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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arthur Guinness Son & Co. (Dublin) Limited and Diageo Ireland v. Denis Jalbert
Case No. D2003-0784
1. The Parties
The Complainants are Arthur Guinness Son & Co. (Dublin) Limited ("Complainant 1") and Diageo Ireland ("Complainant 2") (together "Complainants"), both located in Dublin, Ireland, represented by Paul Cox, SJ Berwin, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Denis Jalbert, Pierrefonds, Quebec, Canada.
2. The Domain Name and Registrar
The dispute concerns the domain name <guiness.org> (the "Domain Name").
The Domain Name is registered with eNom, Inc., Bellevue, Washington, United States of America (the "Registrar").
3. Procedural History
The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") in hardcopy on October 6 and by email on 16, 2003. On October 7, 2003, the Center acknowledged receipt of the Complaint by email to Complainants, the representative of the Complainants and the Respondent.
On October 7, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. Not having obtained a response of the Registrar, on October 20, 2003, the Center printed out from Registrar’s Whois website verification (i) confirming that the disputed Domain Name is registered with the Registrar, (ii) confirming that the Respondent is listed as the current registrant of the disputed Domain Name, (iii) providing the contact details for the administrative, billing, and technical contact of Respondent and (iv) indicating that the language of the registration agreement is English.
On October 20, 2003, the Center verified that the Complaint satisfied the formal requirements according to the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 by post/courier (with enclosures) and email (without enclosures) of the Complaint and of the commencement of the proceedings on October 20, 2003. In accordance with the Rules, Paragraph 5(a), the Respondent was required to submit a Response to the Center by November 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2003.
The Center appointed Michael A.R. Bernasconi as the Sole Panelist in this matter on November 19, 2003. 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. Absent exceptional circumstances, the decision is anticipated by December 3, 2003, in accordance with Rules, Paragraph 15.
4. Factual Background
The Complainants are domiciled in Ireland. The Complainants’ group is well known for brewing and selling beer under the trademark GUINNESS all over the world. Complainant 1 and Complainant 2 are the registered owners of a large number of trademarks that consist or include the word GUINNESS in numerous countries of the world for various classes. The first GUINNESS word trademark has been registered in Ireland on March 2, 1931, for the class 32 (registration no. 38205). Among other countries, a GUINNESS word trademark is registered in Canada since March 6, 1964, (registration no. 134827) and in the United States since January 15, 1935, (registration no. 1207300), the domicile countries of the Respondent and the Registrar. According to the trademark registration confirmation of Canada, the trademark has been used since 1900 in Canada. Further, Complainants’ group is running a portal in the Internet under the domain name <guinness.com>, which is registered in the name of Complainant 2, advertising the group’s products.
The Respondent registered the disputed Domain Name on September 13, 2001. It currently uses the Domain Name to redirect users to "www.borntoberich.com".
5. Parties’ Contentions
The Complainants contend that the disputed Domain Name is confusingly similar with their trademarks GUINNESS and that such confusing similarity cannot be avoided by the exclusion of the letter "n". Further, Complainants contend that Respondent has no rights or legitimate interests in respect of the Domain Name because there is no evidence of Respondent’s use or of preparations to use the Domain Name with a bona fide offering of goods or services, instead it uses the website under the disputed Domain Name to divert users to other websites to which the Respondent has no identifiable connection, such as websites with pornographic material. Finally, the Complainants contend that the Domain Name has been registered and is being used in bad faith given the widespread use and famous nature of the Complainants’ trademarks GUINNESS. By using the Domain Name the Respondent intentionally attempts to attract Internet users by creating a likelihood of confusion with the Complainants’ trademark and website for commercial gain.
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of Respondent as it considers appropriate.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainants must prove that:
A. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that the Complainants are the owners of the trademark GUINNESS.
The disputed Domain Name is identical to the Complainants’ trademark GUINNESS,
except for: (1) the suffix ".org" and (2) the elimination of the letter
"n." The suffix ".org" is a generic top level domain, which
of course is without legal significance to render a domain dissimilar or to
prevent consumer confusion. The elimination of the letter "n" does
neither sufficiently affect the visual impression nor the pronunciation of the
Domain Name compared with the trademark GUINNESS. The close misspelling at issue
is confusingly similar to the Complainants’ trademark. Internet users finding
<guiness.org>, in particular in consideration of the fame of the Complainants’
trademark, are likely to be misled into thinking the Complainants are the registrants
or are otherwise associated with the disputed Domain Name, or are at least confused.
See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,
WIPO Case No. D2000-1698, Diageo p.l.c.
v. John Zuccarini, WIPO Case No. D2000-0541.
In the view of the Panel, the disputed Domain Name is substantially identical and confusingly similar to the trademark GUINNESS. The Complainants have therefore succeeded in proving that a risk of confusion is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name.
There is no evidence that the Respondent is commonly known by the disputed Domain Name or has been authorized by the Complainants to use the GUINNESS name and trademark.
It remains undisputed that the Respondent does not use and has not made preparations
to use the Domain Name or a name corresponding to the Domain Name in connection
with a bona fide offering of goods or services. An informal check
of the website under the disputed Domain Name by the Panel on November 26, 2003,
showed that no goods and services are offered, but instead diverts the Internet
traffic to a website "www.borntoberich.com" which promotes the sale
of keywords in order to make money through a pay-per-click mechanism. According
to the Complainants, the Internet traffic was diverted in the past to websites
with pornographic content, such as "www.tinawebcam.com," "www.Internetcam.net"
and others. The panel is of the view that the sole diversion of Internet traffic
to unrelated websites does not represent a use of the Domain Name in connection
with a bona fide offering of goods and services. See Nike, Inc. v.
Circle Group Internet, Inc., WIPO Case
This conduct serves the purpose of generating revenues, e.g. from the advertised pay-per-click products. Further, it misleads the Internet users by diverting the traffic intended for the Complainant to websites, which are in no way connected with the word "guiness," and it creates the impression of association with the Complainants’ group.
In consideration of the above, the Panel concludes that Complainants have established that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
It is notorious that the trademark GUINNESS enjoys worldwide fame. Therefore
the Respondent must have known of the Complainants, their products and their
trademark prior to registering the disputed Domain Name. Since the disputed
Domain Name is so obviously connected with the name and trademark of the Complainants’
group, its very use by someone with no connection with the Complainants suggests
opportunistic bad faith, i.e. bad faith registration. See Charles Jourdan
Holding AG v. AAIM, WIPO Case No. D2000-0403.
As well, it is obvious that the use of the Domain Name is in bath faith. The Respondent intentionally attempts to attract Internet users intending to find websites legitimately associated with the Complainants to his website or other on-line locations, by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship or affiliation, in order to profit from sale of the pay-per click or other products offered on these websites. As a matter of fact, the misspelling is compelling evidence of the Respondent’s use in bad faith under Paragraph 4(b)(iv) of the Policy.
Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the Domain Name, the Panel considers that the Respondent has registered and used the Domain Name in bad faith. Thus, the third requirement of Paragraph 4(a) of the Policy is satisfied.
Therefore, and in consideration of the Complainants’ compliance with the formal requirements for this domain name dispute proceeding, of Respondent’s default in submitting a Response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by Paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainants’ trademark;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
For all 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 <guiness.org> shall be transferred to the Complainant 2.
Michael A. R. Bernasconi
Dated: December 3, 2003