, and India. In 2000, the Complainant began online publishing at <guinnessworldrecords.com>.

The Complainant owns 119 registrations for GUINNESS WORLD RECORDS and 92 registrations for GUINNESS WORLD RECORDS & Design (Logo) (collectively, the “Trademarks”) including No. 826080 registered May 15, 2002, in a number of jurisdictions, including the European Union.

The Respondent registered the disputed domain name on August 28, 2015, long after the Complainant began using its <guinnessworldrecords.com> domain name and the registration of GUINNESS WORLD RECORDS in the European Union.

The Complainant states that the Respondent does not have, and never has had, permission to use the Trademarks or to register and use domain names incorporating the Trademarks.

To date, the Respondent has failed to make any genuine use of the disputed domain name. The Panel visited the disputed domain name on March 18, 2016, and observed that the domain name resolves to a Registrar-provided “Domain Search” page featuring domain name auctions and sales.

5. Parties’ Contentions

A. Complainant

The Complainant states that each of the three elements of paragraph 4(a) of the Policy are satisfied.

With regard to the first element of the Policy, the Complainant states that the disputed domain name is identical to its registered GUINNESS WORLD RECORDS mark, distinguished only by the generic Top-Level Domain (gTLD) “.xyz”.

Concerning the second element of the Policy, the Complainant states that the Respondent is not entitled to use the disputed domain name and has never been, and is not currently, commonly known by the disputed domain name. The Complainant further notes that the Respondent does make active use of the disputed domain name.

Finally, with regard to the third element of the Policy, the Complainant notes that the Respondent does not make any genuine use of the domain name, and that the disputed domain name was acquired long after Complainant established it trademark rights. The Complainant has characterized the Respondent’s use as “passive holding”.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark GUINNESS WORLD RECORDS as evidenced in the annexes to the Complaint.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941.

The Panel finds that the addition of gTLDs such as “.com”, “.net”, or “.xyz” may be disregarded when determining whether the disputed domain names are confusingly similar to the complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.

The Panel thus finds that the disputed domain name <guinnessworldrecords.xyz> is confusingly similar to the Complainant’s GUINNESS WORLD RECORDS mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its GUINNESS WORLD RECORDS mark in any fashion and that there is no connection between the Respondent and the Complainant. The disputed domain name is used only to direct Internet users to a website promoting the Registrar’s own services, and is correctly characterized as “passive holding”. While passive holding by itself may be a legitimate activity, doing so does not as such confer any rights or legitimate interests in the domain name.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain name, or otherwise replied to the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has maintained registered rights in GUINNESS WORLD RECORDS mark at least as early as 1995, has made use of the mark as early as 1955, and first published a Slovenian edition of its book in 1978. The disputed domain name differs from the Complainant’s trademark only in the selection of the Top-Level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion. Therefore, in the Panel’s view, it is very likely that the Respondent was aware of the Complainant at the time he selected the disputed domain name for registration. In the circumstances of this case, this is sufficient to infer bad faith.

As noted above, the disputed domain name resolves to a passive holding page with links related to the Registrar’s activities. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above.

Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

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 <guinnessworldrecords.xyz> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: March 21, 2016

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/