WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zenbury International Limited v. Shirely Higgins, COSYVILLA
Case No. D2014-1280
1. The Parties
The Complainant is Zenbury International Limited of Tralee County Kerry, Ireland, represented by F.R. Kelly of Ireland.
The Respondent is Shirley Higgins, COSYVILLA of Castleisland, County Kerry, Ireland, represented by O'Donoghue Solicitors of Ireland.
2. The Domain Name and Registrar
The disputed domain name <kerrymaid.com> is registered with eNom ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on July 25, 2014. On July 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2014, 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 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 August 5, 2014. In accordance with the Rules paragraph 5(a), the due date for response was August 25, 2014. The Response was filed with the Center on August 7, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 7, 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.
The Panel notes that proceedings in the High Court of Ireland (Record number 2014/7677P) were commenced by the Respondent against the Complainant claiming inter alia that certain alleged actions by the Complainant were unlawful and constituted tortious interference with the economic interests of the Respondent as well as rendering an Order directing the Complainant to withdraw the current Complaint.
An Order appears to have been made by Ms Justice O'Hanlon on September 10, 2014 requiring that the Center should be restrained from proceeding to adjudicate upon the current Complaint "pending the determination of these (High Court proceedings) or in the alternative until and unless the first named Defendant confirm or deny that all contacts made with the Plaintiff between the months of January and April 2014 were made at the behest of the agents of the first named Defendant as set out in the Plaintiff's letter dated 5 September 2014".
The Panel has been supplied with a copy of an email dated September 25, 2014 to the Respondent's solicitors explaining the basis for UDRP jurisdiction as well as the status of the WIPO Arbitration and Mediation Center as a Policy provider.
The Panel is unable to consider the merits or otherwise of the action in the Irish High Court and therefore proceeds on the basis that it is legally constituted under domain name registrant contractual obligations mandating application of the Policy.
The Panel has also been sent copies of without prejudice letters of October 15, 2014 and October 20, 2014 from Messrs O'Donoghue the Respondent's solicitors including "Further Submissions" on behalf of the Respondent in the current proceedings. These are marked "Without prejudice to the Respondent's legal rights and the proceedings in being before the High Court of Ireland". The Panel has considered these but has decided that in order to decide the Complaint before it, it is not necessary to take into account the "Further Submissions". It does not do so.
The Panel therefore proceeds to decide the Complaint on the basis of the Complaint filed by the Complainant on 25 July 2014 and the Response filed by the Respondent on August 7, 2014 together with respective accompanying evidence.
4. Factual Background
According to the Complainant, it is the registered proprietor of Irish and United Kingdom of Great Britain and Northern Ireland ("UK") registrations for the trademark KERRYMAID.
These are as follows:
UK registration number 2399453 dated August 16, 2005 in Class 29 for "dairy spreads; sunflower and vegetable oil spreads; margarine; butter; buttermilk; milk and dairy products; food spreads consisting principally of edible oils; edible oils and fats".
Irish registration number 231445 dated February 16, 2005 in Class 29 for "Dairy spreads; sunflower and vegetable oil spreads; margarine; butter; buttermilk; milk and dairy products; food spreads consisting principally of edible oils; edible oils and fats."
Printouts of the Irish and UK online databases for these marks are set out at Annex 4 to the Complaint.
At Annex 5 to the Complaint the Complainant sets out details of its unregistered trademark rights in the mark KERRYMAID. The Complainant points out that as a group it has used the mark KERRYMAID in relation to a range of products including dairy spreads, cheese, custard, cream, ice-cream and brandy sauce. Exhibit 2 to that Annex identifies the product range.
The packaging that KERRYMAID products developed over the years is shown marked Exhibit 3 Annex 5, and includes a tub of KERRYMAID dairy spread sold in 1998 as well as evidence of the detailed packaging history timeline from 1990 to 2005. Sample packaging including KERRYMAID pizza cheese, KERRYMAID custard, KERRYMAID cheese slices and KERRYMAID cream are attached to Annex 5 marked Exhibit 4.
The Complainant's turnover under the trademark KERRYMAID has been substantial. In 2011 the Complainant's group had a turnover in excess of EUR 25 million in relation to dairy products sold under the trademark KERRYMAID. A breakdown of sales under the KERRYMAID trademark is set out in a table in Annex 5. These substantial sales were added by a substantial investment in advertising and promotion undertaken by the Complainant's group. It has invested over EUR 1 million on advertising in the past five years in relation to the trademark KERRYMAID. By way of example the Complainant's group has undertaken a substantial radio advertising campaign with advertisements appearing on two national Irish radio stations (RTE1 and 2FM) and three regional stations (98FM in Dublin and Cork, Radio Kerry and Radio Limerick). The advertising budget for the Complainant's radio campaign in 1992 was IEP 55,000 (Irish Punts) equating to EUR 68,487.
In 1993 the Complainant's group invested in television advertising for the KERRYMAID range of products. In 1994 the advertising spend in relation to KERRYMAID dairy spreads was IEP 100,000 (Irish punts).
Changes to the "KERRYMAID" packaging were introduced in 1996. A national television campaign was embarked upon at that stage to communicate the change to the consumers. This campaign was described as a heavyweight campaign and consisted of a 20 second advisement that was shown on the two national television stations in Ireland namely RTE1 and Network 2. This is evidenced at Exhibit 8 to Annex 5. Further evidence is set out by way of online link to the Complainant's television advertisements in Annex 5.
Also exhibited to Annex 5 are samples of documentary advertising in magazines such as "Todays Grocery Magazine" and "Todays Grocery Food Finder".
The Respondent, "Shirley Higgins" is a business woman who is proposing to engage in the provision of cleaning and other domestic services for the domestic and rental market, using the disputed domain name but "to be carried out solely in the United States of America at this point in time".
Evidence of the Respondent's business is set out in the Complaint. The Complainant submits that her organisation's name is "Cosy Villa" and this is the name under which she trades using the domain name <cosyvilla.com> and that this relates to holiday home rental.
The Complainant points out that the website relating to the disputed domain name makes no reference to agency services for maids or any other business connected with the disputed domain name.
The Panel has looked at Annex 8 which is the Cosy Villa website and appears to relate to renting "Cosy Villas" in Lanzarote, County Kerry and Florida.
At Annexes 9 and 10 to the Complaint are printouts from the Respondent's website corresponding to the disputed domain name. This is merely a "holding" page which states:
"Thank you for your interest in kerrymaid.com, we are excited about launching our new website soon. If you would like to be kept up to date about us please send an email to firstname.lastname@example.org, thanks".
According to the Complainant the Respondent was put on notice of the potential dispute when the Complainant's agent approached her in January 2014. According to the Complainant before then the Respondent had not made any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel notes that the disputed domain name was registered on August 10, 2006. In the Response the Respondent accepts that the business of the Respondent has yet to be launched using the disputed domain name. The Respondent states that the failure to launch the business has been caused both by market conditions for the service being provided and partly as a result of the illness of the Respondent. The Panel has seen a report from the Respondent's doctor confirming that she was diagnosed with a serious condition in 2008.
5. Parties Contentions
The Complainant contends:
The disputed domain name is identical or confusingly similar to the trademark KERRYMAID in which the Complainant has both registered and unregistered rights.
1. The Respondent has no rights or legitimate interests in respect of the disputed domain name because:
(i) There is no evidence to date of any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
(ii) The Respondent is not commonly known by the disputed domain name in dispute.
(iii) The Respondent is not making a legitimate noncommercial fair use of the disputed domain name.
2. The disputed domain name was registered and is being used in bad faith:
(i) the disputed domain name was registered primarily for the purpose of selling the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's out of pocket costs;
(ii) non-use or passive use of a domain name in the absence of any possible rights or legitimate interests constitutes bad faith;
(iii) the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark.
1. There is no question of the Respondent's use of KERRYMAID being confused with or misrepresenting the Complainant's trademark rights.
2. The Respondent has rights or legitimate interests in the disputed domain name:
(i) It has chosen a business name which implies a personal and individual service for Irish domestic services.
(ii) It intends to market in the United States where it is entitled to service market rights.
(iii) The Complainant is not entitled to seek to deprive the Respondent of a legitimate entitlement to use the disputed domain name.
(iv) The disputed domain name that has been registered is being used in bad faith:-
(a) the Respondent has had a plethora of enquiries and offers with regard to her domain name. She has been careful not to mention a sum for which she is willing to sell the domain name.
(b) the Complainant has no presence in the market in which it has no interest to prevent the Respondent using a domain name ideally suited to her business;
(c) the Complaint's "Eurocentric" and inflated view of its own product and brand is insufficient to justify removal of the disputed domain name from the Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Having considered the evidence adduced by the Complainant (and it is not disputed by the Respondent) the Panel is satisfied that the Complainant has registered trademark rights in the mark KERRYMAID in Class 29 as well as significant goodwill and reputation in the mark, giving rise to unregistered rights.
It should be noted that the Respondent accepts in the Response that the Complainant is "an international producer of consumer products and goods, primarily dairy products and in respect of the Complaint, the producer of a margarine or butter substitute".
The Respondent also asserts that the Complainant's business is "Eurocentric, focussed particularly on the British and Irish markets".
In the Panel's view (and it is not contested by the Respondent), the Complainant has registered trademark rights in the mark KERRYMAID as well as unregistered trademark rights and common law rights in Ireland and the UK.
The issue which the Panel has to consider is whether the disputed domain name KERRYMAID.com is identical or confusingly similar to the trademarks KERRYMAID.
The Complainant points out that the two marks which it relies upon are "lightly" stylised but this does not detract from the fact that the trademarks are registered for the word KERRYMAID. The Respondent takes the view that "there is no question of the Respondent's use of KERRYMAID being confused with or misrepresenting or forming the basis of a "passing off" action. It argues that the activities of the parties are in different fields of activity. The Complainant is in the business of producing and selling a butter substitute product whereas the Respondent is proposing to act as a provider of services for domestic and commercial cleaning.
In the Panel's view this is the wrong test to apply. The correct test to apply involves a consideration of the trademarks relied upon by the Complainant i.e., KERRYMAID and comparing the marks with the disputed domain name <kerrymaid.com>. The only distinction between the trademark and the disputed domain name is the generic Top-Level Domain ".com".
Accordingly, the Panel finds that the Complainant has trademark rights in the mark KERRYMAID and that the disputed domain name is identical to such rights.
B. Rights or Legitimate Interests
The Complainant relies upon the fact that there is no evidence to date of any use or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. It relies upon the previous UDRP r decision Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000‑1553 as authority that once a complainant has shown there is no evidence of any legitimate use of the mark, the burden falls upon the Respondent to show that the use of the domain name is legitimate.
The Complainant also relies upon the fact that the Respondent is not commonly known by the disputed domain name. The disputed domain name does not appear to be in commercial use. The evidence is that the Respondent Shirley Higgins is actively using the domain name at <cosyvilla.com>. There is of course no reason why the Respondent cannot register or use numerous domain names but for the purpose of this element the Panel considers it relevant that there is no active commercial use of the disputed domain name.
The Complainant also submits that the goodwill and reputation in its trademark KERRYMAID is such that the registrant must have been aware of it. Therefore any use made by the Respondent would have been with knowledge of the Complainant's trademark rights so that any use would potentially take advantage of the reputation and goodwill associated with the Complainant's marks KERRYMAID moreover any business operated using the disputed domain name would be designed and intended to attract consumers with a misrepresentation that it is associated with the Complainant. Even if a consumer realised at that point that there was no such association the Respondent would have benefitted from the initial confusion triggered by the Respondent's attracting a consumer who might otherwise not have visited the website.
The Complainant also relies upon the fact that the Respondent has been the owner of the disputed domain name since 2006 without using it. There is authority including Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques., WIPO Case No. D2000-0004 to the effect that after two years of non-use there is an implication that a Respondent does not have a bona fide intent to use the domain name.
The Respondent submits that it registered the disputed domain name as a business name which implied a personal and individual service in a market in which differentiation is essential and is a business name which targeted a particular demographic which has an affinity or affection for Irish domestic servant as encompassed by the phrase "Kerry Maid". This connotes a domestic maid service with an Irish (Co. Kerry) connotation rather than the use of "maid" in the sense of a young unmarried woman from Co. Kerry. The Respondent nevertheless concedes that its business is yet to be launched using the disputed domain name but that this should not connote a lack of bona fides.
The Respondent does not dispute that the Complainant's trademark rights exist in Ireland and the UK but no registrations exist in the target market of the United States. Essentially the Respondent has a clear and legitimate right of interest in the disputed domain name to use for the purposes of marketing domestic services in the United States.
The Complainant contends that the use of "kerrymaid" in the singular is not credible since a website involving the supply of maids from Dublin or Ireland would require registration of the domain names in plural e.g., <dublinmaids.com> or <irishmaids.com>. The registration of the disputed domain name in its singular form where the plural form would have been expected if it was intended as a reference to a generic or descriptive category of goods is consistent with a real intention to use the Complainant's mark. The Complainant submits that it is notable that the Respondent has not registered the obvious plural, and grammatically correct domain name <kerrymaids.com>.
The Complainant submits that it is irrelevant that the Complainant's registrations are in Ireland and the UK and not elsewhere including the United States. It is well established that in an action for transfer of a domain name, it is not necessary to prove that the Complainant has exclusive worldwide rights in the trademark.
Having considered the evidence and the arguments raised by the parties the Panel decides as follows:
1. There is no evidence that the Respondent has existing rights or legitimate interests in respect of the disputed domain name. The situation might be different if there was evidence of active use of the disputed domain name for the purposes of a website illustrating the provision of Irish domestic services, or even demonstrable preparations of plans for such use as described under the Policy. That is not the case. To the contrary Annex 9 and 10 to the Complaint show a blank website with comment to the effect that the Respondent is "excited about launching her new website soon".
2. The Panel does not consider the fact that the Complainant's trademark rights exist only in Ireland and the UK enable the Respondent to argue based on the facts before the Panel that it has rights or legitimate interests. The Respondent itself concedes that it is not necessary to prove that a complainant has exclusive worldwide rights.
3. It is true that the Complainant's trademark rights relate to the provision of products whereas the Respondent's alleged proposed use of the disputed domain name relates to the provision of services. In the Panel's view this distinction is immaterial under the terms of the Policy.
4. The Complainant through its evidence of its trademark rights has shown that such rights exist including in Ireland where they are reasonably well know and where the Respondent is resident. The Respondent must be deemed to be aware of the Complainant's trademark rights.
In the Panel's view the Complainant has succeeded in this element of the Policy.
C. Registered and Used in Bad Faith
The Respondent was contacted by the Complainant's agent in January 2014 who proposed a transfer of the domain name for a fee of GBP 1,000. This was refused by the Respondent who firstly said that her domain name was not for sale and subsequently said that she found the offer "insulting on many levels". She said that if the Complainant was serious she would "respectfully suggest, you get more serious… and substantially so". The Complainant relies upon this interchange as evidence of registration primarily for the purposes of selling the domain name registration to the Complainant in excess of out of pocket costs.
The Respondent disputes this. She argues that the Respondent was the recipient of a plethora of enquiries of offers and that at no time did the Respondent indicate a desire of willingness to transfer or sell her domain name.
In the Panel's view, the evidence is insufficient to demonstrate the disputed domain name was registered primarily for the sole purpose of selling the domain name registration for a consideration in excess of the Respondent's out of pocket costs. That this was the Respondent's intent cannot however be completely disregarded. It is nevertheless significant that the Respondent was contacted by the Complainant in the first instance.
The second argument raised by the Complainant as demonstrating bad faith is that non-use or passive use of a domain name may in some circumstance be evidence of bad faith. It relies upon the well-known decision of (Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003) which has been followed in many cases. In that case the panel could not conceive of any possible legitimate right or interest that the domain name owner could make of a famous coined mark.
In this case the evidence is clear that the Respondent would have been aware of the Complainant's trademark rights, that the Respondent has not used the disputed domain name since it was registered in 2006, the Respondent has avoided naming a specific price at which she will sell the disputed domain name but rejected an offer of GBP 1,000. She also stated that she is in contact with representatives of other "international companies" (for sale of the disputed domain name).
The Respondent argues that the Complainant cannot demonstrate any presence in the market in which it now claims the benefit of the trademark rights and that it is not entitled by virtue of registration of a trademark having limited geographical scope and a particular activity limited to the retail sale of a butter substitute to dispossess the Respondent of the use of a domain name ideally suited to a business unrelated to and incapable of confusion with the Complainant's product.
The Panel disagrees. The Respondent has notice of the Complainant's trademark rights particularly in Ireland and would be well aware of the goodwill and reputation of the mark KERRYMAID. Without clear evidence as to the Respondent's supposed business plans, the Panel finds it more likely than not that the Respondent registered the disputed domain name with the Complainant in mind, and that the Respondent sought to benefit from potential user confusion. On the facts before the Panel, this shows bad faith registration and use. Moreover, following the Telstra decision it is clear that there is non-use of the disputed domain name and that given the existence of and nature of the Complainant's trademark rights it is not possible to conceive of any possible legitimate use that would show good faith registration or use.
Accordingly the Panel finds that the Respondent's registration and use of the disputed domain name constitutes bad faith.
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 <kerrymaid.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 29, 2014