Arthur Guinness Son & Co. (Dublin) Limited; Diageo Ireland v. The Director

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