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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulmers Limited, Wm. Magner Limited v. Piri Jaroubek N.A.
Case No. D2009-1369
1. The Parties
The Complainants are Bulmers Limited, Wm. Magner Limited of Dublin, Ireland, represented by FR Kelly, Ireland.
The Respondent is Piri Jaroubek N.A. of Vavau, Fot`ata Island, Tonga.
2. The Domain Name and Registrar
The disputed domain name <magnerstaster.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2009. On October 15, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 19, 2009.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 30, 2009. 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, Bulmers Limited ("Bulmers") owns registered trademarks in Ireland and in other countries. These are trademarks for the word MAGNERS or for expressions including the word MAGNERS.
It has registered numerous domain names which include the word "MAGNER". All of these registrations, of both trademarks and domain names, precede the date of the registration of the disputed domain name.
The Complainant, Wm. Magner Limited ("WML") is a trading company which uses the trademarks with the consent of Bulmers. Both companies are related, being part of the C & C Group Plc, an Irish company which is a manufacturer, distributor and marketer of branded beverages and savoury snacks in Ireland and which is listed on the Irish and London Stock Exchanges.
Both Complainants join in the same Complaint in the event that the substantial goodwill and reputation which exists in the marks is deemed to vest in one or more of the companies. If that is not accepted, then Bulmers is the sole Complainant.
The word MAGNERS is also used as an unregistered mark in the course of trade in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") for cider produced by WML in the United Kingdom since at least 1999. There it has established a 6% market share of the long-alcohol drink market, followed by launches in the United Kingdom, Europe and the United States of America. A substantial reputation has been established in the unregistered mark as has been provided by the history supplied by the Complainants. Outside of Ireland, cider is sold under the title "Magners Original Irish Cider". The word MAGNERS is prominent on the label. Perry is also marketed under the MAGNERS brand.
The Respondent has had no connection whatsoever with the Complainants and has not been authorised by either of them to register the disputed domain name which was registered on July 31, 2009. There is no site corresponding to the disputed domain name.
On August 25, 2009, the Complainant wrote to the Registrant of the disputed domain name requesting a transfer. There was no reply.
5. Parties` Contentions
The Complainants have goodwill and reputation in the mark as a result of the registered trademarks and the unregistered common law mark. The only possible reason why anyone not connected with the Complainants would use the disputed domain name is to pass himself off as having some connection with the Complainants or its products.
The disputed domain name is confusingly similar to various registered and unregistered marks incorporating the word MAGNER in which the Complainants have rights.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and none of the situations set out at paragraph 4(c) of the Policy apply to him.
The disputed domain name was registered and is being used in bad faith and that was registered primarily for the purpose of selling the disputed domain name to the Complainants or a competitor for valuable consideration in excess of the Respondent`s out-of-pocket costs. The disputed domain name has been advertised on the Internet for sale.
The Respondent has been found to have engaged in cybersquatting in a previous UDRP decision, Choice Hotels International Inc. v. Piri Jaroubek, NAF Claim No.1273206, August 24, 2009. In that decision, the panel found that the respondent used the disputed domain name <comforthotels.com> to disrupt the business of the complainant by offering links to competitors and was held to have intentionally diverted Internet users into those websites.
On June 26, 2009, the Complainant registered the domain name <magnerstaster.com> and the Respondent`s registration of the disputed domain name took place on July 31, 2009. The Respondent was wishing thereby to elicit a lucrative offer from the Complainants to purchase the disputed domain name. There was no conceivable use to which the Respondent could put the disputed domain name given his lack of any connection with the Complainants.
The Respondent is preventing the Complainants from reflecting its mark in the corresponding domain name and seeks to disrupt the business of the Complainants in attracting visitors looking for information of the Complainants` marks and creating difficulties with customers of the Complainants who may stumble upon his website.
The Respondent did not reply to the Complainants` contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In the view of the Panel, the Complainants have established that they have rights in both the registered trademarks for the word MAGNERS and in an unregistered trademark in the United Kingdom market for the word MAGNERS. The numerous registered trademarks alone would justify a finding under the first limb of paragraph 4(a) of the Policy.
It is quite proper in these circumstances for there to be two Complainants given the licensing relationship between them for the trademark.
The Complainants have a strong reputation for marketing cider under the name MAGNERS. The addition in the disputed domain name of the word "taster" merely is a generic add-on which, if anything, reinforces the view that the mark is concerned with food or beverage.
In the Panel`s view, the disputed domain name is confusingly similar to the marks in which the Complainants have rights.
B. Rights or Legitimate Interests
The Complainants gave no license to the Respondent who has not filed a Response. He, therefore, has not set up any of the possible defences which might have been available to it under paragraph 4(c) of the Policy. On the record noted above, the Complainants have set out a prima facie case hence, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In the Panel`s view and on the above record this is one of those cases where there can be no possible reason for the Respondent to have utilized the Complainant`s marks for the purpose of registering a doman name other than the ulterior one of trying to sell the disputed domain name at a profit in the panel`s view and on the above record. There is no conceivable non-infringing use to which the Respondent could put the disputed domain name.
By registering the disputed domain name, the Respondent is preventing the Complainants from reflecting their mark in the corresponding domain name. To wit: The website at the disputed domain name provides pay-per-click links and an offer for sale. The effect of the registration is to affect the businesses of the Complainants by attracting visitors looking for information about the Complainants or their marks and creating difficulties for persons searching the Internet.
In the Panel`s view, the disputed domain name was registered and is being used in bad faith.
Choice Hotels International Inc. v. Piri Jaroubek, supra shows that the Respondent is well aware of the Policy and its implications.
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, <magnerstaster.com> be transferred.
In accordance with the request of the Complainants, the disputed domain name <magnerstaster.com> is to the transferred to the Complainant, Bulmers Limited.
Dated: December 16, 2009