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 . The Registrar of the Domain Name is Enom Inc, which has confirmed that the Domain Name 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 . 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 with Snap N 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 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 N 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 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. . 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 is identical and confusingly similar to the Complainant's mark Tanqueray;
(ii) The Respondent has no rights or legitimate interests in the Domain Name ;
(iii) The Respondent has registered and is using the Domain Name 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 is a part from the .com suffix identical to the Complainant's trade mark "Tanqueray". The Panel takes the view that the 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 ;
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 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 in bad faith
In support of this submission the Complainant submits:
(i) The Respondent registered the 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 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 , 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 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 be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: April 16, 2002
Full & Egal Universal Law Academy