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WIPO
Arbitration and Mediation Center
ADMINISTRATIVE PANEL
DECISION
Diageo Ireland, Arthur Guinness Son & Co. (Dublin) Limited v. The Director
Case No. D2003-0885
1. The Parties
The Complainant is Diageo Ireland, Arthur Guinness Son & Co. (Dublin) Limited,
Dublin, Ireland, represented by Arent Fox Kintner Plotkin & Kahn,
United States of America.
The Respondent is The Director, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sirguinness.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on November 5, 2003. On November 6, 2003, the Center transmitted
by email to eNom a request for registrar verification in connection with the
domain name at issue. The registrar eNom failed to submit a registrar’s
verification response. Notwithstanding the above, the Center made a registrar’s
"Whois" printout on November 10, 2003, and furthermore, this Panel
confirmed through the information reflected on the registrar’s "Whois"
website, which provides information only of the domain names that are registered
by eNom, Inc., that the Respondent is listed as the registrant; that such domain
name is in "registrar-lock" status; and confirmed the details for
the administrative and technical contacts at which communications under this
domain name dispute have been sent to. The Center verified that the Complaint
satisfied the formal requirements of 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 of the Complaint, and the proceedings commenced on November 11, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
December 1, 2003. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on December 3, 2003.
The Center appointed Peter G. Nitter as the Sole Panelist in this
matter on December 18, 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.
4. Factual Background
Complainant is a leading premium drinks business, producing and marketing over
200 spirits and wines in over 200 countries under a variety of brands and
trademarks, including under the trademark "GUINNESS".
Complainant is the owner of all right, title and interest in and to the GUINNESS
brand, including over 1900 registrations and pending applications for GUINNESS-related
trademarks and logos in over 240 countries throughout the world - including
in Australia, Ireland, and the United States as well as two national registrations
for the GUINNESS trademark in Romania.
Complainant has continuously used the GUINNESS mark in connection with producing,
advertising and/or marketing of GUINNESS beer in the United Kingdom since 1759,
and in the United States since 1764. The Complainant also uses the GUINNESS
mark to market and distribute numerous other products.
Guinness beer is one of the Complainant’s flagship brands and is distributed
to more than 159 markets worldwide. A total of 1,883,200,000 pints of Guinness
beer are sold every year worldwide.
From the year 2000 and until January 2001, Complainant ran a promotion
campaign using a racehorse named "Sir GUINNESS" as a central element.
During the Promotion, the Complainant’s advertising agency registered the domain
name <sirguinness.com> on behalf of the Complainant and posted an extensive
website at "www.sirguinness.com." The promotion campaign also included
t-shirts with the slogan "That’s SIR GUINNESS to you!" with the URL
of the site, "www.sirguinness.com," positioned directly below the
slogan. During the promotion campaign, Complainant gave away more than 90,000
such t-shirts. The Domain Name registration remained active until recently when
it expired for inadvertent non-payment of the registration renewal fee.
Respondent has registered the domain name <sirguinness.com> in March 2003,
without authorization from the Complainant. Respondent has redirected the domain
name in question to a web page containing sexually explicit pornographic material.
In addition, the site offered for sale sexually explicit pornographic images
for downloading, membership to the site, anonymous e-mail service, chat, instant
messaging, magazine and newsletter subscriptions and numerous links to other
pornographic sites.
Respondent has later linked the domain name at issue to a web-based casino
site, "www.windowscasino.com", offering casino-related software and
gambling services as well as a partnership/affiliate program in connection with
the site.
5. Parties’ Contentions
A. Complainant
The domain name <sirguinness.com> is identical and confusingly similar
to the Complainant’s mark GUINNESS.
A review of the Domain Name shows that the only difference between the domain
name and the Complainant’s mark GUINNESS is the inclusion of the prefix "sir"
and the inclusion of "COM" as a Top-Level Domain.
Such differences are "so de minimus and immaterial as to be inadequate
to preclude any confusion from occurring." MPL Communications, Limited
and MPL Communications, Inc. v. LOVEARTH.net, NAF Claim No. FA0104000097086,
p. 15 (bad faith registration and use of domain name <sirpaulmccartney.com>).
Indeed, as a result of the Complainant’s Promotion, the domain name at issue
and any website associated therewith have been and will continue to be associated
with the Complainant and the Complainant’s products and services.
Respondent has no rights or legitimate interests in the domain name at issue.
Complainant’s mark GUINNESS is inherently distinctive, has been used extensively
for over 200 years throughout the world in connection with the Complainant’s
goods and services, and is one of the most widely recognized beer brands in
the world. In view of the Complainant’s registered mark GUINNESS and the Complainant’s
long-time use of this mark as well as variations thereof, the idea suggested
by <sirguinness.com> is that any possible goods or services offered in
association with the contested domain name may somehow be connected with or
authorized by the Complainant.
Based upon the numerous trademark registrations for, and the fame, goodwill
and reputation associated with, the GUINNESS mark, it is impossible to conceive
of any circumstance in which the Respondent could legitimately use the domain
name at issue without creating a false impression of association with the Complainant.
In light of the Respondent’s known actions with respect to domain names (e.g.,
registering domain names incorporating the trademarks of others, providing false
contact information in the corresponding whois records, redirecting and linking
to pornographic, casino and commercial websites and cyberflying a registration
of a domain name during a UDRP proceeding), it is extremely unlikely that the
Respondent registered the domain name unaware of the Complainant’s rights in
its GUINNESS mark and with an intent to use the domain name at issue in connection
with any type of bona fide offering of goods and services. Nor has
the Respondent used the domain name in connection with a bona fide offering
of goods or services.
The Respondent has sought to capitalize upon the popularity and goodwill associated
with the domain name at issue by causing unsuspecting Internet visitors to visit
the Respondent’s site with the belief that they were going to be presented with
information on the Complainant’s GUINNESS beer and brand. In addition, based
upon the evidence presented, it is apparent that the Respondent is benefiting
financially through advertising, commercial links, membership and affiliate
programs and services from his unauthorized registration and use of the contested
domain name.
Clearly, the Respondent at no time has had or will have a bona fide
use of the domain name at issue. Nor is there any evidence that the Respondent,
as an individual, business, or other organization, has been or is commonly known
by the domain name or that the Respondent has acquired any trademark or service
mark rights in the domain name at issue. The Complainant has not licensed, contracted,
franchised or otherwise permitted the Respondent in any way to use the GUINNESS
mark or to apply for any domain name incorporating such mark or any variation
thereof. Furthermore, at no time has the Respondent ever had any authorization
from the Complainant to register or use the Domain Name.
The Respondent has registered and is using the domain name at issue in bad
faith.
Complainant’s mark GUINNESS is undoubtedly famous, and it is inconceivable
that the Respondent was not aware of the mark and the Complainant’s ownership
of the mark at all times relevant to the dispute.
It is clear that the Respondent registered the Domain Name for the purpose
of selling, renting or transferring it to the Complainant. Among the circumstances
that support this assertion are the fame and distinctiveness of the GUINNESS
mark, the Respondent’s actual knowledge of the GUINNESS mark and the Respondent’s
history of offering domain names for sale and the multiple redirections of the
Domain Name to a variety of commercial websites.
The Respondent has registered the Domain Name to prevent the Complainant from
reflecting its GUINNESS mark in a corresponding domain name and has engaged
in a "pattern of such conduct" by registering multiple domain names
thereby constituting bad faith registration and use of the Domain Name.
The Respondent has intentionally attempted to attract for commercial gain Internet
users to its website at the contested domain name by trading on the goodwill
associated with the GUINNESS brand and mark by registering and using the domain
name, in which it has no legitimate rights or interests therein. By such registration
and use of the domain name in view of the fame and distinctiveness of the Complainant’s
mark wholly incorporated therein, the Respondent has created a likelihood of
confusion with respect to this mark as to the source, sponsorship, affiliation
and endorsement of the corresponding website and of the products and services
offered on the site.
The Respondent has been using false and inaccurate contact information in connection
to the registration of the domain name at issue. A review of the whois information
for the many domain names registered to the Respondent and the UDRP decision
and article about the Respondent confirms that such is common practice with
the Respondent. According to previous decisions under the UDRP, the above mentioned
practice constitutes additional evidence as to the Respondent’s bad faith.
Complainant requests the Panel to issue a decision that the registration of
the contested domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has considered the allegation by the Complainant as to the identity
of the domain name at issue with the Complainant’s trademarks. As a result of
Respondent’s default, these allegations have not been contested.
In the opinion of the Panel, Complainant’s mark is to be considered a famous
mark. The mark is integrated in its entirety into the contested domain name.
GUINNESS is the relevant and distinctive part of the domain name, and the addition
of the generic term ‘sir, is not sufficient to prevent the confusing similarity
between Complainant’s trademark and the contested domain name. In previous proceedings
under the UDRP, Panels have found that for purposes of assessing the confusing
similarity between domain names and trademarks, top-level domain extensions,
spaces, hyphens and punctuation are to be ignored, see InfoSpace.com, Inc.
v. Tenenbaum Ofer, WIPO Case No. D2000-0075,
Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO
Case No. D2000-0119 and Columbia Sportswear Company v. Mahlon Keeler,
WIPO Case No. D2000-0206.
In addition, the exact words that the domain name at issue consists of, "SIR
GUINNESS," has previously been used extensively in Complainant’s promotion,
and Complainant has furthermore previously controlled and used in its marketing
the same domain name that is now contested.
For the above mentioned reasons, Internet users will in the Panel’s opinion
most likely believe that a website available under the domain name at issue,
is at least sponsored by or affiliated to the owner of the trademark which forms
the main component of the domain name.
Thus, the Panel finds that Respondent’s domain name <sirguinness.com>
is confusingly similar to Complainant’s trademark GUINNESS.
B. Rights or Legitimate Interests
The Panel has considered the allegation by the Complainant as to the lack of
rights or legitimate interests of the Respondent in respect of the domain name
at issue.
Complainant maintains that it has in no way authorized the respondent to register
the domain name at issue. As a result of default, these allegations have not
been contested by the Respondent. In the present case, it would be difficult
for Complainant to prove that an authorization to register and use the domain
name at issue has not been granted, at the same time as Respondent easily
could have done so, pursuant to Paragraph 4(c) of the Policy.
Where Respondent has failed to give any response, it is therefore considered
sufficient for Complainant to make a prima facie showing of the fact
that Respondent lacks rights or legitimate interest in the contested domain
name.
As a result of his default, Respondent has not produced any evidence whatsoever
of his rights or legitimate interest in the contested domain name. Complainant
has not granted Respondent any rights to use its trademark, nor the right to
register or use the domain name at issue, nor are there any indications present
that Respondent has any other rights or legitimate interests in any trademark
corresponding to the domain name at issue.
Complainant has provided evidence that Respondent has directed the domain name
at issue to pornographic and casino websites. Taking into consideration the
fame and distinctiveness of the Complainant’s trademark GUINNESS and Complainant’s
previous use of the word combination "SIR GUINNESS," the Panel finds
it highly unlikely that Respondent would have any rights or legitimate interests
in the use of a domain name that is confusingly similar to these in connection
to such websites.
In the circumstances, this Panel is thus satisfied that Complainant has established
a prima facie case that the Respondent has no rights or legitimate interest
in the contested domain name.
Hence, the Panel finds that the Respondent has no rights or legitimate interest
in the contested domain name.
C. Registered and Used in Bad Faith
The Panel has considered Complainant’s assertions and evidence with regard
to the Respondent’s registration and use of the domain name in bad faith. By
not submitting a response, Respondent has failed to invoke any circumstances
that could demonstrate that it did not register and use the domain name at issue
in bad faith.
Given the fame and distinctiveness of Complainant’s trademark, and even more
so the use of the word combination "SIR GUINNESS," the Panel finds
that Complainant’s mark undoubtedly has been known to Respondent when registering
the domain name at issue.
Hence, the Panel finds that Respondent’s registration and use of the domain
name at issue appears to be an intentional attempt to attract, for commercial
gain, Internet users to its website "www.sirguinness.com", by creating
a likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of this website. These are circumstances which constitutes
evidence of registration and use of a domain name in bad faith pursuant to Paragraph 4(b)
of the Policy.
Other circumstances that supports the conclusion that the contested domain
name is registered and used in bad faith include the Respondent’s previous involvement
in cybersquatting, and his submission of false and inaccurate contact information
in connection to the registration of the domain name at issue.
The Panel therefore finds that the Respondent has registered and used the domain
name at issue in bad faith.
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 <sirguinness.com>
be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: December 23, 2003