Guinness United Distillers & Vintners Amsterdam B.V. v. N/A / This Domain is For Sale

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guinness United Distillers & Vintners Amsterdam B.V

vs

N/A & This Domain Is For Sale | Email Your Offers

Case No D2002-0178

1. The Parties

The Complainant is Guinness United Distillers & Vintners Amsterdam B.V.,

a Dutch limited liability company having its principal place of business at

Molenwerf 10-12, 1014 BG Amsterdam, The Netherlands. It is represented by the

firm of Robin Blecker & Daley of 330 Madison Avenue, New York,

New York 10017, USA. The Respondent N/A & This Domain is For Sale | Email

Your Offers appears not to have legal standing, but nevertheless has a postal

address at Vytauto Mail Box #60, Radviliskis, LT-5120 Lithuania.

The Respondent is described by the Complainant as a fictitious entity and is

named as Respondent as a result of information obtained by the Complainant searching

the Internic registry whois database of the Registrar of the Domain Name in

issue (Enom Inc) and the whois database for the Registrar Verisingn Inc.

2. The Domain Name and Registrar

The Domain Name in dispute is <tanqueray.com>. The Registrar of the Domain

Name is Enom Inc, which has confirmed that the Domain Name <tanqueray.com>

is registered with it, and also that the current registrant IS IN FACT Web Master

at the same Vytanto Mail Box #60 address as set out above.

3. Procedural History

The Complaint was submitted by email to the Center on February 20, 2002,

with a hard copy following on February 26, 2002. Acknowledgement of

receipt of the Complaint was given by email on March 1, 2002. A request

for Registrar verification was made to Enom Inc on March 1, 2002,

with the verification referred to above made on March 7, 2002. The

Registrar confirmed that the registrant that's name was Web Master, which

was also the name of the administrative and technical contact with an address

at Vytauto Mail Box #60, Radviliskis, LT-5120 Lithuania. Accordingly the Center

served notification of the Complaint and commencement of the administrative

proceedings upon Web Master at its address by way of post, fax and email. The

Panel has seen a copy of the postal address label, the email and a fax cover

sheet, although it appears that the fax was not received. The Panel is reasonably

satisfied that all possible notification of the Complaint was given to the Respondent

in accordance with the Rules. No Response having been received from the Respondent,

notification of the Respondent's default was given by email on March 29, 2002.

Nothing further was heard from the Respondent, and accordingly on April 12, 2002,

a Panel was appointed with a Sole Panelist Mr. Clive Duncan Thorne. The Panelist

has submitted a Statement of Acceptance and Declaration of Impartiality and

Independence to the Center.

There have been no further submissions. The date scheduled for the Panel's

decision in accordance with Paragraph 15 of the Rules is April 26, 2002.

No extensions of time have been granted or sought. No interlocutory orders have

been issued. The language of the proceedings is English.

4. Factual Background

The Complainant is a subsidiary of Diageo plc, one of the world's leading premium

drinks businesses producing and marketing over 200 spirits and wines in over

200 countries under a variety of brands and trade marks including the trade

mark "Tanqueray".

Tanqueray Gin, one of the Complainant's flagship brands, is a well recognised

brand throughout the world. Tanqueray Gin is the "number 1" imported premium

gin in the United States, and is distributed to more than 140 markets world-wide

including relevantly the United States, Finland, Lithuania and Russian Federation.

Exhibited at Annex 10 to the Complaint is some information material illustrating

the brand. The mark "Tanqueray" has been used continuously since 1892. It is

also used for ancillary products by the Complainant including ice buckets, trays,

cocktail shakers, umbrellas, polo shirts, chairs, coasters, glasses, hats, jackets,

sampling cups, tee-shirts and posters.

The Complainant advertises and markets gin as well as other products under

the "Tanqueray" mark through a variety of channels including printed publications,

the radio, the internet and bill boards, and has expended significant resources

advertising and promoting its products sold and distributed with the distinctive

"Tanqueray" mark. Over the past year the Complainant has spent more than £23.7

million promoting products under the "Tanqueray" brand name.

As a result of this evidence of wide-spread use of the mark "Tanqueray", the

Complainant submits that the mark has acquired "tremendous commercial strength

and goodwill", and has come to identify the Complainant's gin and its other

products sold under the mark and is famous. On the basis of the evidence submitted

by the Complainant, the Panel accepts this.

The Complainant is also the owner of the mark "Tanqueray" registered in the

United States, the European Community trade mark office and national registrations

in over 100 countries throughout the world including Lithuania and the Russian

Federation. Further details of the registrations are set out in Paragraph 12

of the Complaint, and also listed at Annex 11 to the Complaint.

The Panel accepts on the basis of the above evidence that the Complainant has

wide-spread unregistered and registered rights in the mark Tanqueray.

The background to the present Complaint is that prior to November 14, 2001,

the Complainant owned the Domain Name <tanqueray.com>. However, due to

a misunderstanding on the part of the Complainant's representatives the renewal

fee for the registration of the Domain Name was apparently not paid, and the

Complainant's registration for the Domain Name expired on or about November 14, 2001.

What then appears to have happened, according to the Complainant, is that without

its authorisation, "Web Master Research Institute" listed as being in Finland,

registered under the Domain Name <tanqueray.com> with Snap Names.com Inc.

This appears to be a company, which provides a service of trawling for and capturing

recently expired Domain Names. On November 14, 2001, it appears that the Domain

Name was acquired by Snap Names and registered in the name of "Web Master Research

Institute".

The Complainant's Counsel learned of this registration on November 29, 2001,

from a representative of the Complainant, and that the Domain Name <tanqueray.com>

was listed in Snap Names recently acquired list of Domain Names. This is set

out in a "Hot 100" list, a print-out of which is exhibited at Annex 14

to the Complaint. Accordingly on December 21, 2001, the Complainant's Counsel

sent a Cease and Desist letter to "Web Master Research Institute" at the address

provided in the whois record for the Domain Name, and copied to Snap Names.

The letter was returned under the U.S. postal service dead letter service. On

January 9, 2002, a telephone conversation apparently took place with a Snap

Names representative, and the name was removed with no web page accessible at

the Domain Name.

The Domain Name was then registered with Namescout.com Inc and on January 9, 2002,

the Complainant's Counsel telephoned a Namescout's representative requesting

that the domain registration be cancelled and transferred to the Complainant.

On January 18, 2002, the whois information for the Domain Name was updated

and indicated a new registrant; "Web Master Tan Queray Predprinimatelstvo" with

a postal address in Russia. A warning letter was sent by the Complainant's Counsel

on January 18, 2002, to the new registrant in Russia, a copy of which is

set out at Annex 6 to the Complaint. This letter was sent by Federal Express

who on January 24, 2002, indicated that the address was incorrect

and accordingly the letter was returned.

However, on January 23, 2002, the Domain Name was transferred from Namescout

as registrar to the current Registrar Enom Inc. In addition the whois information

for the Domain Name was again updated to indicate "This Domain is For Sale |

Email your offers" as the registrant with a new postal address in Lithuania.

On February 20, 2002, the whois information for the Domain Name was

again updated to indicate "N/A" as the new registrant.

The Complainant maintains that a review of the multiple whois records for the

Domain Name show that the various "registrants" for the Domain Name "Web master,

Research Institute", "Web Master, Tan Queray Predprinimatelstvo" and "This Domain

is for Sale | Email Your offers" and "N/A" are one and the same individual creating

fictitious entities.

On about January 30, 2002, the Respondent posted a web site at the Domain Name

that provided links to commercial sites, including a casino web site, a software

program download site, a credit card company as well as links to numerous pornographic

web sites. In addition, the Respondent embedded in the site a hidden counter

which show the tanqueray.com web site had received close to 8,000 hits after

it had been posted on the web site. The Complainant has also been able to obtain

a list of hundreds of Domain Names registered to the Respondent incorporating

the trade marks and service marks of others, e.g. <ernest-hemmingway.com>.

These are set out at Annex 17 to the complaint.

The background is complicated but the Panel has found helpful and accepts the

evidence of Mary Lee Jenkins contained in her Declaration which is exhibited

at Annex 7 to the Complaint.

5. Parties’ Contentions

In the absence of any Response or communication from the Respondent, the Panel

relies upon the contentions of the Complainant. The Complainant contends:-

(i) The Domain Name <tanqueray.com> is identical and confusingly similar

to the Complainant's mark Tanqueray;

(ii) The Respondent has no rights or legitimate interests in the Domain Name

<tanqueray.com>;

(iii) The Respondent has registered and is using the Domain Name <tanqueray.com>

in bad faith;

6. Decision and Findings

In order to succeed in its complaint the Complainant has to prove under Paragraph

4(a) of the Policy the following:-

(a) that the Domain Name registered by the Respondent is identical and confusingly

similar to a trade mark or service mark in which the Complainant has rights;

(b) that the Respondent has no legitimate interests in respect of the Domain

Name; and

(c) that the Domain Name has been registered and is being used in bad faith.

The Panel will deal with each of these separately.

(i) that the Domain Name registered by the Respondent is identical and confusingly

similar to a trade mark or service mark in which the Complainant has rights;

The Panel accepts the evidence adduced by the Complainant that the Complainant

has widespread registered and unregistered rights in the mark "Tanqueray", and

also is the owner of such rights.

The Domain Name <tanqueray.com> is a part from the .com suffix identical

to the Complainant's trade mark "Tanqueray". The Panel takes the view that the

suffix.com is immaterial when determining whether a Domain Name is identical

or confusingly similar to a mark.

Accordingly the Panel finds for the Complainant under this Head.

(ii) the Respondent has no legitimate interests in respect of the Domain Name

<tanqueray.com>;

The Complainant submits that in the light of the "fame and distinctiveness

of the Tanqueray mark it will be difficult if not impossible for the Respondent

to use the Domain Name as the name of any business product or service for which

it would be commercially useful without violating the Complainant's rights in

the mark, and that accordingly the Respondent is not making any legitimate non-commercial

or fair use of the Domain Name." The Panel accepts this submission especially

in the absence of any evidence from the Respondent.

The Panel also has in mind that the evidence of use of the Domain Name <tanqueray.com>

by the Respondent is based upon use acquired as a result of a listing in the

Snap Names service and subsequent use providing links to pornographic, gambling

and credit card sites. This is contrary to any bona fide commercial use for

the purpose of offering goods or services.

Accordingly the Panel finds for the Complainant in respect of this element.

(iii) the Respondent has registered and is using the Domain Name <tanqueray.com>

in bad faith

In support of this submission the Complainant submits:

(i) The Respondent registered the <tanqueray.com> Domain Name primarily

for the purpose of selling, renting or transferring the Domain Name registration

to the Complainant for valuable consideration in excess of any out-of-pocket

costs directly related to the Domain Name;

(ii) The Respondent registered the Domain Name <tanqueray.com> to prevent

the Complainant from reflecting its mark in the corresponding Domain Name and

has engaged in a pattern of such conduct;

(iii) By using the Domain Name <tanqueray.com>, the Respondent has intentionally

attempted to attract, for commercial gain, internet users to its web site, by

creating a likelihood of confusion with the Complainant's mark as to the source,

sponsorship, affiliation and endorsement of its web site or of a product or

service on its web site;

(iv) The Respondent's continued and repeated use of false and inaccurate contact

information in connection with the registration of the <tanqueray.com>

Domain Name is further evidence of bad faith.

Having accepted that the Complainant's mark "Tanqueray" is famous, the Panel

accepts the Complainant's submission that the Respondent must have been aware

of the Tanqueray mark, and the Complainant's ownership of the mark at all times

relevant to the dispute. It submits that the fact that the Respondent registered

the Domain Name with the Snap Names capturing service, clearly shows that it

recognised and had knowledge of the Complainant's rights in advance of that

registration.

The Complainant rightly points out that the Respondent has not demanded a monetary

amount for the Domain Name, but relies upon the Respondent's record and history

of offering Domain Names for sale as establishing that the Respondent registered

and is using the Domain Name in bad faith.

The Complainant also submits that the registration with the Snap Names service

supports a finding that the Respondent's intentions were to prevent the Complainant

from reflecting its mark Tanqueray in a corresponding Domain Name and regards

this as evidence of a "pattern of conduct" of registering Domain Names incorporating

the trade marks of others in which it has no rights or legitimate interests.

It relies upon the list provided by the Registrar of the Respondent's registration

of Domain Names that are identical and/or confusingly similar to the marks owned

by others as evidence of the pattern of conduct. (These are listed at Annex

17 to the Complaint).

The Complainant also submits that the Respondent has intentionally attempted

to attract for commercial gain internet users to its web site by trading on

the image and goodwill associated with the mark Tanqueray. It points out that

the large number of hits recorded by the hidden counter is evidence of this,

even if an internet user conducted a further investigation and established that

the web site was not authorised or operated by the Complainant. This does not

diminish the fact that substantial confusion or at the minimum initial interest

confusion can occur.

The Complainant also submits that when the Complainant's Cease and Desist letter

was returned by the U.S. postal service, the Respondent again changed the registrations

contact information to a clearly fictitious entity, "Web Master, Tan Queray

Predprinimatelstvo" in Russia. This pattern of registering fictitious registrants

including "This Domain is for Sale | Email your offers Web Master" and "N/A"

are evidence of an attempt by the Respondent to try and evade identification.

The Complainant concludes its submission to the effect that there is overwhelming

evidence of the Respondent's bad faith in registering and using the Domain Name.

Taking all the evidence submitted by the Complainant into account the absence

of any counter-submissions, and considering the submissions as to bad faith,

the Panel finds for the Complainant on this element.

It follows that the Complainant has succeeded in its complaint.

7. Decision

In accordance with Paragraph 4 (i) of the Policy, and for the reasons referred

to above, the Panel finds for the Complainant and orders as requested by the

Complainant that the Domain Name <tanqueray.com> be transferred to the

Complainant.

Clive Duncan Thorne

Sole Panelist

Dated: April 16, 2002