WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic
Case No. D2000-1698
1. The Parties
The Complainant is Arthur Guinness Son & Co. (Dublin) Limited of St. James’s Gate Brewery, Dublin 8, Ireland, represented by Mr. Dan Enraght-Moony of SJ Berwin & Co. of London. The Respondent is Mr. Dejan Macesic of 396 Carmichael Suite 300, Montreal, QC H2Z 1B5, Canada, representing himself.
2. The Domain Name and Registrar
The disputed domain name is <guiness.com> and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on December 5, 2000, and in hard copy on December 7, 2000. The Center acknowledged receipt on December 7, 2000 and that day sought registration details from the Registrar. On December 12, 2000 the Registrar confirmed that the Respondent is the registrant, the Registrar’s 5.0 Service Agreement (which incorporates the Policy) is in effect and that the status of the disputed domain name is "active."
On December 13, 2000, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On December 14, 2000, the Center printed out a copy of the disputed Webpage; formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly December 14, 2000. The last day specified in the notice for a response was January 2, 2001. On December 18, 2000 the Center acceded to a request from the Respondent for an extension of time for the Response until January 9, 2001. On January 9, 2001 the Respondent filed a Response by email and on January 11, 2001 in hardcopy. Its receipt was acknowledged by the Center on January 10, 2001.
On January 16, 2001, the Center notified the parties of the appointment of Alan L. Limbury as a single-member panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 29, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the extended time specified by the Center in accordance with the Rules and the administrative panel was properly constituted.
On January 12, 2001, the Complainant submitted a "voluntary response" to the Respondent’s response and on January 15, 2001 the Respondent submitted its own "voluntary response" to the Complainant’s "counter-response".
The panel declines to have regard to either of these supplementary submissions. In Goldline International, Inc. v. Gold Line, (WIPO Case No. D2000-1151) the 3-member panel said:
"The Complainant submitted a Reply to the Response. The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), though, do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000). Nevertheless, Complainants routinely submit replies, which not only is usually a waste of party resources (not to mention the resources of the Center and Panelists), but also delays the final resolution of the proceeding, which undermines the Policy’s promise of rapid, cost effective dispute resolution. CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000). For these reasons, many Panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, Case No. D2000-0662 (WIPO September 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October. 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO November 3, 2000); Viz Communications, Inc. v. Redsun dba www.animerica.com, Case No. D2000-0905 (WIPO December 22, 2000). Because the Reply in this case presents neither previously-unavailable evidence nor authority, it is stricken and the Panel has disregarded it in its entirety".
In this case the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its Complaint, nor does the Response appear to have raised arguments that the complainant could not reasonably have anticipated. There appear to be no other exceptional circumstances that would justify admission of a supplementary submission from the Complainant, still less any response to it from the Respondent.
It could be argued that since both parties filed their unsolicited submissions before the panel was appointed, delay is not an issue in this case. However, to receive those submissions simply for that reason would undermine the intent of the Rules.
4. Factual Background
In Dublin, Ireland, the Complainant (a subsidiary of Diageo plc) has brewed and sold beer under the name and trademark GUINNESS since 1764. Under that name it has exported beer around the world since 1769 and its beer is now brewed in 50 countries and sold in 150. Approximately 10 million glasses are purchased daily. GUINNESS beer has 80% of the "black beer" or stout sector of the world market. It is heavily promoted and advertised.
The trademark GUINNESS has been used in Canada since 1900 and registered in Canada in respect of stout and beer since 1964 (Reg. No. TMA134827) and in other countries, either alone or in combination with other words.
The Complainant and other members of the "Guinness Group" operate a Website at http://www.guinness.com, accessible from anywhere in the world and containing information about the GUINNESS brand.
The Respondent, having an address in Canada, registered the domain name <guiness.com> in February, 1999 and has since been operating a Website at that address which, on April 1, 2000, the Respondent described as "dedicated to the discussion of home brewing and sports" [Response, Annex A]. Since the Complainant first complained about the Respondent’s use of the disputed domain name, the site has broadened to become a "discussion board" on various topics, including spirits, rugby, soccer, the Irish and Celtic cultures, as well as a free-form forum, and various disclaimers have been added to disassociate the site from the Complainant.
5. Parties’ Contentions
The Complainant has common law as well as registered trademark rights in the name GUINNESS, which is famous.
Identity and confusing similarity
The disputed domain name contains a word which is confusingly similar to the common law and Registered trademark GUINNESS.
The Complainant has not authorized the Respondent to use the trademark GUINNESS nor to register nor use a domain name incorporating that mark.
Given the worldwide fame and notoriety of the mark GUINNESS, no trader would choose the domain name <guiness.com> unless to create a false impression of association with the Complainant or its beers; to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent.
By virtue of the widespread use and reputation of the GUINNESS trade mark, members of the public in Canada and around the world would mistakenly believe that the registrant of the <guiness.com> domain name was the Complainant or was in some way associated with the Complainant. Given the widespread use and notoriety of the famous GUINNESS mark, the Respondent must have been aware that in registering the domain name he was misappropriating the valuable intellectual property of the owner of the GUINNESS trademark.
The Respondent’s registration of the <guiness.com> domain name has also prevented the Complainant from registering a domain name which corresponds to the Complainant’s trademarks contrary to paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks in breach of para 4(b)(iv) of the Policy.
In a telephone conversation with the Complainant’s Canadian lawyers, Bereskin & Parr in March 2000, the Respondent acknowledged that some people visited his site precisely because of the presence of the word "guiness". It was explained to him that this was one of the reasons the Complainant objected to his registration of <guiness.com> and that he was not entitled to benefit from the goodwill of the Complainant in this way. The Respondent left a telephone message stating that he would discuss his options with counsel. Soon after, Bereskin & Parr received a telephone message from a newspaper journalist in California inquiring about the "dispute" between the Complainant and the Respondent. Subsequently the Respondent said that the journalist friend had made some reference to this dispute in a chat room on the Internet. This was a clear attempt by the Respondent to exert external pressure on the negotiation process and an indication that the Respondent had little intention of co-operating with the Complainant.
Subsequently, the Respondent’s lawyers contacted Bereskin & Parr to suggest that if sufficient confusion could be shown, the sum of CAN$5,000 be paid to the Respondent to change the domain name - a clear attempt to benefit financially from the confusion created by the registration of the domain name (contrary to paragraph 4(b)(i) of the Policy).
However, the Respondent’s primary motive is to increase the number of visitors to his site, with the objective of translating this traffic into commercial gain through advertisement revenue, since the homepage for <guiness.com> contains advertising banners.
The Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of GUINNESS is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the GUINNESS trade mark.
The Website <www.guiness.com> is a discussion board. All content, with the exception of graphical elements and site structure, is user-provided. No site element, be it text or graphical, depicts, describes or refers to the Complainant’s wares or services.
Identity or confusing similarity
The Respondent is not infringing the Complainant’s trademarks as he is not selling similar wares or services, which would infringe the Complainant’s trademarks, in the same geographical areas where the Complainant operates.
The fame of the trademark GUINNESS is not universal. Other GUINNESS-related trade marks exist in different geographical regions, selling different wares and services. For example:-
- "The Guinness World Book of Records" (<www.guinnessrecords.com>), registered inter alia for the service of providing education, entertainment and recreation through the medium of museums and exhibitions as well as for the wares of books and periodical publications.
- "The Guinness Group" (<www.guinnessgroup.com>), which provides Internet business consulting.
- "Investec Guinness Flight" (<www.gffunds.com>), which provides investment services.
The word "GUINNESS", in the mind of consumers, is not automatically associated with "Guinness Beer" nor the Complainant’s trademarks. Therefore the domain name does not infringe on the Guinness Beer related trademarks.
The Respondent is making a "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
Even though there are revenues generated by the advertising banners on the site, these revenues are modest and serve only to cover the hosting and maintenance costs of the site and are not for personal gain. There are no commercial activities related to the sale of bona fide products or services on the site. Also, the Respondent has not at any time put the domain on sale.
As evidence of the Respondent’s lack of intent to divert consumers, a notice prominently located at on the top of every page of the site states the following:
"ATTENTION: This web site is in no way affiliated with Guinness Ltd. (makers of Guinness Beer) or the Guinness Book of World Records. Guinness Ltd., and the Guinness Book of World Records, neither endorse nor are affiliated with guiness.com in any way. This web site is solely dedicated to the discussion of the various included topics."
"Guinness Beer and the Guinness Book of World Records are registered trademarks and service marks of the respective holders."
The Respondent is using the domain name with the belief that he is making "fair use" of this domain, according to the Lanham Act, Section 33(b)(4), which states:
"That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."
The Respondent’s site clearly states that the site is "solely dedicated to the discussion of the various included topics", which constitutes, in the Respondent’s belief and good faith, "fair use", for it is not used as a mark. Further, nearly all content is user provided.
The Respondent is not trying to tarnish the trade marks owned by the Complainant, as may be witnessed by the tasteful, and unrelated to Guinness Beer, content of the site.
The Respondent did not acquire the domain to disrupt or commercially harm the business of the Complainant, nor is he a competitor of the Complainant. Every effort has been made to eliminate the likelihood of any possible mistaken association between the site and the Complainant, namely by the prominent notice and disclaimer throughout the site. Further, the only mention of <guiness.com>, the domain, are links to the home page of the site, and is only intended to confirm to visitors that they have accessed the correct World Wide Web address. Also, the fact that the notice states that "This web site is solely dedicated to the discussion of the various included topics" and the fact that the discussion groups do not mention any of the Complainant’s trade marks or service marks, further reduce the likelihood of confusion.
The Respondent did not acquire the domain name in order to prevent the Complainant from reflecting his trademarks or service marks in a corresponding domain name. The Complainant did not prove that the Respondent has engaged in a pattern of such conduct, as per Paragraph 4(b)(ii) of the Policy.
The Respondent did not acquire the domain name to confuse Internet users with the Guinness Beer trade mark, nor for the sale of wares or services, and that the only revenues generated are from ad banners which are not used for personal gain.
As to the Complainant’s statement that the Respondent made a "clear attempt ... to exert external pressure on the negotiation process …", upon receiving the call from Bereskin & Parr, the Respondent immediately attempted to find counsel using two sources: immediate friends and family, and law-related newsgroups (not chat rooms). One of the Respondent’s friends contacted the Californian journalist, who subsequently contacted Bereskin & Parr. This was done without the Respondent’s knowledge. The Respondent did not at any time have a relationship with the journalist from California, nor did he encourage said journalist to contact Bereskin & Parr.
The Respondent was seeking to find a counselor with domain name and trade mark experience by posting on April 1, 2000, without prejudice, a request for help in law-related newsgroups. At no time did he intend to exert external pressure on the negotiations, but was rather seeking legal help. Either the Complainant misinterpreted the communications or subjective interpretation is being used to strengthen the Complaint.
As further proof of the Respondent’s willingness to co-operate with the Complainant to reach a constructive agreement, the Respondent’s proposed:
- The voluntary addition of more notices and disclaimers on the site.
- The voluntary changes to significantly modify how the content is presented.
- The offer to the Complainant to monitor postings and e-mail traffic originating from the site, with the goal of precisely measuring the effect of changes to distance the site from the Complainant.
- The offer to change the site name, if mutually agreed upon levels of mistaken association from postings and e-mails are exceeded. In this case, a reasonable transition delay has been proposed, as well as compensation to cover the costs of re-designing the site.
At no time was the Respondent seeking to benefit financially from this proposed agreement, nor did he offer to sell the domain name. The primary motive of the site is discussion, not commercial gain.
As to the Complainant’s assertions regarding the automatic association of the domain name with Guinness Beer, this is speculative. See the Respondent’s arguments on the GUINNESS allegations of fame and on the site notices.
Reverse Domain Hijacking
This Complaint has been made in bad faith and constitutes reverse domain hijacking for the following reasons:
- The Respondent’s site has been in operation since 1999 without incident, and the timing of this Complaint coincides with the conclusion of previous successful similar Complaints against other domain holders. This indicates that the Complainant is on an active campaign to gain control of domain names perceived to be similar to their trade marks, and that the Complainant is attempting to strengthen its case against the legitimate fair use of the domain by the Respondent.
- The Complainant attempts to create an impression, with misleading evidence, that the Respondent did not wish to co-operate with the Complainant during previous communications, such as the reference to "external pressure" on the previous attempt at negotiation between both parties, the belief that the Respondent seeks to personally gain from the domain name, the misinterpretation of the constructive site modification and/or relocation proposal by the Respondent as requested by the Complainant and the lack of a response from the Complainant to this proposal.
- The Complainant attempts to show that the communications with the Respondent were courteous. The telephone conversation described was instead perceived by the Respondent to be rather threatening, and left no doubt in his mind that the Complainant would be satisfied by nothing less than the transfer of the domain name to the Complainant.
- The Complainant omitted pertinent communications between the Respondent and the Complainant which demonstrate the threatening and intransigent tone of the Complainant, indicating that the sole purpose and intent of the discussion was for the Respondent to relinquish control of the domain name to the Complainant.
- The Complainant also omitted pertinent communications between the Respondent and the Complainant which demonstrate that the Respondent was actively seeking counsel, contrary to the Complainant’s allegations.
- The site’s activities, as described herein, do not commercially affect or harm the Complainant’s world wide business. The Respondent therefore finds the motives of the Complaint to be in question.
6. Discussion and Findings
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the disputed domain name has been registered and are being used in bad faith.
There is no dispute that the Complainant has rights in the trademark GUINNESS.
Identity or confusing similarity
It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO Case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO Case D2000-0102).
The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):
"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".
This applies equally where a domain name is composed in whole or in part of a trade mark.
In Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol, (WIPO Case D2000 – 0996), the learned panelist said:
"In the absence of any Response from the Respondent, this Administrative Panel accepts that in the present state of development of the jurisprudence in this area, in cases where the administrative panel is being guided by the principles developing in the laws of the USA, the appropriate test to apply is the multi-factor test set forth in the decision of the United States Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). In doing so, this Administrative Panel is conscious that this test may not be entirely suited to the determination of these issues as can be seen from the difficulties experienced by this Administrative Panel in its application (infra). Nonetheless it is the test that has been applied in a number of cases where there has been a "-sucks" element. Furthermore, in the present case the Complainant has submitted that this is the appropriate test to apply and the Respondent has made no submissions on the point. In the circumstances, this Administrative Panel with some reservations, accepts that this is the appropriate test to apply".
This is not a case in which it is appropriate to apply principles of US trademark law: the parties are located in Ireland and Canada. For the purposes of this dispute, the Complainant has submitted to the jurisdiction of the courts of Canada. The only connection with the USA is the Registrar. This is insufficient to attract the application of US law to this case. Accordingly, this panel regards the appropriate test for confusing similarity to be a comparison of the domain name and the mark, following Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (WIPO Case D2000-0109) and The Forward Association, Inc.,(supra).
In terms of sight and sound, the domain name <guiness.com> is virtually identical to the Complainant’s GUINNESS name and mark. Except for the missing "N" in the domain name and the inconsequential suffix ".com", the two are identical. Accordingly, if an Internet user seeking to contact the Complainant at its Website were to misspell or mistype the <www.guinness.com> domain name by leaving out an "N", that person would be directed unknowingly to the Respondent’s website.
The close misspelling at issue here is confusingly similar to the Complainant’s mark. See, e.g., Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, (WIPO Case D2000-0330); Oxygen Media, LLC v. Primary Source, (WIPO Case D2000-0362).
Because the Complainant’s trademark is so well known, Internet users finding <guiness.com> on search engines or elsewhere are likely to be misled into thinking the Complainant is the registrant or is otherwise associated with the disputed domain name or, if not misled, at least confused into wondering whether this is so.
The Respondent does not deny that the disputed domain name is confusingly similar to the GUINNESS trademark. Rather he says there is no trademark infringement because his site does not sell similar wares in the same geographical sphere as the Complainant. But there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website.
The panel also adopts the reasoning in In Diageo p.l.c. v. John Zuccarini (WIPO Case D2000-0541):
"The Complainant has registered the domain name <guinnes.com>. This domain name is identical to Complainant’s trademark Guinness, except that: (1) the domain name adds the generic top-level-domain ".com" and (2) the elimination of the letter "s".
"The addition of the generic top-level-domain (gTLD) .com is without legal significance in determining similarity.
"The elimination of the letter "s" between "guinnes" and "Guinness" does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark. The Panel therefore concludes that the domain name is identical or confusingly similar to a trademark or service mark in which the Claimant has prior exclusive rights."
The panel finds that the disputed domain name <guiness.com> is essentially identical and confusingly similar to the Complainant’s trademark GUINNESS. The Complainant has established this element.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.
The Complainant has not authorized the Respondent to use the GUINNESS name and mark nor to include that mark in any domain name.
The Respondent has not asserted that he is commonly known by the disputed domain name and has offered no explanation of his choice of that name. Significantly, the Respondent has not asserted that he was unaware of the Complainant’s mark when he registered the disputed domain name. He has not denied that he acknowledged to the Complainant’s lawyers that some people visited his site precisely because of the presence of the word "guiness". His description in April, 2000 of the Website as "dedicated to discussion of beer and sports" reveals his awareness of the GUINNESS mark and its strength in relation to beer.
The Respondent points to the disclaimers on his Website as evidence of his "lack of intent to divert consumers". But by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant. The panel finds the use of a domain name comprising a misspelling of the Complainant’s mark proves the Respondent’s intent to divert consumers.
The panel finds that the Respondent registered the domain name with the fame of the GUINNESS mark in his mind and with the intention of diverting to his site Internet traffic intended for the Complainant, primarily to stimulate interest in his discussion group but also for the purpose of generating revenues from the advertising banners on his site. Despite the claimed modesty of those revenues, the panel finds such use is not noncommercial. Even if it were, the panel would find that use neither legitimate nor fair. The circumstances described in subparagraph 4(c)(iii) of the Policy are not present.
Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website, however explicit, nor to "tasteful content", to clothe the domain name with legitimacy. See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,(WIPO Case D2000-0869, September 25, 2000):
"The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion".
Without disputing the fame of the Complainant’s mark, the Respondent points to others who use the name GUINNESS in connection with their trading activities, in order to cast doubt upon the universality of that fame. Assuming that the Complainant and others, separately, have goodwill in their respective fields in the same mark, the Respondent does not show a legitimate interest in the disputed domain name if, instead of or in addition to seeking to divert traffic from the Complainant, he intended to divert traffic from other legitimate users of the mark.
The Respondent offers no explanation as to how the "fair use" provision of the Lanham Act (as distinct from subparagraph 4(c)(iii) of the Policy) has any relevance to this proceeding, the parties to which are in Ireland and Canada. In any event, his conduct does not fit within any of the possible circumstances contemplated in section 33(b)(4) of that Act when all the words of that section are taken into account.
The panel finds that the Complainant has proved that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The evidence does not establish circumstances within subparagraphs 4(b)(i), (ii) or (iii) of the Policy.
As to subparagraph 4(b)(iv), the panel adopts the following passage from AltaVista Company v. Saeid Yomtobian (WIPO Case D2000-0937):
"The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark".
The panel has found that the domain name is being used both for a discussion group and for the commercial gain of generating revenue from advertising banners on the Respondent’s site. The Respondent must have known of the Complainant’s famous mark when he registered the disputed domain name and he did so in order misleadingly to divert traffic to his site from that of the Complainant. The panel finds the requirements of this subparagraph satisfied.
The circumstances set out in paragraph 4(b) of the Policy are not exhaustive. They are to be taken as evidence of both bad faith registration and bad faith use. Even if, contrary to the panel’s finding, the respondent’s Website were noncommercial, the panel would make the following separate findings:
- the respondent registered the disputed domain name in bad faith because he must have known of the Complainant’s famous mark before he registered the domain name; and
- the domain name is being used in bad faith because it is being used intentionally to mislead Internet users into visiting the Respondent’s Website in the belief that they are visiting the Complainant’s Website.
The panel accepts that this last finding is contrary to the outcome in Daniel J Quirk, Inc., v. Michael J. Maccini (Case FA 0006000094964), in which the complaint was dismissed on the ground that the Respondent’s discussion site was noncommercial. That decision did not consider whether elements of bad faith were present other than those specified in paragraph 4(b) of the Policy; was heavily influenced by the US First Amendment right of free speech (which has no application in this case because there are no US parties) and appeared to disregard the fact that Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp. 2d 1161 (USDC C.D. Cal. 1998) did not involve use of the Plaintiff’s trademark in the domain name – see Wal-Mart Stores, Inc., v. Walsucks and Walmart Puerto Rico, (WIPO Case D2000-0477).
Accordingly, the Complainant has proved that the domain name was registered and is being used in bad faith.
Reverse domain name hijacking
The Respondent claims the Complaint constitutes an attempt at domain name hijacking. This is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also paragraph 15(e) of the Rules. To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case D2000-1224) and Goldline International, Inc. v. Gold Line (WIPO Case D2000-1151). In Smart Design LLC v. Hughes, (WIPO Case D2000-0993) bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interests.
The complaint having been upheld, the Respondent cannot succeed on this point.
Pursuant to paragraph 4(i) of the Policy and to paragraph 15 of the Rules, the panel requires the domain name, <guiness.com>, to be transferred to the Complainant.