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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ballygowan Limited v. Web Names Limited

Case No. D2006-0397

 

1. The Parties

The Complainant is Ballygowan Limited, Dublin, Ireland, represented by F.R. Kelly & Co., Dublin, Ireland.

The Respondent is Web Names Limited, County Limerick, Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <ballygowan.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2006. On March 30, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 31, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2006. The Response was filed with the Center on April 22, 2006.

The Center appointed Adam Taylor as the sole panelist in this matter on April 28, 2006. 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 Complainant was incorporated on April 29, 1982.

The Complainant’s bottled water product bearing the mark BALLYGOWAN was launched in Ireland in about 1984 in delicatessens, grocers’ shops and supermarkets. Since then it has become the leader in the Irish bottled water market with a market share of approximately 50% in both the Republic of Ireland and Northern Ireland. More than 60 million litres of natural water are distributed from the Complainant’s plant at Newcastle West, County Limerick each year. A total of 73 million bottles are produced every year at that plant, making it one of the top water bottling plants in Europe. The Complainant continues to sell still, sparkling and flavoured bottled water under the mark BALLYGOWAN.

The mark BALLYGOWAN regularly features in independent surveys of the top grocery brands in Ireland. The Complainant undertakes sponsorship deals and advertising including television, outdoor and print media.

The Complainant has registered trade marks, inter alia, in Australia, Benelux, Canada Ireland, Germany, Switzerland, the United Kingdom, and consisting of or comprising the word Ballygowan including Irish Registration No. 111414 dated May 3, 1982 and United Kingdom Registration No. 1441867 dated September 21, 1990, both for the word Ballygowan in class 32.

The Respondent registered the disputed domain name on January 23, 1997. The disputed domain name has never been used for a website.

In a response dated March 13, 2004, to a UDRP proceeding in relation to the domain name <maxol.com> (McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078) (“the Maxol Case”), the Respondent justified registration of the disputed domain name <ballygowan.com> on the basis that the directors of the Respondent company had “personal and emotional ties” with the geographical area Ballygowan. The Respondent drew attention to other places in Ireland called “Ballygowan” and said that it “notes and supports the web presence at ‘www.ballygowan.org.uk’ and ‘www.ballygowan.org’”. In a supplementary submission in that case dated April 27, 2004, the Respondent’s agent explained that the personal reason for the Respondent’s purchase of <ballygowan.com> was that the Respondent was conceived in the area of Ballygowan, Co. Down and “for this extremely personal reason he purchased the domain name”. The submission stated: “… the Respondent was not desirous to point out his personal reasons for purchasing the domain name and was somewhat reticent to have to reveal this fact to the arbitration panel.” The Panel in the Maxol Case concluded that the Respondent had registered and used the domain name <maxol.com> in bad faith and that this domain name together with <2fm.com> and the disputed domain name constituted a pattern of bad faith registrations.

On July 27, 2004, the Complainant’s trademark agent sent a cease and desist letter to the Respondent alleging trade mark infringement, passing off and registration and use in bad faith.

On December 23, 2004, the Respondent’s trademark agent wrote to say that its client would be transferring the disputed domain name to the Complainant as soon as possible. The agent attached a schedule of out of pocket expenses with respect to “maintenance” of the domain name totaling €3120 but stated that the intention to transfer the domain name was not conditional upon discharge of those expenses. The letter also said: “Our client confirms that he had no desire or intention to use a trademark or website in the future with regard to the name ‘Ballygowan’”.

On January 4, 2005, the Complainant requested the Respondent’s trademark agent to arrange renewal of the disputed domain name to prevent it lapsing before the transfer and agreeing to pay the renewal fee.

On January 5, 2005, the Respondent emailed the Complainant’s trademark agent inviting it to initiate the domain transfer and saying that the disputed domain name had been renewed.

On January 9, 2005, the Respondent emailed acknowledging initiation of the transfer request and saying that “the procedure will now be completed and administrated from my end”. The Respondent attached a revised schedule of out of pocket expenses of €3420 to take into account the cost of the domain renewal.

On February 1, 2005, the Complainant’s agent emailed the Respondent stating that the Respondent had failed to authorize the transfer and that the transfer request had been resubmitted.

On May 10, 2005, the Complainant’s agent emailed the Respondent to the effect that the second transfer request had failed and that costs would be addressed when the transfer had been completed.

On June 20, 2005, the Respondent emailed the Complainant’s agent inviting it to initiate another transfer request for the disputed domain name and promising to address it within the next few days. He requested confirmation that the costs were approved.

On July 25, 2005, the Complainant’s agent emailed the Respondent saying that it had initiated a third transfer request and that the agreement to transfer the domain name was not conditional on payment of the suggested costs which would be addressed after the transfer had been completed.

On October 3, 2005, the Complainant’s agent wrote to the Respondent to say that the third request had failed, that a fourth and final transfer request would be initiated, that the amount claimed by the Respondent for out of pocket expenses was excessive and offering €800.

On October 24, 2005, Network Solutions emailed the Complainant’s agent to say that the fourth request had failed.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The mark BALLYGOWAN is an unregistered trade mark which is used in the course of trade in many countries including Ireland. This unregistered trade mark is protected in Ireland in particular under the common law by virtue of the tort of passing off. The trade mark BALLYGOWAN fulfils the criteria for protection under the common law. Through extensive sales, advertising and marketing, the Complainant has acquired a very substantial reputation in the mark.

The Complainant would succeed in a passing off action against the Respondent.

Thus, the Complainant has registered and unregistered rights in the mark BALLYGOWAN.

The domain name <ballygowan.com> is identical or, at the very least, confusingly similar to the Complainant’s trademarks. The Complaint has numerous trademark registrations which consist of or contain the word BALLYGOWAN or whose dominant component is that word.

Rights or Legitimate Interests

There has been no evidence to date of any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It is sufficient that the Complainant shows a prima facie case to shift the burden of proof onto the Respondent.

No elements appear to exist that link the Respondent to the name ‘Ballygowan’ nor is this company in any way connected or affiliated to the Complainant or its related companies or authorised to carry out activities, either commercial or non commercial, on behalf of the Complainant.

The Respondent had not used the disputed domain name for a website.

None of the circumstances listed in paragraph 4(c) of the Policy exist.

The Complainant has undertaken numerous trade mark and internet searches and found no connection between the Respondent and the mark BALLYGOWAN.

The fact that the Respondent has been the holder of the domain name for some eight years without using the domain name is prima facie evidence that it has no rights or legitimate interests in the domain name.

The Respondent’s claim in the dispute concerning <maxol.com> that it registered the disputed domain name in this case <ballygowan.com> because it was conceived in an area known as Ballygowan, County Down is a far-fetched excuse to explain registration.

It is well accepted that there is generally little likelihood that a domain name which is identical to a well known trademark does not in fact refer to that mark but rather to some other concept.

Registered and Used in Bad Faith

The disputed domain name was registered primarily for the purpose of sale to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs.

Despite the Complainant’s trade mark agents making some four attempts to transfer the disputed domain name, the Respondent has failed to fulfill its assurance that it would complete the transfer. Rather, the Respondent has simply been increasing the sums requested as out of pocket expenses notwithstanding the statement that agreement to transfer the domain name was unconditional.

The out of pocket expenses sought by the Respondent were well in excess of its actual out of pocket expenses.

The Respondent has not provided any response to the offer of €800 in settlement of this matter. This can only be interpreted as an offer to sell the domain name for an amount in excess of €800.

The Respondent has been held to have acted in bad faith in registering the domain name <maxol.com> which corresponds to the well-known Irish trade mark MAXOL. In that decision, the Panel stated that it was not satisfied that the registration of the disputed domain name in this case <ballygowan.com> and another domain name <2fm.com> were in good faith. This indicates a pattern of conduct of the Respondent in registering domain names corresponding to trade marks of third parties to prevent them reflecting their trade mark in the domain name.

Aside from the matters set out above, it has been held that, under certain circumstances, non-use or passive use of a domain may be evidence of bad faith.

B. Respondent

Ballygowan is a quiet village in County Down. The disputed domain name was registered for the sole purpose of developing a non-commercial website to reflect the area and amenities of the town.

The Respondent currently uses the domain name <ballygowan.org.uk> for this purpose. That site has a high ranking on Google.

The Complainant uses <ballygowan.ie> to reflect the Irish background of its commercial product.

When the disputed domain name was registered, the Complainant did not have the international marketing presence it now has. The Complainant now wishes to obtain the disputed domain name retrospectively although the Respondent will never pass itself off as the Complainant.

The disputed domain name is not confusingly similar to the Complainant’s trade mark. The Complainant’s trademark is confusingly similar to and misdirecting people interested in the town and history of Ballygowan.

The Complainant’s brand is not as well known as that of the Respondent.

The director of the Respondent spent summer holidays in Ballygowan as did his parents and grandparents. Later in life the Respondent discussed these ideas with a resident of Ballygowan who set up the portal at <ballygowan.org.uk> in conjunction with community groups. It was thought that a “.org.uk” designation should initially be employed and it is intended that the disputed domain name will be a CNAME alias for the site to increase traffic.

The disputed domain name was not registered for the purpose of sale to the Complainant or any third party.

The Respondent was approached by the Complainant unsolicited with offers of money to buy the disputed domain name. These were rejected out of hand in telephone conversations.

The Respondent has been involved in website development and domain name registration for over 10 years.

The Maxol Case was unfair and unjust.

The Complainant and Respondent are not competitors. The Respondent does not intend to disrupt the Complainant’s business as the Respondent is associated with promoting the area of Ballygowan.

The Complainant is guilty of reverse domain name hijacking.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established registered and unregistered trademark rights in the name “ballygowan”.

The disputed domain name is identical to the Complainant’s trademark. It is well established that the domain suffix is disregarded for the purposes of the comparison.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, there is no evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before notice to the Respondent of the dispute.

Paragraph 4(c)(ii) of the Policy does not apply as the Respondent has not been commonly known by the disputed domain name.

Paragraph 4(c)(iii) of the Policy does not apply as the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent asserts that it intends to use the disputed domain name as a “CNAME alias” for the website at <ballygowan.org.uk>. Such an assertion of future plans is not enough but in any case the Panel doubts that the intention is a genuine one. See further below under “bad faith”.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel considers that the following points are significant.

The Respondent registered the disputed domain name some nine years ago but has not used it.

The Respondent claims that, when the disputed domain name was registered, the Complainant did not have the international marketing presence it now has. However, the Respondent does not deny that it was aware of the Complainant when it registered the disputed domain name, nor could it have credibly done so given the extent of the Complainant’s reputation in Ireland dating back to well before registration of the disputed domain name.

In its letter of December 23, 2004, the Respondent’s trade mark agent did not offer any explanation for the Respondent’s registration of the disputed domain name let alone deny the Complainant’s assertion of bad faith.

In that same letter, the Respondent’s agent said that its client had told the Complainant that it would be transferring the disputed domain name to it as soon as possible and that such transfer was not conditional on discharge of the expenses claimed. The Respondent invited the Complainant to initiate the transfer procedure by email on a number of occasions. But, despite four transfer requests by the Complainant, the Respondent never sanctioned the transfer.

The Respondent’s agent also confirmed in that letter that the Respondent had no desire or intention to use a trademark or website in the future with regard to the name “Ballygowan”. Yet the Respondent now says that its intention is to use the disputed domain name for a website in conjunction with the domain name <ballygowan.org.uk>.

The Respondent claims in its Response that the Complainant made unsolicited approaches to buy the disputed domain name but that these were rejected out of hand in telephone conversations. These claims are contradicted by the correspondence produced by the Complainant.

The Respondent has made inconsistent claims as to its purpose in registering the disputed domain name. In the Maxol Case it asserted that registration was on the basis of the director’s “personal and emotional ties” with the geographical area of Ballygown, County Down which were later explained to mean that he was conceived in that area. Aside from this being an inherently unlikely basis for registration of a domain name, it is notable that in that case the Respondent did not mention the development of a non-commercial website to reflect the area and amenities of Ballygowan, County Down which is identified in the Response in this case as the “sole purpose” of registration of the disputed domain name.

The Respondent says that it intends to use the disputed domain name as a CNAME alias for the site to increase traffic to “www.ballygowan.org.uk” and claims that it was associated with the development of the latter site. However, in the Maxol Case the Respondent simply said it “notes and supports the web presence at ‘www.ballygowan.org.uk’ …” without suggesting that it had any connection with the site. Nor has the Respondent has not produced any evidence of such a connection. The Panel is dubious as to whether there is any association between the Respondent and the site at “www.ballygowan.org.uk”.

In the Maxol Case, the Panel concluded that the Respondent’s registration of the domain name <maxol.com> was in circumstances falling within paragraph 4(b)(i) of the Policy (sale to trademark owner in excess of out of pocket expenses). The Panel also found that that the Respondent’s registration of that domain name as well as <2fm.com> and the disputed domain name <ballygowan.com> constituted a pattern of registering domain names corresponding to well-known Irish trademarks within paragraph 4(b)(ii). This Panel has reached its conclusion in relation to the disputed domain name <ballygowan.com> based on the evidence in this case but the conclusions of the Panel in the Maxol Case in relation to <maxol.com> and <2fm.com> are relevant here.

Taking all of the above matters together, and nothing that the Respondent’s explanation is not substantiated nor really credible, the Panel concludes that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct, ie in the circumstances described in paragraph 4(b)(ii) of the Policy.

D. Reverse Domain Name Hijacking

As the Complainant has succeeded, it is unnecessary to consider this aspect.

 

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 <ballygowan.com> be transferred to the Complainant.

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Adam Taylor
Sole Panelist

Dated: May 12, 2006