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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH

Case No. D2001-0026

 

1. The Parties

1.1 The Complainant is Arthur Guinness Son & Co. (Dublin) Limited, a corporation organized and existing under the laws of the Republic of Ireland, with its principal place of business located at St James’s Gate Brewery, Dublin 8, Ireland. The Complainant’s authorized representative in this proceeding is Dan Enraght-Moony, S.J. Berwin & Co, 222 Gray’s Inn Road, London WC1X 8XF, UK.

1.2 The Respondent is Tim Healy of the following addresses:

(i) Tim Healy (BOSTH), Rossewood House, Golf Course Road, Fossa, Killarney, County Kerry, Ireland.

(ii) Tim Healy, Tallaght, Dublin 24, Ireland.

(iii) The Respondent replied to certain correspondence as Tim Healy, 24 Chancery Hall, Church Street, Dublin 7.

 

2. The Domain Names and Registrar

2.1 The Domain Names subject to this Complaint are: "www.guinnessguide.com", "www.guinnessirishstout.com", "www.guinnesspubsoftheworld.com", "www.guinnesstours.com", "www.guinnessjazzfestival.com" and "www.guinnessirishpubs.com". In this Decision they may be referred to as the "(disputed) (Guinness) Domain Names".

2.2 The Registrar of the Domain Names is Register.com, Inc., Domain Registrar, 575 8th Avenue – 11th floor, New York, NY 10018, USA.

 

3. Procedural History

3.1. The Complaint in respect of the six Domain Names was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) by email on January 5, 2001, and in hard copy on January 8, 2001. A copy of the Complaint was sent by the Complainant to the Killarney address of the Respondent on January 5, 2001, by courier and a copy (less enclosures) was sent to the Respondent's registered email address.

3.2. A copy of the Complaint was sent by the Complainant to the Domain Registrar, Register.com, on January 5, 2001, by courier and (less enclosures) by e-mail.

3.3. On February 2, 2001, verification was received from the Legal Specialist, Domain Registrar, Register.com, Inc., that the Domain Names "www.guinnessirishstout.com" and "www.guinnesspubsoftheworld.com" are registered by Tim Healy, Tallaght, Dublin 24, Ireland; and that the Domain Names "www.guinnessguide.com", "www.guinnesstours.com", "www.guinnessjazzfestival.com" and "www.guinnessirishpubs.com" are registered by BOSTH Tim Healy, Rossewood House, Golf Course Road, Fossa, Killarney, County Kerry, Ireland; the email address, phone and fax number of the Administrative Contact for all six Domain Names being the same. The Registrar confirmed that the Domain Names are in active status and that the Uniform Dispute Resolution Policy is applicable.

3.4. On February 2, 2001, the Center determined (and the Administrative Panel has subsequently accepted) that the Complaint complied with 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).

3.5. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center to the Respondent at his Killarney address on February 2, 2001, by courier, and (without attachments) by email. Three attempts were made to send it to the Respondents's notified fax number. The deadline for the receipt of a Response was set as February 21, 2001. The Formal Notification was copied to the Complainant by email and to ICANN and to the Domain Registrar, Register.com.

3.6. On February 23, 2001, Notification of Response Default was sent by the Center to the Respondent by email.

3.7. On March 12, 2001, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to the Complainant, the Respondent and the Administrative Panel. An electronic copy of the Complaint was emailed to the Administrative Panel on March 12, 2001, and the hardcopy of the case file was sent by courier.

 

4. Factual Background

4.1. The Complainant is Arthur Guinness Son & Co. (Dublin) Limited, brewer.

4.2. The Complainant can trace its trade name Guinness as far back as 1764 in Ireland and has exported beer since at least as early as 1769. Guinness is now brewed in fifty countries and sold in one hundred and fifty countries. Guinness is a world market leader in the black beer or stout sector of the market.

4.3. The Complainant is the proprietor of more than 70 registered trademarks in various countries for the trademark "Guinness". Specifically, the trademark "Guinness" was at the relevant date covered by Irish trademark registration numbers 38205 (formerly 14613, dated March 2, 1931) and 99605 (dated December 15, 1980). The Complainant also relies on common law trademark rights in and to the trademark Guinness in Ireland and in many other countries.

4.4. The Complainant is the proprietor in many countries of trademarks that incorporate the word Guinness in the names and labels of beers, including some in non-roman alphabets.

4.5. The Complainant has an international presence through its Internet website: "www.guinness.com" which contains extensive information about the Guinness brand, promotions, games and other material.

4.6. The facts stated in Paragraphs 4.1 to 4.5 above are supported by documents submitted as Annexes to the Complaint.

 

5. Parties’ Contentions

A. Contentions of Complainant

5.1. The contentions of the Complainant include (paragraphs 5.2-5.8 below) that:

5.2. The dispute is properly within the scope of the Policy and that the Administrative Panel has jurisdiction to decide the dispute. The registration agreements, pursuant to which the disputed Guinness Domain Names were registered, incorporate the Uniform Policy. The Registrant names BOSTH and Tim Healy and their alternative addresses refer to one and the same Respondent. The Administrative Panel has jurisdiction to hear the Complaint in respect of the six disputed Guinness Domain Names in a single Administrative Proceeding.

5.3. The disputed Guinness Domain Names are confusingly similar to the trademark Guinness in which the Complainant has rights by registration and under common law.

5.4. The Respondent has no rights or legitimate interest in the disputed Guinness Domain Names.

5.5. The Respondent’s registration and use of the disputed Guinness Domain Names is in bad faith. The Respondent acquired the Domain Names primarily for the purpose of selling, renting or otherwise transferring them to the Complainant in the terms of Paragraph 4 (b) (i) of the Policy.

5.6. The Respondent sought to create confusion with the Complainant or its products and to divert users away from the Complainant's websites and to the Respondent's websites. The Respondent's actions prevent the Complainant from registering the same Domain Names which contain the Complainant’s trademark and the Respondent has engaged in a pattern of such conduct.

5.7. The Complainant attempted to resolve the dispute in respect of some of the disputed Domain Names on October 20, 2000, and November 22, 2000, by contact with the Respondent who replied on December 8, 2000. There has been no resolution.

5.8. The Complainant requests that the disputed Guinness Domain Names be transferred to the Complainant.

B. Contentions of Respondent

5.9. The Respondent has not submitted any Response to this Proceeding.

 

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. The Services Agreement between the Registrar and the Respondent, at Section 1(a) Domain Name Registration, Administration, and Renewal Services, states:

"You acknowledge that you have read, understood and agree to be bound by all the terms of ICANN's Uniform Dispute Resolution Policy (the "UDRP"), as amended from time to time, which is hereby incorporated and made a part of this Agreement by reference for all ".com", ".net" and ".org" domain name registrations or renewals."

Paragraph 4 (a) of the Policy states:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

6.2. The Complainant has made the relevant assertions as in 6.1 above; this dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.

6.3. Paragraph 3 (c) of the Rules states:

"The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder."

6.4. The Administrative Panel finds on the evidence that the Respondent in respect of all six disputed Guinness Domains Names is the same Tim Healy and that it is appropriate to proceed in a single Administration Proceeding.

Whether the Domain Names are Identical or Confusingly Similar to a Trademark

6.5. The disputed Guinness Domain Names subject to the Complaint all contain the word Guinness which is the trademark of the Complainant. The name Guinness is a distinctive proper name. Each of the disputed Domain Names features the word Guinness prominently. The Administrative Panel finds the disputed Guinness Domain Names to be confusingly similar to the trademark of the Complainant. The Complainant therefore succeeds under element 4 (a) (i) of the Policy.

Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Names

6.6. The onus is upon the Respondent to counter the finding of confusing similarity in 6.5 above by establishing that the Respondent has legitimate rights or interests in the disputed Guinness Domain Names in the terms of Paragraph 4 (c) of the Policy. The Respondent has not made any such Response. The Complainant has submitted that the Respondent should be considered as having no rights or legitimate interest in the disputed Domain Names since the Complainant has not licensed or permitted the Respondent to use the Complainant's trademark or to use any Domain Name containing its trademark.

6.7. In respect of Paragraph 4 (c) (i) of the Policy, the Administrative Panel can find no evidence that the Respondent has used or made demonstrable preparations to use the disputed Domain Names in connection with a bona fide offering of goods or services. The Respondent in a letter of December 8, 2000, to the Complainant, referring solely to the disputed Domain Name "guinnessguide.com", claimed an intention to use a site of that name legitimately. Since "guinnessguide.com" was evidently registered (Registrar's Created-On date) on March 25, 2000, shortly after the Respondent registered "www.guinnessirishstout.com" (February 25, 2000), "www.guinnesspubsoftheworld.com" (February 29, 2000) and "www.guinnessirishpubs.com" (March 22, 2000), there can be no doubt that the Respondent was aware of the association of the famous name Guinness with Ireland, beer and pubs. Had any such Response been submitted formally it would not have convinced the Administrative Panel and in any case the Respondent has not used or made demonstrable preparations to use the disputed Domain Names.

6.8. In respect of Paragraph 4 (c) (ii) of the Policy there is no evidence that the Respondent as an individual or business has been commonly known by any of the disputed Domain Names.

6.9. In respect of Paragraph 4 (c) (iii) of the Policy there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed Domain Names.

6.10. Having regard to the conclusions reached in 6.7, 6.8 and 6.9 above and recognizing that the circumstances listed under Policy Paragraph 4 (c) are without limitation, the Administrative Panel finds that the Respondent does not have any rights or legitimate interest in the disputed Guinness Domain Names. The Complainant succeeds under Paragraph 4 (a) (ii) of the Policy.

Whether the Domain Names Have Been Registered and Are Being Used in Bad Faith

6.11. Paragraph 4 (a) (iii) of the Policy requires the Complainant to prove that each Domain Name has been registered and is being used in bad faith. Paragraph 4 (b) of the Policy sets out four circumstances that qualify as evidence of bad faith, however bad faith is not limited to these. As pointed out by Andrew F. Christie, Presiding Panelist in WIPO Case No. D2000-0003 ("telstra.org"), "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith". In the present case the registration by the Respondent of the Domain Names "www.guinnessguide.com", "www.guinnessirishstout.com", "www.guinnesspubsoftheworld.com", "www.guinnesstours.com", "www.guinnessjazzfestival.com" and "www.guinnessirishpubs.com" leaves no room for doubt that the Respondent was aware of and intended to derive value from the trademark of the Complainant and the association of the famous name Guinness with alcoholic beverages and with Irish beer. There can be no other reasonable interpretation of the Respondent's actions or intentions in registering the disputed Guinness Domain Names than to profit from the valuable trademark and reputation of the Complainant. The Administrative Panel, having regard to all the circumstances of the case, finds that the Respondent is acting in bad faith in respect of the disputed Guinness Domain Names.

6.12. For completeness the Administrative Panel has also considered the specific indicators of bad faith listed in Paragraph 4 (b) of the Policy. Paragraph 4 (b) (i) refers to "circumstances indicating" that the Respondent acquired a Domain Name to sell at a profit. Although no evidence was offered as to an asking price or a direct offer to sell any of the Domain Names, the Administrative Panel is satisfied that the overall circumstances indicate that the Respondent intended ultimately to sell or transfer the Domain Names to the Complainant or a competitor of the Complainant in a profitable transaction.

6.13. The Administrative Panel finds specifically in the terms of Paragraph 4 (b) (ii) of the Policy that the Respondent by registering the six disputed Guinness Domain Names has prevented the owner of the trademark from doing so and has engaged in a pattern of such activity.

6.14. The Administrative Panel finds that the primary intention of the Respondent is to divert Internet users from the Complainant's website to the Respondent's potential websites through deliberate confusion for purposes of commercial gain and thereby to disrupt the business of the Complainant in terms of Paragraphs 4 (b) (iii) and (iv) of the Policy.

6.15. In summary in the matter of bad faith, the Administrative Panel finds that the disputed Guinness Domain Names have been registered and are being used in bad faith specifically in the terms of Paragraphs 4 (b) (i) (ii), (iii) and (iv) of the Policy (6.12, 6.13 and 6.14 above). Furthermore the Respondent is found to have acted generally in bad faith having regard to all the circumstances of the case (6.11 above).

6.16. In summary of this Discussion and Findings, as stated in 6.5 above the Complainant succeeds under Paragraph 4 (a) (i) of the Policy. As stated in 6.10 above, the Complainant succeeds under Paragraph 4 (a) (ii) of the Policy. As summarized in 6.15 above, the Complainant succeeds under Paragraph 4 (a) (iii) of the Policy. The Complainant therefore has proven its case in total and the Decision is made in favor of the Complainant and against the Respondent.

 

7. Decision

7.1 The Decision of the Administrative Panel is that the disputed Domain Names "www.guinnessguide.com", "www.guinnessirishstout.com", "www.guinnesspubsoftheworld.com", "www.guinnesstours.com", "www.guinnessjazzfestival.com" and "www.guinnessirishpubs.com" are confusingly similar to the trademark Guinness in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed Domain Names; and that the Respondent has registered and is using the disputed Domain Names in bad faith. The Decision of the Administrative Panel is that the Domain Names "www.guinnessguide.com", "www.guinnessirishstout.com", "www.guinnesspubsoftheworld.com", "www.guinnesstours.com", "www.guinnessjazzfestival.com" and "www.guinnessirishpubs.com" shall be transferred to the Complainant.

 


 

Dr. Clive N. A. Trotman
Sole Panelist

Dated: March 23, 2001

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2001/d2001-0026.html

 

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