WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greene King PLC, Greene King Brewing and Retailing Limited v. Belize Domain WHOIS Service Lt.

Case No. D2010-1752

1. The Parties

The Complainants are Greene King PLC and Greene King Brewing and Retailing Limited, both of Suffolk, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”) represented by Birketts LLP, United Kingdom.

The Respondent is Belize Domain WHOIS Service Lt. of Belize, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <greeneking.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2010. On October 18, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On October 18, 2010, Intercosmos Media Group d/b/a directNIC.com. 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, and the proceedings commenced on October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2010.

The Center appointed John Swinson as the sole panelist in this matter on November 24, 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 the Rules, paragraph 7.

4. Factual Background

The first Complainant, Greene King PLC, was incorporated on June 1, 1887 and has grown to become an internationally known brewer. The second Complainant, Greene King Brewing and Retailing Limited, is a wholly owned subsidiary and operating company of the first Complainant. Both parties shall be collectively referred to as the Complainant.

The Complainant owns registered trademarks for GREENE KING in both the United Kingdom and the United States of America, including:

- United States Trademark Registration No. 2046344, registered March 18, 1997 (GREENE KING word mark); and

- United Kingdom Trademark Registration No. 1520024, registered January 21, 1994 (GREENE KING word mark).

No information was provided about the Respondent.

The disputed domain name was created on October 27, 1998. The website resolving from the dispute domain name is used as a landing page displaying various categories of sponsored listings.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant has used the mark GREENE KING in relation to “beer, ale, lager, stout and porter and non-alcoholic malt beverages (beer substitute containing less than 0.5% alcohol)” since at least May 6, 1965 and the mark has been used in commerce in the United States of America since at least August 19, 1994. The Complainant owns the following registered trademarks:

- United States Trademark Registration No. 2046344, registered March 18, 1997 (GREENE KING word mark);

- United Kingdom Trademark Registration No. 1520024, registered January 21, 1994 (GREENE KING word mark); and

- United Kingdom Trademark Registration No. 2331256, registered May 3, 2003 (GREENE KING word mark).

The Complainant has rights in the trademark GREENE KING. This trademark is entirely incorporated in the disputed domain name with no other features; therefore the disputed domain name is identical to the Complainant’s trademark.

The disputed domain name resolves to a website that displays various categories of sponsored listings. The categories of sponsored listings displayed include “Greene King”, “Hungryhorse”, “Nottingham”, “London Pub”, “UK”, “Greene” and “Brew”. One of the categories listed, “Hungry Horse”, is also a name in which the Complainant has rights (see United Kingdom Trademark Registration No. 2017521 for HUNGRY HORSE, June 7, 1996). When a user goes to one of the sponsored advertisements under this listing, they are redirected to a website, “www.hungryhouse.com” which offers a service to customers trying to identify take away food outlets. This website is not connected to or affiliated with the Complainant.

The disputed domain name is therefore being used to intentionally attract Internet users who are seeking information on the Complainant and its products, and to direct them to websites that are not connected to the Complainant. It is clear that while the disputed domain name is being used by the Respondent, such use is not a bona fide use. The Respondent is making commercial, unfair use of the disputed domain name with intent for commercial gain (and is not a licensee or an affiliate of the Complainant).

The Complainant has grown to become an internationally known brewer, producing a number of well known sub-brands under the GREENE KING brand including Greene King IP and Abbot Ale. The first Complainant’s turnover for the financial year 2009-2010 exceeded ₤950 million.

The Complainant’s brands and the trademarks associated with those brands are of paramount importance to the Complainant. The Complainant also operates a number of websites including “www.greeneking.co.uk”, “www.greenekingpubs.co.uk”, “www.greenekingipa.co.uk”, www.greenekingshop.co.uk” and “www.greenekingrugby.co.uk”. These websites provide information about the Complainant’s history and trading activities as well as an on-line shop. These websites also reflect the Complainant’s various sponsorship interests.

Due to the Complainant’s national and international reputation, the Complainant believes that it is inconceivable that the Respondent was unaware of the GREENE KING brand and/or trademarks as at the date of registering or acquiring the disputed domain name. Further, the fact that the Respondent’s website refers to another of the Complainant’s trademarks (HUNGRY HORSE) but provides a link to an unrelated website, demonstrates that the Respondent is aware of and is prepared to take advantage of the Complainant’s brands and registered trademarks.

In view of the national and international reputation of the Complainant’s brand and trademarks and the use that is made of these, the Complainant believes that the dispute domain name was acquired deliberately with the purpose of selling it to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the acquisition of the domain name, and/or with the intention of attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source of sponsorship, affiliation or endorsement of the website.

Finally, the Respondent has been the respondent in a number of Administrative Panel decisions (at least 35), including American Medical Software v. Belize Domain WHOIS Service Ltd, WIPO Case No. D2010-1004; KNAUF Insulation Holding GmbH, KNAUF Insulation SPRL v. Belize Domain WHOIS Service Ltd; WIPO Case No. D2010-1218 and John Muir Health v. Belize Domain WHOIS Service, WIPO Case No. D2010-0693. In all of these decisions, the domain name in question was ordered to be transferred to the complainant.

B. Respondent

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

6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a trademark 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 is on the Complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of a registered trademark in both the United States and the United Kingdom for the word mark GREENE KING. For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The disputed domain name reproduces the Complainant’s trademark in its entirety and contains no other distinguishing features. It is well established that the “.com” suffix can be ignored for this purpose.

The Panel therefore finds that the disputed domain name is clearly identical to a registered trademark in which the Complainant has rights.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant in this case is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has advised that it is not associated with the Respondent in any way. It can reasonably be inferred that the Complainant has not licensed or otherwise authorised the Respondent to use its GREENE KING trademarks or name at any time.

The disputed domain name is being used in connection with a website that operates as a landing page showing sponsored listings, which are set out in various categories. The Complainant has provided a printout of the Respondent’s website from September 14, 2010. The categories of sponsored listings at this time included “Greene King”, “Hungryhorse”, “Nottingham”, “London Pub”, “UK”, “Greene” and “Brew”. The Panel has recently viewed the Respondent’s website and notes that the categories of sponsored listings have since changed, however it will rely on those listed at the time of the Complaint (as shown in the printout provided by the Complainant) as it is possible that the website was changed after filing of the Complaint, to try and avoid an adverse finding under these proceedings or that different geographic locations show different versions of the Respondent’s website.

The Complainant contends that the website resolving from the disputed domain name is being used to intentionally attract Internet users who are seeking information about the Complainant and its products and then directing them to websites that are not connected to the Complainant. The Respondent’s website clearly advertises “Greene King” (the Complainant’s trademark and brand) as well as other related categories of listings such as “London Pub” and “Brew”. For example, the sponsored listings for “London Pub” include listings for London hotels and restaurants, as well as a new set of categories of sponsored listings including “Pub Quiz”, “Temple Bar Hotel” and “Drinking Game”. An Internet user could believe this is the Complainant’s website (or that it is affiliated with the Complainant) given that the categories relate to the very industry in which the Complainant operates. The Respondent’s website also advertises the category of “Hungryhorse”, a name in which the Complainant also has rights (see United Kingdom Trademark Registration No. 2017521 for HUNGRY HORSE). The Complainant’s HUNGRY HORSE trademark is registered in relation to various foods, alcoholic beverages and restaurants (see also United Kingdom Trademark Registration No. 2331256, for GREENE KING, which is also registered in relation to restaurants and the provision of food and drink). When a user clicks on the “Hungryhorse” link they are redirected to sponsored advertisements, including one for “www.hungryhouse.com”, a website wholly unconnected to the Complainant. This website offers a service to customers trying to identify take away food outlets and therefore advertises services in the same industry (food and beverage) as the Complainant.

The Complainant contends that the disputed domain name is therefore being used to intentionally attract Internet users who are seeking information on the Complainant or its business and to direct them to websites that are not connected to the Complainant. In most cases, an Internet user is directed to competing websites within the same industries (brewing, pubs and restaurants) as the Complainant. The Complainant contends that this use of the domain name is not a bona fide use. The Complainant further contends that the Respondent is making commercial, unfair use of the disputed domain name with intent for commercial gain. It is well established that landing pages with sponsored listings built around or relying on a trademark (compared to landing pages built around a dictionary term) do not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy (see mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

By failing to submit a Response, the Respondent has not provided any explanation as to why it selected or registered the disputed domain name. All the evidence available to the Panel suggests that the Respondent selected and is using the disputed domain name because it is identical to the Complainant’s brand and trademarks for GREENE KING, which has potential to generate a significant amount of Internet traffic by mistake due to user confusion. This is not bona fide, or legitimate or fair use within the meaning of paragraph 4(c) of the Policy.

Moreover, the Panel is able to presume that the Respondent has no rights to or legitimate interests in the disputed domain name, based on the Respondent’s failure to respond to the Complainant’s allegations. See for example, Geocities v. Geociites.com, WIPO Case No. D2000-0326 and Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221, where the respondents’ failure to respond was construed as an admission that they had no legitimate interest in the domain names.

The Panel notes that the Complainant has been brought more than 10 years since the disputed domain name was registered. The generally recognised position has been that there is no limitation period under the Policy and that the doctrines of acquiescence or laches do not apply in UDRP proceedings. However, a recent case of New York Times Company v. Name Administration Inc. (BVI), NAF Case No. FA1009001349045 found that laches or delay may be a defence to a complaint. As an aside, the factual circumstances in this dispute are different to those in New York Times Company v. Name Administration Inc. (BVI), Supra. Without agreeing with all reasoning in that decision, here, the disputed domain name was registered after the Complainant obtained registered trade mark protection in the United Kingdom and the United States of America, and the Respondent's use of the domain name is not, as discussed above, legitimate. Thus, there is no compelling set of facts that should deny the Complainant's rights to succeed under the Policy.

On balance, without any response from the Respondent as to the circumstances in which it registered the disputed domain name and its reasons for doing so, the Complainant has made a prima facie case that has not been rebutted by the Respondent and the Panel finds that the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances which if found by a panel shall be evidence of registration and use of a disputed domain name in bad faith.

The Complainant contends that due to its national and international reputation, it is inconceivable that the Respondent was unaware of the GREENE KING brand and/or trademarks as at the date of registering or acquiring the disputed domain name. Furthermore, the Complainant contends that the fact that the Respondent’s website refers to another of the Complainant’s trademarks (HUNGRY HORSE) demonstrates that the Respondent is aware of the Complainant’s other brands and registered trademarks.

As well as the HUNGRY HORSE trademark, the Respondent’s website also advertises related sponsored listings under different categories, including “Greene King”, “London Pub”, “Hungryhorse” and “Brew”. The first Complainant, Greene King PLC, was incorporated on June 1, 1887. The Complainant has advised that it has used the mark GREENE KING in relation to “beer, ale, lager, stout and porter and non-alcoholic malt beverages (beer substitute containing less than 0.5% alcohol)” since at least May 6, 1965 and the mark has been used in commerce in the United States of America since at least August 19. 1994. From a review of the Complainant’s website, “www.greeneking.co.uk” it is apparent that the Complainant has an expansive business, encompassing brewing as well as the leasing, managing and owning of pubs (which include restaurants and hotels). Given the reputation of the Complainant and its brand, as well as the content placed on the Respondent’s website prior to the Complaint being filed, the Panel considers the Respondent most likely chose the disputed domain name with an intention of confusing Internet users, and to trade on the Complainant's valuable goodwill in its GREENE KING trademark.

The fact that the homepage of the Respondent’s website (as viewed recently by the Panel) is now showing different content to the time of the Complaint does not mean that the domain name is not “being used in bad faith”. In Telcel, C.A. v. jerm and Jhonattan Ramirez, WIPO Case No. D2002-0309 it was determined that “a sufficiently proven one-time bad faith use satisfies the wording and meaning of the UDRP, in that it requires that the domain name ‘is being used’ in bad faith” (see also Ingersoll-Rand Co. v. Frank Gully, d/b/a Advomren, WIPO Case No. D2000-0021). It is also possible that the website was changed after filing of the Complaint, to try and avoid an adverse finding under these proceedings or that different geographic locations show different versions of the Respondent’s website. The Panel will therefore continue to rely on the content on the Respondent’s website as shown in the printouts provided by the Complainant.

The Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with its trademarks as to the source of sponsorship, affiliation or endorsement of the Respondent’s website. The Panel finds that the Complainant is well known, such that Internet users searching for the Complainant or its goods or services are likely to recognise the term in the disputed domain name as being associated with the Complainant (see Vivo S.A. and Portelcom Participações S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925). The Respondent receives a “commercial gain” via the revenue it receives for the sponsored listings advertised on the website resolving form the disputed domain name. This conduct is an example of registration and use of the disputed domain name in bad faith under 4(b)(iv) of the Policy.

Furthermore the Respondent has engaged in a pattern of registering domain names reflecting third party trademarks or brands, and this conduct is considered another example of bad faith under paragraph 4(b)(ii) of the Policy (Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128). See for example:

- Swank Motion Pictures, Inc. v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1427;

- Eurosport v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-0077; and

- The Guardian Life Insurance Company of America v. Belize Domain WHOIS Service Lt, WIPO Case No. D2008-1087

These decisions clearly show a pattern of the Respondent registering domain names which are confusingly similar to well known trademarks or brands, which in the Panel’s view, is evidence of bad faith.

The Complainant also contended that the Respondent deliberately acquired the disputed domain name for the purpose of selling it to the Complainant. In the absence of any further evidence, the Panel is unable to make a finding of bad faith in this regard.

On the evidence available to it, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

Accordingly, the third element has been met.

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 name <greeneking.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: December 2, 2010