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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arthur Guinness Son & Co. (Dublin) Limited v. Executive Products Ltd.

Case No. D2000-1785

 

1. The Parties

The Complainant in this administrative proceeding is Arthur Guinness Son & Co. (Dublin) Limited, a corporation organized and existing under the laws of the Republic of Ireland, with its principal place of business located at St James’s Gate Brewery, Dublin 8, Ireland. It is a subsidiary of Diageo p.l.c.

The Respondent is Executive Products Ltd. with an address at County Meath, Ireland.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue in these proceedings are "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org". The Registrar with which the said domain names have been registered is Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

 

3. Procedural History

On December 21, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on December 27, 2000, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.

On December 29, 2000, the Center sent a Request for Register Verification to the Registrar and on January 1, 2001, the Registrar confirmed that a copy of the Complaint had been received by the Registrar, that the said domain names were registered by the Registrar, that the Respondent was the current registrant of all three said domain names, that the Policy applies to the said registrations and that the said domain names had licensed status.

In accordance with Paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules the Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules and that payment in the required amount had been made by the Complainant.

On January 4, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain names to the Respondent by Post/Courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on January 4, 2001, and that the Respondent was required to submit a Response to the Center on or before January 23, 2001.

No Response was received from the Respondent by the due date.

On January 30, 2001, the Center sent a Notification of Respondent Default to the Respondent and indicated that as the Complainant had designated a single member Administrative Panel, the Center would appoint a single member Administrative Panel from its published list.

On January 31, 2001, the Center invited James Bridgeman to act as Administrative Panel in these Administrative Proceedings and on February 6, 2001, having received a Statement of Acceptance and Declaration of Impartiality from said James Bridgeman, the Center proceeded to appoint this Administrative Panel. On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is the registered proprietor of a number of Irish trade mark registrations including Irish registered trademark "GUINNESS", registration number 38,205, registered on March 2, 1931, in international class 32 and Irish registered trademark "GUINNESS", registration number 99,605 on December 15, 1980, in international class 32.

The Complainant has submitted copies of the registration certificates for these trade marks and states that these Irish trade mark registrations are not, to the knowledge of the Complainant, the subject of any challenge to their validity.

In addition, the Complainant is the proprietor of more than 70 registered trademarks in various countries worldwide, for the mark "GUINNESS". The Complainant is also the registered proprietor of a large number of trademarks that include the word "GUINNESS" in numerous jurisdictions.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests this Administrative Panel to direct that the said domain names "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org" be transferred to the Complainant.

The Complainant submits that the said trademark "GUINNESS" is a famous mark. In addition to its registered trade marks in Ireland and throughout the world (as described above), the Complainant submits that it has common law trade mark rights in and to the trade mark "GUINNESS" in Ireland and in many other jurisdictions.

The Complainant submits that it began selling its "GUINNESS" brand products in Dublin, Ireland as early as January 1764, and the Complainant has exported beer products around the world since at least as early as 1769. Since then, through continuous sales, advertising and promotion, "GUINNESS" brand beers have become some of the world’s most famous and best-selling alcoholic beverages. The "GUINNESS" branded product is brewed in fifty countries and sold in one hundred and fifty countries. Approximately ten million glasses of "GUINNESS" brand products are purchased each day. Beer sold under the mark "GUINNESS" is heavily promoted and advertised throughout the world, and is the world’s market leader in the "black beer" or stout sector having approximately 80% of the world-wide market in that sector.

The Complainant's group of companies has a global presence on the Internet through its website "http://www.guinness.com". This site is accessible from anywhere in the world and contains extensive information about the "GUINNESS" brand, promotions, games and other material. In support of these submissions the Complainant has furnished a printout of the content of the said website current as of December 7, 2000.

The Complainant submits that the said domain names "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org" each contain a word which is identical to and/or confusingly similar to the Complainant's said registered trade marks. Further, the Complainant submits that the said domain names contain a word that is identical to the mark "GUINNESS" in which the Complainant submits it has common law trade mark rights.

The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in the said domain names given the worldwide fame and notoriety of the "GUINNESS" trade mark. Said domain names are not ones which another trader would legitimately choose unless that trader sought to: create an impression of an association with the Complainant; create an impression of an association with the Complainant's beers; attract business from the Complainant; and/or misleadingly divert members of the public from the Complainant to the Respondent.

The Complainant has not licensed or otherwise permitted the Respondent to use the said trade marks or any other trade mark incorporating the "GUINNESS" mark. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the "GUINNESS" mark. For these reasons, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the said domain names in issue.

Turning to whether the said domain names in issue were registered and are being used in bad faith by the Respondent, the Complainant submits that by virtue of the widespread use and reputation of the "GUINNESS" trade mark, members of the public in Ireland and around the world would mistakenly believe the Complainant to be the registrant of the said domain names or said domain names to be in some way associated with the Complainant, especially given the meaning of the word "pubs" in the English language.

Given the widespread use and fame of the "GUINNESS" mark, the Complainant submits that the Respondent must have been aware that in registering the domain names they were misappropriating the valuable intellectual property of the owner of the "GUINNESS" trade mark.

The Complainant further submits that by registering the said domain names, the Respondent engaged in a pattern of conduct which prevents the Complainant from registering domain names which correspond to the Complainant’s trade marks contrary to paragraph 4 (b)(ii) of the Policy. It is further submitted that the said domain names were registered in circumstances which indicate that the Respondent acquired said domain names primarily for the purpose of selling, renting or otherwise transferring said domain names registration to the Complainant owner of the relevant trade marks in breach of paragraph 4(b)(i) of the Policy.

In support of its allegations of bad faith on the part of the Respondent, the Complainant states that on October 19, 2000, the Complainant's Irish lawyers wrote to the administrative contact of the Respondent, objecting to the registration of the said domain names and requesting that the said domain names be transferred to the Complainant. On November 19, 2000, a reply was received from lawyers representing the administrative contact stating that the administrative contact failed to see how any confusion could arise and refusing to transfer the said domain names.

The Complainant states that the Respondent is not using any of the said domain names "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org" for active websites, and submits that this further supports the Complainant's position that the Respondent registered the said domain names at issue in bad faith and possibly for the purpose of selling, renting or otherwise transferring the said domain names to the owner of the "GUINNESS" trade mark or to a competitor of the Complainant.

The Complainant further submits that the Respondent will never be capable of using the said domain names for legitimate purpose as the notoriety of the "GUINNESS" trade mark is such that members of the public will always assume that there is an association between the Respondent and the said "GUINNESS" trade mark.

Therefore, having regard to all the facts and circumstances, the Complainant submits that the domain names in issue were registered and are being used in bad faith.

The Complainant refers to the comments of the administrative panels in two earlier successful complaints, viz. Diageo p.l.c. v. John Zuccarini (WIPO Case No. D2000-0541) and Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol (WIPO Case No. D2000-0996). In each of these administrative proceedings the respective administrative panel ordered the transfer of third party domain names containing the "GUINNESS" trade mark or typographical variations of the "GUINNESS" trademark. The Complainant submits that these cases confirm the legitimacy of the Complainant’s claim to have rights in the "GUINNESS" name and that the registration of "GUINNESS" (or related) domain names by third parties unconnected with the Complainant amounts to bad faith on the part of the Registrant.

B. Respondent

No Response was filed by the Respondent, however, the Complainants have put in evidence a letter (referred to supra) from the solicitor for the administrative contact of the Respondent dated November 16, 2000. The Respondent's position as of that date is set out in the said letter, which states inter alia:

"The contents of your correspondence are noted with some surprise as our Client does not and has no wish to associate with your Client, and fails to see how any reasonable person could associate or connect our Client with yours any more than those in the telephone book and other directories who have within their name the word Guinness. Your Client need have no concerns about confusion as our Client does not intend that there will be any and we fail to see how you can allege damage to your Clients good will and injury as you so allege."

 

6. Discussion and Findings

The onus is on the Applicant to prove that: -

(i) the domain names are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the said domain names; and

(iii) the said domain names were registered and are being used in bad faith.

The Complainant has furnished sufficient evidence to satisfy this Administrative Panel that it has rights in the trade mark "GUINNESS" and has further established that the said trade mark is a famous mark registered in numerous jurisdictions by the Complainant and other members of the Complainant's group of companies in respect of beer and alcoholic beverages.

Whether a domain name is confusingly similar to a trademark or not is a question of fact in each case and although the Complainant has referred to the decisions of the administrative panels in earlier administrative proceedings viz. Diageo p.l.c. v. John Zuccarini (WIPO Case No. D2000-0541) and Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol (WIPO Case No. D2000-0996), this Administrative Panel must compare the domain names in issue in these proceedings and trademark in issue in these proceedings and is not concerned with other domain names and other proceedings. The facts in earlier administrative proceedings are not relevant in this regard.

The Respondent's position is that there is no such likelihood of confusion. In the inter partes correspondence referred to above, the lawyer representing the administrative contact for the Respondent stated that the Respondent has no wish to be associated with the Complainant, and fails to see how any reasonable person could associate or connect the Respondent with the Complainant any more than those in the telephone book and other directories who have within their name the word Guinness.

The said letter goes on to state that the Respondent's position is that the Complainant need have no concerns about confusion as the Respondent does not intend that there will be any confusion and the Respondent fails to see how the Complainant can allege damage to the Complainant's good will.

In deciding this question of fact, this Administrative Panel can be assisted by the formulae indicated in case law and decisions of earlier administrative panels

As both parties are resident in Ireland, it would seem to be appropriate to apply Irish law to this question. To date there has been no decision of the Irish Superior Courts to assist. The question has however been canvassed in other administrative proceedings and in the courts of other jurisdictions.

In Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico WIPO case D2000-0477 the question of confusing similarity was considered in the following terms:

"The question whether a domain name and a trademark are confusingly similar involves the application of a multifactored test exemplified in the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The Sleekcraft factors are directed to whether there is a "likelihood of confusion" between two marks. While developed in the context of comparing two trademarks, the Sleekcraft factors have more recently been employed by the federal courts to compare domain names to trademarks, and domain names to domain names. The Sleekcraft factors were, for example, employed by the federal district court in Bally Total Fitness … The Sleekcraft factors were relied upon by the Court of Appeals for the Ninth Circuit in Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1053-61 (9^th Cir. 1999).

In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated eight factors to be weighed on the question of likelihood of confusion. These are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines."

Applying the Sleekcraft test, this Administrative Panel concludes as follows:

1) strength of the mark: the Complainant has established that "GUINNESS" is a famous mark with a long history and has developed a worldwide fame;

2) proximity of the goods: the Complainant's core business is the brewing and sale of beer, although there is no evidence that the Respondent is engaged in any business whatsoever, it would seem clear that the descriptive character of the said domain names, each containing a reference to pubs, would seem to infer a connection with the sale of alcoholic beverages;

3) similarity of the marks: to date the Irish courts have not addressed the rules of comparison for domain names with trademarks, however in Coca-Cola v. F Cade & Sons Limited [1957] I.R. 196, the Irish Supreme Court applied the test for the comparison of trademarks set out by Parker J. in In Pianotist Co's Application (1906) 23 R.P.C. 774 at 777 as follows:

"You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for goods of the respective owners of the marks."

Applying this test, this Administrative Panel is conscious that the Complainant's "GUINNESS" trademark registered in respect of beer is the initial element in each of the said domain names and the second element in each of the said domain names is a reference to pubs i.e. public houses or licensed premises;

1) evidence of actual confusion: the Complainant has not submitted any evidence of actual confusion in the marketplace, however, the Respondent has not linked the said domain names to any website as yet;

2) marketing channels used: as all domain names are by their nature addresses for websites, this element does not assist this Administrative Panel in these Administrative Proceedings;

3) type of goods and the degree of care likely to be exercised by the purchaser: in the view of this Administrative Panel, given the connection between the goods in which the Complainant trades and the use of the element "pubs" in each of the said domain names, it is likely that this would cause at least an initial confusion among persons interested in Irish pubs, surfing the Internet, as to whether the Respondent's proposed website was connected with the Complainant;

4) the Respondent's intent in selecting the mark: In applying the Sleekcraft test to a comparison of trademarks and domain names in the context of ICANN administrative proceedings, this element of the test would apply to the Respondent's intention in selecting the domain name, there is no evidence as to why these domain names were chosen. This Administrative Panel takes an inference from the fact that the Respondent has not given any explanation as to why they chose to register a domain name which incorporates the Claimant's famous trade mark along with a word which is an obvious reference to a trade in alcoholic beverages, which is the Complainant's primary product in circumstances where the Respondent have not made any claim to any connection with the Guinness name or to any trade in draught beer;

5) likelihood of expansion of the product lines: on the evidence submitted, this element of the test does not appear to be relevant.

This Administrative Panel therefore concludes that the said domain names are confusingly similar to the Complainant's said trade mark as the Complainant has rights in a famous mark registered and used by the Complainant in respect of beer whereas each of the said domain names contains a reference to pubs.

Laying the said domain names and the said trademark side by side and comparing them in the context of the surrounding circumstances leads to the inevitable conclusion that there is a strong similarity. This conclusion is reached by this Administrative Panel considering both the visual and aural similarity of the domain names and the Complainant's trademark.

It is likely that there would be an initial confusion among persons visiting a website as proposed by the Respondent.

Finally, given the fame of the Complainant's mark, and the fact that the said domain names are a combination of the Complainant's mark in respect of the sale of beer and the element "pubs" which is an obvious reference to a licensed premises engaged in a trade in alcoholic beverages, this Administrative Panel takes an inference that the Respondent chose the said domain names to endeavor to take advantage of the similarity between the said trade mark and the said domain names.

In reaching this conclusion this Administrative Panel refers to the approach taken by the administrative panel in the NAF decision (NAF FA95080 of July 24, 2000) where it was stated:-

"Courts and other UDRP Panels have recognized that the intentional registration of a domain name while knowing that the second-level domain contains another’s valuable trademark weighs in favor of a likelihood of confusion. See Minnesota Min. and Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1235-1236 (N.D.Ill. 1996)."

Moving on to decide whether the Respondent has any right or legitimate interest in the said domain names, while this Administrative Panel does not accept the implication in the Complainant's submissions that the Respondent should automatically be considered as having no rights or legitimate interests in the said domain names in view of the worldwide fame and notoriety of the "GUINNESS" trade mark, nonetheless, because each of said domain names is a combination of the Complainant's famous trade mark and the word "pubs" with its obvious association with a trade in alcoholic beverages, on balance, this Administrative Panel takes the view that the Complainant has established a prima facie case that the Respondent has no such right or legitimate interest.

In the absence of a Response, the only statement of the Respondent's position is in the above exchange of inter partes correspondence. There is no evidence, or even any suggestion of any use of, or demonstrable preparations to use, the domain names in issue or any names corresponding to the said domain names in connection with a bona fide offering of goods or services, in fact there is no evidence that the Respondent is engaged in any business whatsoever. In this regard the fact that the Respondent has not established any website is significant.

Furthermore, there is no evidence that the Respondent (as an individual, business, or other organisation) has been commonly known by the said domain name. The Respondent has referred to the fact that there are other persons named "GUINNESS" in "the telephone book or other directories", however there is no suggestion that the Respondent is so named.

Neither is there any suggestion that the Respondent is making a legitimate noncommercial or fair use of the said domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As to the question of bad faith, the Complainant has submitted that by virtue of the widespread use and reputation of the Respondent's trademark, members of the public in Ireland and around the world would mistakenly believe that the registrant of the said domain names is the Complainant or is in some way associated with the Complainant. Although it is also alleged that the Respondent has acquired said domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant or to a competitor of the Complainant in breach of paragraph 4(b)(i), there is no evidence of this.

In the view of this Administrative Panel, given the established reputation of the Complainant's trade mark and the strength of that mark, despite the Respondent's assertion to the contrary, it is very likely that a reasonable person would associate said domain names with the Complainant.

Paragraph 4(b) of the Policy sets out examples of circumstances that are evidence of bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b)(iv) gives as an example, circumstances where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's website or location.

Although the circumstances outlined in 4(b)(iv) refer to circumstances where there is an established website, and whereas in these Administrative Proceedings no such website is has been established, the circumstances outlined in paragraph 4(b) of the Policy are expressed to be "without limitation" and are non exhaustive. It is clear that any use of the said domain names by the Respondent would inevitably result in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's website or location.

Such use would be intentional because it is clear to this Administrative Panel, that the Respondent is aware of the reputation of the Complainant's trade mark and the Respondent must have known of the Complainant's famous trade marks when the said domain names were registered or acquired. Furthermore, despite the denials of the Respondent, the Respondent must have known that in selecting said domain names being a combination of the Complainant's trade mark and the word "pubs", any use of such domain names would result in a likelihood of confusion on the Internet.

In the above circumstances, on balance, this Administrative Panel is satisfied that the Complainants have made out a prima facie case that the Respondent has registered and is using the said domain names in bad faith. This Administrative Panel is confirmed in this view by the fact that the Respondent has not established any website accessible via said domain names.

 

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the said domain names "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org" that are confusingly similar to the Complainant's trade mark, that the Respondent has no rights or legitimate interest in respect of those domain names and that the Respondent has registered and is using said domain names in bad faith. Accordingly, this Administrative Panel decides that said domain names "guinnesspubs.com", "guinnesspubs.net" and "guinnesspubs.org" should be transferred to the Complainant.

 

 

James Bridgeman
Sole Panelist

Dated: February 20, 2001