WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diageo Ireland v. Jeremy McKeon, Rochester Web Design

Case No. D2014-0299

1. The Parties

The Complainant is Diageo Ireland of Dublin, Ireland, represented by Frankfurt Kurnit Klein & Selz, PC, United States of America (the “USA”).

The Respondent is Jeremy McKeon, Rochester Web Design of Rochester, New York, USA.

2. The Domain Name and Registrar

The disputed domain name <thegreatguinnesstoast.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint.

The Center sent an email communication to the Complainant on March 4, 2014 providing the registrant information disclosed by the Registrar, notifying that the Complaint was administratively deficient in another respect, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 4, 2014.

The Center verified that the Complaint together with the amended 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 March 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2014.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 3, 2014. 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 is a company organized and existing under the laws of Ireland. The Complainant and its predecessors in interest have sold alcoholic beverages under the GUINNESS trademark and name for over 200 years. Through continuous sales, advertising and promotion, the Complainant’s “Guinness” brand products have become known worldwide, such that they are sold in about 150 countries, and 10 million glasses of product are consumed around the world every day. The Complainant is the owner of numerous registered trademarks for the word mark GUINNESS, including USA registered trademark number 0321014, registered on January 15, 1935, in international class 32.

“The Great Guinness Toast” is the title of an event established in 1993 that takes place every year in an effort to establish a new world record for the world’s largest toast.

The disputed domain name was created on February 14, 2006. The first named Respondent, Jeremy McKeon, appears to operate a web design company named Rochester Web Design, which is the second named Respondent. The screenshot of the website associated with the disputed domain name dated November 11, 2013 shows the Complainant’s GUINNESS mark and harp design together with another trademark of the Complainant, GUINNESS WEBSTORE. At that date, the said website provided information regarding “The Great Guinness Toast”.

On December 5, 2013, the first named Respondent wrote to the Complainant’s consumer care email address stating that he was a fan of “The Great Guinness Toast” and that he had created the website associated with the disputed domain name in 2007. The first named Respondent went on to note that the said site was now being referenced as the official site about the said event and that he wished to expand it. The first named Respondent requested information as to how he could become the Complainant’s official webmaster for the said site and stated “[…]If I was benefiting from my work in some fashion, I would be able to dedicate much more time to the maintenance and updating of the site as well as the Facebook fanpage that I just created[…]”.

The Complainant informed the first named Respondent that it did not wish to enter into a business relationship with the Respondents. The first named Respondent then posted a message to the Complainant’s official “Facebook” page in which he stated inter alia that “Literally thousands of Guinness drinkers came to the [Respondent’s] website every February to get info about the toast, post pictures and learn about Guinness history...”. Thereafter, the Respondents redirected all web traffic to the website associated with the disputed domain name to the website of a competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant notes that the disputed domain name incorporates the Complainant’s GUINNESS mark in its entirety. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the GUINNESS trademark or any other trademark incorporating the GUINNESS mark. The Complainant asserts that the Respondent carries on no business under the GUINNESS name and has never been known by the disputed domain name or by the GUINNESS trademark.

The Complainant notes that the Respondent registered the disputed domain name long after the Complainant began making and selling products under the GUINNESS mark and brand and after such mark was registered in the USA and other jurisdictions. The Complainant submits that the Respondent registered the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website located at the disputed domain name by creating a likelihood of confusion with the Complainant and its famous GUINNESS registered trademark.

The Complainant states that when the Respondent was informed by the Complainant that the website associated with the disputed domain name could lead to consumer confusion and that the Complainant did not wish to enter into any business relationship with the Respondent, the Respondent refused to transfer the disputed domain name to the Complainant. The Complainant submits that the Respondent’s “Facebook” post constitutes an acknowledgement on the part of the Respondent that thousands of consumers were confused by the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The first and second named Respondent appear to the Panel to be essentially one and the same. Accordingly, the Panel will refer to both Respondents collectively as “the Respondent” for convenience.

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has demonstrated to the Panel’s satisfaction that the Complainant has rights in the GUINNESS trademark, a mark which is both strong and famous (see, for example, the panel’s comments in an early case under the Policy, Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol, WIPO Case No. D2000-0996, “As regards the strength of the mark: without doubt, the Complainant is the owner of a very strong and famous trademark viz <GUINNESS>”). The Complainant’s GUINNESS trademark is incorporated in its entirety within the disputed domain name together with the words “the”, “great” and “toast”. Each of these words is generic and non-distinctive.

It is well established in cases under the Policy that confusing similarity between a trademark and a domain name may be found where the trademark is incorporated and recognizable as such within the domain name, with the addition of generic and non-distinctive words typically being regarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In the present case, any such confusion is likely in the Panel’s opinion to be exacerbated by the fact that the disputed domain name matches exactly the name of an event connected with the Complainant and its products.

In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainant states that it has not licensed or otherwise permitted the Respondent to use the GUINNESS trademark, and contends that the Respondent carries on no business under the “Guinness” name and has never been known by the disputed domain name or by the GUINNESS trademark. The Panel considers that these submissions are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of such rights or legitimate interests.

The Respondent has not filed a response in connection with this administrative proceeding. However, it is clear to the Panel from the Respondent’s email to the Complainant dated December 5, 2013 that the Respondent claims to have registered the disputed domain name because he was a fan of “The Great Guinness Toast” event and also of the Complainant’s products. The question for the Panel is therefore whether and in what circumstances a domain name registered for the purposes of a fan site may give rise to rights or legitimate interests within the meaning of the Policy. This issue features in the WIPO Overview 2.0 at paragraph 2.5, which poses the question “Can a fan site generate rights or legitimate interests in the disputed domain name?” Two principal views have been expressed by panels, which are as follows (with cited decisions omitted):

View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).

View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.

In the present case, the Respondent fails to demonstrate rights or legitimate interests on the test put forward by either view. In terms of View 1, the original site published by the Respondent was not clearly distinctive from an official site of the Complainant. It used the Complainant’s “Guinness harp” device, together with a menu item featuring the Complainant’s GUINNESS WEBSTORE trademark. The Complainant also makes the uncontradicted assertion that the said site had the appearance of one of the Complainant’s sites and also included assorted information copied without authorization from the Complainant’s websites. Furthermore, the Respondent’s comments in correspondence with the Complainant indicate that the Respondent’s said site was sufficiently similar to that of the Complainant that it was being referenced as an official site on a national and, occasionally, global basis.

In terms of View 2, it is also clear from the correspondence between the Parties that the Respondent sought to derive commercial advantage from the registration and use of the disputed domain name. In particular, the Respondent proposed that he should be appointed as an official webmaster of the Complainant and suggested that he should benefit in some fashion from his work on the website associated with the disputed domain name.

It should also be noted that following the exchange of correspondence between the Parties, the Respondent changed the website associated with the disputed domain name to point to a product in competition with those of the Complainant. In the Panel’s opinion there is no way that the use of the disputed domain name in this manner could confer any rights or legitimate interests upon the Respondent.

In all of these circumstances, the Panel considers that the Respondent cannot be considered to have rights or legitimate interests in the disputed domain name either by virtue of his alleged operation of a fan site, as indicated in the Respondent’s email to the Complainant, or in terms of the current use of the disputed domain name. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and that the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

In the present case, the Complainant’s submissions focus principally on paragraph 4(b)(iv) of the Policy, together with general submissions concerning the Respondent’s alleged attempt to obtain commercial advantage through the registration and use of the disputed domain name and the Respondent’s recent use of the disputed domain name to redirect traffic to the website of a competitor of the Complainant. The Respondent has chosen not to file a response to the Complaint, such that there is neither any explanation from the Respondent on the record as to the Respondent’s intent at the time of registration, nor any reason given for the Respondent’s subsequent use of the disputed domain name.

It is clear to the Panel that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the GUINNESS trademark. However, the Panel must also determine whether or not the Respondent’s intent at the point of registration was to operate a genuine non-commercial fan site or to target the Complainant’s rights in some respect for his own commercial benefit. In evaluating the evidence on this point, the Panel considers that the Respondent’s recent actions are of considerable significance and must be weighed in the balance.

In the case of Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, this Panel held that an attempt by a person to improve their commercial prospects through the registration of a domain name which that person knows to correspond to the trademark of another is an indication of registration in bad faith. The circumstances are analogous in the present case. It is clear to the Panel that the Respondent sought commercial advantage from the registration and use of the disputed domain name via a request for an official appointment from the Complainant. This request was accompanied by a statement in the Respondent’s email that such appointment should carry benefits “in some fashion”. Furthermore, any alleged good faith motivation at the point of registration must also be considered to be tainted by the Respondent’s removal of the fan site associated with the disputed domain name and by its replacement with a redirection to a website offering a product competitive to that of the Complainant. In the Panel’s view, these are strong indications that the Respondent’s motives at the point of registration fell short of what could be described as bona fide.

The Panel now turns to the question of use in bad faith. The Respondent claims to have generated substantial web traffic from his use of the Complainant’s mark. Following the correspondence between the Parties, the Respondent changed the use of the disputed domain name to point such traffic to the website of one of the Complainant’s competitors. This could not be described as anything other than a use in bad faith.

In addition, the website associated with the disputed domain name has evidently been the cause of some consumer confusion, and in particular, consumer belief that it was an official site of the Complainant. It is reasonable to infer that this will have disrupted the business of the Complainant. In the Panel’s opinion, this is a further indication of registration and use bad faith.

In all of these circumstances, the Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <thegreatguinnesstoast.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: April 17, 2014