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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Desnoes & Geddes, Ltd. v. Cory Legue
Case No. D2002-0659
1. The Parties
The Complainant in this proceeding is Desnoes & Geddes, Ltd. (the "Complainant"), a company incorporated under the laws of Jamaica, with its main address at 214 Spanish Town Road, P. O. Box 190, Kingston 11, Jamaica. Complainant’s authorized representative is Paul Cox, S. J. Berwin, 222 Graves Inn Road, London WC1X 8XF, United Kingdom.
The Respondent in this proceeding is Cory Legue (the "Respondent"), an individual with an address of 101-275 Queens Avenue, London, Ontario N6B 1X2, Canada.
2. The Domain Name and Registrar
The domain name at issue is <redstripelager.com> (the "Domain Name"), registered with TierraNet, Inc. (the "Registrar"), of San Diego, California.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the rules for the Policy, approved by ICANN on October 24, 1999, (the "Rules") and the Supplemental Rules for the Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").
The Complainant submitted its complaint to the Center on July 16, 2002, by e-mail, and on July 18, 2002, in hard copy. The Center requested registration verification details from the Registrar on July 17, 2002. On July 18, 2002, the Registrar confirmed that the Domain Name was registered to Respondent, that the Domain Name is subject to the Policy, and that the Domain Name is currently active. The Center conducted its compliance review and verified on July 19, 2002, that the complaint satisfies the formal requirements set out in the Policy, the Rules and the Supplemental Rules. On this same date, the Center notified Respondent that the administrative proceeding had been commenced against it and set the date for reply as August 8, 2002. Respondent did not submit a response. On August 12, 2002, the Center notified the Respondent of its default in the proceeding. On August 23, 2002, having received Mr. Arif Hyder Ali’s Declaration of Impartiality and Independence and Statement of Acceptance, the Center transmitted a copy of the complaint to Mr. Ali (the "Panel"). The date of decision was set for September 6, 2002.
4. Factual Background
Complainant owns trademark registrations across the world to the mark RED STRIPE and to variations on this mark. Complainant has provided evidence of registrations of the mark RED STRIPE in the United States, United Kingdom, Germany, Canada, Benelux, France, Italy and Spain.
The whois database shows that Respondent registered the Domain Name on May 10, 2000. To date, the Panel has verified that the <redstripelager.com> domain name resolves to no active web page.
The evidence provided by Complainant shows a series of communications between Complainant and Respondent concerning the registration of the Domain Name.
On March 1, 2001, Complainant contacted Respondent informing Respondent of Complainant’s rights in the RED STRIPE mark and requesting that Respondent transfer the <redstripelager.com> domain name to Complainant.
On March 6, 2001, Respondent wrote back to Complainant informing Complainant that he was aware of the RED STRIPE trademark, but did not believe that Complainant had any rights to the term Red Stripe Lager. Nevertheless, Respondent agreed to transfer the rights to <redstripelager.com> to Complainant for an amount of $7,847.52 and an open invitation to tour the Red Stripe beer brewery. Respondent noted that the money and the opportunity to tour the brewery would compensate him for his time and effort that he spent on registering the Domain Name and working on design ideas for the corresponding website.
On March 20, 2001, Complainant wrote back to Respondent. Complainant argued that $7,847.52 was an excessive amount for Complainant to pay to transfer the rights and again requested that Respondent transfer the rights to their <redstripelager.com> domain name to Complainant. Complainant pointed out to Respondent that his actions seemed to indicate bad faith and that there was no evidence that Respondent had spent anytime at all designing or developing any ideas for the website.
On March 27, 2001, Respondent responded to Complainant informing Complainant that the amount requested was not an offer to sell the Domain Name but rather an amount to compensate him for his time and labor. Respondent also argued that he had indeed invested time and effort on developing ideas and that it was irrelevant that no evidence of any effort was reflected on the website.
On September 7, 2001, Complainant wrote again to Respondent this time offering to pay Respondent Ј500 (approximately $725) to compensate Respondent for his out-of-pocket expense in connection with the registration of the <redstripelager.com> domain name, and again requesting that Respondent transfer registration of the Domain Name to Complainant. Complainant again reiterated its position that Respondent was in fact entitled to nothing for registration of the <redstripelager.com> domain name and that they indeed believed that Respondent was acting in bad faith in asking for any amount.
On September 16, 2001, Respondent contacted Complainant for one last time stating that he would now be willing to accept Ј2000, approximately $3100, as a final and fair compromise to the matter between the parties. Once again, Respondent explained that he was not offering to sell the Domain Name, but was trying to compensate himself for time and money invested in registering the Domain Name in developing ideas that he had in connection with that registration.
5. Parties’ Contentions
A. The Complainant
Complainant first contends that Respondent’s use of the Domain Name infringes on Complainant’s rights because the Domain Name is identical or confusingly similar to the marks in which Complainant has rights. As evidence of its rights, Complainant provides a history of Red Stripe lager and excerpts are taken from the report provided by Complainant to illustrate the richness of that history.
Desnoes & Geddes, Ltd. was formed in 1918, in Jamaica by Eugene Desnoes and Thomas Geddes. In its early years, the company made popular sodas and distributed the best imported liquors. Desnoes & Geddes also had a dream that they would build a brewery and produce a Jamaican beer of international quality. In 1927, Desnoes & Geddes, Ltd. announced the opening of the Surrey Brewery in the heart of downtown Kingston, Jamaica. The first Red Stripe beer was brewed in 1928.
The birth of Red Stripe beer was considered to be a milestone in Jamaican history. In fact, when Jamaica gained independence from Great Britain in 1962, the columnist for Jamaica’s newspaper wrote: "The real date of independence should have been 1928, when we established our self respect and self confidence through the production of a beer far beyond the capacity of mere colonial dependence."
The Red Stripe beer that is enjoyed around the world today was first brewed in 1934. It proved so popular that in 1935, Jamaica’s British Governor wrote London in alarm that Red Stripe beer was so excellent and so affordable that English beers were unable to compete. The British Government replied that Red Stripe should be taxed, that British imports would be free from the tax. Public outcry followed and this order was quickly withdrawn.
During World War II, large groups of Canadian and American troops came to Jamaica. Sales of Red Stripe beer soared. Over the years, Red Stripe beer sales flourished, and in 1958, Desnoes & Geddes, Ltd. expanded the company through the construction of the most modern brewery in the entire Caribbean. By 1970, the business had expanded to such an extent that it became a public company. In 1976, when Desnoes & Geddes, Ltd. decided to have Red Stripe beer brewed and bottled in the United Kingdom, they selected Charles Wells Limited, the most modern independent brewer in the U.K. This brewery was well-equipped to capture the special flavor of Red Stripe beer that originated in the Caribbean.
The Complainant is now owned by the Guinness Group and has developed its Red Stripe brand into an international business. The Complainant has advertised and promoted Red Stripe worldwide, including in Canada. Over the last 5 years, the Complainant has spent over $17 million US dollars on advertising the Red Stripe brand worldwide. The legacy of excellence that began in 1918, as a venture between two young men continues to prosper and grow.
Complainant asserts that the Domain Name is identical to and/or confusingly similar to the marks in which Complainant has interests because the Domain Name contains the words of the Complainant’s mark and adds only a generic word which is clearly associated with the Complainant and its marks.
Complainant next contends that Respondent has no known rights or legitimate interests in respect of the Domain Name. In support of this contention, Complainant argues that Respondent: (a) is not using the name in connection with any bona fide offering of goods or services; (b) is not commonly known by the Domain Name; (c) has not been licensed by Complainant to use the Domain Name; (d) is not making a legitimate non-commercial or fair use of the Domain Name; and (e) cannot establish any legitimate interest in the Domain Name given the famousness of Complainant’s RED STRIPE mark and the almost certain association by the public of the <redstripelager.com> domain name with Complainant.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant provides the following two main contentions as evidence of Respondent’s bad faith registration of the Domain Name: Respondent registered <redstripelager.com> on May 10, 2000, and to date it has never resolved to an active website; and Respondent first offered to accept $7,847.52 and an open invitation to tour the Red Stripe brewery and then later approximately $3,100 in exchange for transferring the Domain Name to the Complainant.
B. The Respondent
Respondent did not submit a response.
6. Discussions and Findings
As a preliminary matter, the Panel finds that the Center’s formalities compliance review was performed correctly and that the Respondent had proper notice of this administrative proceeding.
Paragraph 15(a) of the Rules provides the following instructions: "A Panel shall decide the complaint based on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any Rules and principles of law that it seems applicable." As the Respondent did not submit a response, the Panel will render its decision based wholly on the complaint and prior WIPO decisions.
The Panel further notes the guidance provided in paragraph 14(b) of the Rules: "If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement, these Rules or any requests from the Panel, the Panel should draw such inferences therefrom that it considers appropriate."
Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:
(i) That the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interest in respect to the Domain Name; and
(iii) That Respondent’s Domain Name has been registered and used in bad faith.
Each of these elements is discussed below.
A. Similarity of Complainant’s trademarks and Respondent’s Domain Name
Complainant contends that the Domain Name in dispute contains words which are identical to and/or confusingly similar to Complainant’s trademarks and further states that addition of the word "lager" does not mitigate against the Domain Name as a whole being found confusingly similar to Complainant’s trademarks. The Panel agrees. The domain name in dispute incorporates the entire trademark of Complainant and then adds the word "lager." Lager is descriptive of the product on which the RED STRIPE mark is used. Adding a term to a registered trademark does not avoid a finding of confusing similarity, especially, as here, where the added term is generic or descriptive. As explained in NCP Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387 (July 5, 2000), "[r]espondent does not, by adding a generic noun or common descriptive term or adjective following a word or letter mark, create a new or different mark."
The Panel finds for the Complainant on element (i).
B. Respondent’s Rights or Legitimate Interests in the Domain Name
The Panel next examines whether the Respondent has any rights or legitimate interests in the Domain Name.
Respondent has no rights in the Domain Name: the Domain Name does not reflect the name of Respondent’s corporate identity, and there is nothing to show that Respondent, Cory Legue, is commonly known by the Domain Name; Complainant has not given permission to Respondent to use the Domain Name in any way; and Respondent does not have any rights to any trade names or trademarks consisting in whole or in part of the term Red Stripe Lager.
Neither does Respondent have any legitimate interest in the Domain Name. Through his letters to Complainant, Respondent indicates that he has been a "fan and avid consumer of Red Stripe for many years" and that his purpose in acquiring the Domain Name was to "create a fan site to help spread the word" about Red Stripe. Use of a mark to as part of fan site would certainly be a non-commercial fair use of the mark. Respondent states that he has invested "many efforts in creating ideas for the design of a website." Indeed, Respondent contends in his first letter that he has invested so much effort that it would take an amount of $7,847.52 to adequately compensate him for his time spent. Unfortunately for Respondent, the Policy demands that there is more than an intent to use the domain name for a legitimate purpose – there must be actual use. See Do The Hustle, LLC v. Monkey Media, LLC, WIPO Case No. D2000-0625, (September 5, 2000) (finding that the possibility of setting up a fan website without making any demonstrable preparations does not constitute sufficient evidence that Respondent made non-commercial or fair use of the Domain Name.); Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313 (December 20, 2000) (requiring that website had been operational for a while or evidence of offline fan activity of which website was an extension).
Also, several decisions have also required that the domain name must make it clear that the website incorporating the mark in which another has rights is for a fan site. See, for example, DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222 (May 29, 2000) (indicating that a domain name to be used as a fan website must clearly indicate on its face the fan appreciation nature of the site).
Finding no rights or legitimate interest for Respondent in respect of the Domain Name, the Panel finds for Complainant on element (ii).
C. Bad Faith Registration
Respondent has held the Domain Name beginning in May 2000, until the present time. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), the panel established that under some circumstances passive holding of a domain name can constitute bad faith use of that domain name. Here, the Panel considered whether the surrounding circumstances in this case present the kind of circumstances envisioned by the Telstra panel. The following findings were pertinent to the decision.
First, Complainant has deep-rooted rights in its mark RED STRIPE, and the RED STRIPE mark is widely known. There is no doubt that Respondent was aware of those rights and the connection others would make between the Domain Name and Complainant. Indeed, in his first letter to Complainant, Respondent states that he was aware of the copyright [sic] on Red Stripe and that he has known about Complainant’s product under Complainant’s mark for many years.
There is no evidence to show that Respondent has ever used the Domain Name for any purpose. In each of his letters, Respondent states that he has invested time and effort in working on design ideas for a website for Red Stripe fans. First, for $7000 to truly be a fair price to compensate Respondent for his time invested, he must have invested a considerable amount of time and undoubtedly would have some work product. The idea that Respondent (apparently an "avid fan" who is anxious to "spread the word about" Red Stripe) has not yet implemented any of his alleged developments over a period of more than two years is highly suspect.
There is evidence to show that Respondent offered to sell the Domain Name to Complainant for a price in excess of what he paid to register it. While, the Panel is not convinced that selling the Domain Name was Respondent’s primary purpose in registering it, it nevertheless finds that, in light of the other circumstances of this case, it is a factor which tends to show that Respondent registered <redstripelager.com> in bad faith.
Finally, Respondent elected not to submit a response to the complaint. The Panel cannot, in the absence of any evidence by Respondent, conceive of any good faith purpose for Respondent’s registration of the Domain Name.
The Panel, therefore, finds that Complainant prevails on element (iii).
For the foregoing reasons, the Panel decides that:
1. The Domain Name at issue is confusingly similar to the mark in which Complainant has established rights;
2. Respondent has no rights and no legitimate interest in respect of the Domain Name; and
3. Respondent registered and is using the Domain Name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the policy, the Panel requires that the registration of the domain name <redstripelager.com> be transferred to Complainant.
Arif Hyder Ali
Date: September 6, 2002