WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Musgrave Limited v. foodies, Peter McEvoy Case No. D2009-1318 1. The Parties
The Complainant is Musgrave Limited, Cork, Ireland, represented by F.R. Kelly & Co., Ireland.
The Respondent is foodies, Peter McEvoy, Dublin, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2009.
On October 7, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name.
On October 7, 2009, eNom transmitted by email to the Center its verification response disclosing an omission in the registrant and contact information for the disputed domain name.
On October 14, 2009, the Center sent an email communication to the Complainant providing the additional information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 14, 2009.
The Center verified that the Complaint together with the amendment to the 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 October 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2009.
On November 12, 2009, the Center appointed James Bridgeman as the sole panelist in this matter.
This Panel finds that it was properly constituted. This 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 carries on business as a wholesaler of food and beverage produce and related services in Ireland and is the proprietor of Community Trade Mark registration no. 7227622 MUSGRAVE MARKETPLACE the application for which was filed on September 11, 2008 and which was registered on June 17, 2009 in class 35 in respect of certain retail and wholesale services.
The Complainant is also the proprietor of the figurative Community Trade Mark registration no. 000240176 MUSGRAVE, the application for which was filed on April 25, 1996 and which was registered on October 2, 1998 in classes 29, 30 and 32 in respect of various foodstuffs, beverages and certain services in class 42.
In the absence of a Response, there is no information available about the Respondent except the WhoIs record and the information in the Complaint.
The disputed domain name at issue was registered on September 1, 2009 and resolves to a single page website on which at one time, adult content was posted. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights and requests that the domain name be transferred to the Complainant.
The Complainant relies on the above Community Trade Mark registration no. 7227622 MUSGRAVE MARKETPLACE and further submits that it has rights in the unregistered trade mark MUSGRAVE MARKETPLACE which it has used in the course of trade in Ireland for wholesale services since 2007. The Complainant submits that it has been accepted that a common law mark which has become distinctive through use in any country is a sufficient basis for a complaint, citing QuakeAID v. Solid D, Inc.WIPO Case No. D2002-0815 (November 13, 2002).
The Complainant submits that its rights in the unregistered trade mark MUSGRAVE MARKETPLACE are protected in Ireland by the Complainant's right to bring an action for the tort of passing off.
The Complainant claims to have acquired a substantial goodwill and reputation in the MUSGRAVE MARKETPLACE mark through extensive sales, advertising and marketing. In support of this submission the Complainant has furnished print-outs of web site articles illustrating its use of the MUSGRAVE MARKETPLACE mark.
The Complainant submits that its mark MUSGRAVE MARKETPLACE is derived from the Complainant's name Musgrave Limited and submits that the Respondent's use of the identical mark 1 is a misrepresentation that any goods or services upon which it is used emanate from or are associated with the Complainant.
The Complainant further submits that the Respondent has copied or imitated its trading name and the registered trade mark by which the Claimant's business or goods are known. The Complainant states that in British Telecommunications plc v. One in a Million Ltd [1999] FSR 1, the English Court of Appeal held that the only possible reason why anyone not connected with the plaintiffs would wish to use a domain name incorporating their marks or names would be to pass himself off as part of a plaintiff's group or to pass off products as those of the plaintiff. This case has been followed by the English courts in Global Projects Management Ltd and another v. Citigroup Inc and others (decision of Park J, Chancery Division, October, 2005). The Court confirmed that the mere registration and holding of a domain name that leads people to believe that the holder of the domain name is linked with a person is enough to make the domain name a potential “instrument of fraud” and amounts to passing off.
The Complainant also submits that the Respondent's use of the disputed domain name is causing or will probably cause damage to the Complainant's goodwill and reputation.
The Complainant submits that where marks are identical or virtually identical, the likelihood of damage may be inferred, citing the above-referenced One in a Million case.
The Complainant submits that the domain name is identical and confusingly similar to the Complainant's mark. The Complainant argues that if the gTLD extension is ignored, the disputed domain name is identical to the Complainant's mark, citing Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (July 7, 2000) and if the gTLD extension is not ignored, the disputed domain name and the Complainant's mark are confusingly similar, citing Fortum Corporation v. Li. Yen Chun,WIPO Case No. D2002-0324 (June 21, 2002).
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has no legitimate connection with Complainant's MUSGRAVE MARKETPLACE mark.
The Complainant further argues that the Respondent is not known or connected with the family name MUSGRAVE.
The Complainant has submitted as an annex to the Complaint a print-out of the web page to which the disputed domain name resolves which displays a partially undressed female and the words: “welcome to what will be Irelands best adult site. You can make contact for casual relationships, enjoy the doging scene and lots more ? site under construction please call back”
The Complainant submits that there is no commercial advantage in setting up such website other than to sell the disputed domain name to the Complainant or a competitor. By posting the aforementioned content on the webpage to which the disputed domain name resolves, the Respondent dilutes and tarnishes the wholesome reputation held by the Complainant under its MUSGRAVE MARKETPLACE mark.
The Complainant submits that the Respondent's web page is effectively a holding page, which has been posted by the Respondent in order to seek an offer from the Complainant to transfer of the disputed domain name and registration. Such registration and use is in bad faith and such use cannot establish rights or legitimate interests in the disputed domain name.
The Complainant further submits that it is entitled to take action against use of identical or similar marks for dissimilar goods or services (so long as reputation can be shown) in the EU. Pursuant to the decision of the European Court of Justice in Davidoff v. Gofkid, Case C-292/00, because the Complainant has a reputation in the EU in the mark, it would be able to take action against use of an identical or similar mark for any type of goods or services without the necessity of proving a likelihood of confusion. The Complainant states that it is irrelevant in this regard that the area of interest of the Complainant is wholesale services and the purported plan for the web portal is an adult site. Further, the Complainant argues that it is well accepted that there is generally little likelihood that a domain name which is identical to a well known mark does not in fact refer to that mark but rather refers to some other concept, that it is unlikely to be a coincidence and that the explanation is likely to have been contrived to justify the registration of the domain name.
The Complainant cites Deutsche Post AG v. MailMij LLC,WIPO Case No. D2003-0128, (April 7, 2003) and submits that in that case it was held that “the Panel does not accept that the service to be provided by any of the registrants of the Domain Name could sensibly be regarded as bona fide. The Complainant's name is a famous name. The Panel believes that when [the Respondent] selected the Domain Name he was very well aware of the fame of the Complainant's Trade Mark and intended to benefit from the ‘coincidence' that his chosen name DeutschEpost is in domain name-speak the same as the Complainant's Trade Mark DEUTSCHE POST”.
The Complainant submits that the domain name was registered primarily for the purpose of selling the disputed domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs. Citing the decision in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 (March 31, 2003, the Complainant submits that where a respondent is domiciled in a country where the complainant owns marks and carries on business (in this case, Ireland), this has been held to be particularly relevant.
In the Complainant's submissions, the intentions of the Respondent in registering this disputed domain name were not bona fide and any subsequent use cannot be bona fide. The Respondent obviously intended in registering this disputed domain name to attract the attention of the Complainant and to elicit a lucrative offer to purchase the disputed domain name for fear it would be put to damaging use. The Complainant submits that there is no conceivable non-infringing use to which the Respondent could put the disputed domain name, given its field of interest and lack of any connection with the Complainant. It is clear that by registering the disputed domain name, the Respondent is preventing the Complainant from reflecting its mark in the corresponding domain name. It is irrelevant for this purpose that the Complainant has or can register other domain names incorporating its marks, citing Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island, WIPO Case No. D2004-0711 (November 15, 2004).
The Complainant submits that the Respondent seeks to disrupt the business of the Complainant, in attracting visitors looking for information on the Complainant's mark and creating difficulties for customers of the Complainant who may stumble upon its web site when trying to find the Complainant's web site, citing Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478 (July 30, 2002). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has furnished evidence of its rights in the trademark and service mark MUSGRAVE MARKETPLACE through its ownership of the above-referenced Community Trade Mark registration and its use of the mark in commerce in Ireland since 2007.
The disputed domain name is identical to the Complainant's trademark and in making this finding this Panel accepts the Complainant's submissions that the gTLD “.com” extension may be ignored when making the comparison.
The Complainant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The domain name is identical to the Respondents registered trademark. The Complainant clearly objects to the registration and use of the disputed domain name by the Respondent and points to the fact that the Respondent has no rights in the MUSGRAVE MARKETPLACE mark and has no connection with the family name “Musgrave”.
In the circumstances the burden of proof shifts to the Respondent and, as the Respondent has not filed any Response or made any submission, the Complainant is entitled to succeed in the second element of the test in paragraph 4(a) of the Policy also.
In making this finding, this Panel has considered the print-out of the web-page furnished as an annex to the Complaint and the WhoIs information and there is no indication in these documents that there is any connection whatsoever between the Respondent and the words “Musgrave” or “Marketplace” either separately or in combination. C. Registered and Used in Bad Faith
On the evidence, the Respondent has chosen to register and use a domain name that is identical to the Complainant's trademark. While the word “musgrave” is a family name and the word “marketplace” is a generic or descriptive word, when taken in combination the words take on a certain distinctive character and reference to the Complainant's business.
Taking into account that the Respondent has not given any explanation for its choice of this disputed domain name and also taking into account the Complainant's rights and reputation in Ireland, the nature of the Complainant's business, the fact that the Respondent has given an address in Ireland and the content posted on the Respondent's web site, this Panel is satisfied that on the balance of probabilities the Respondent's choice of, registration of and use of the disputed domain name has been with the intention of attracting and misdirecting to its web site, Internet users who may be searching for a web site belonging to the Complainant. On the balance of probabilities the Respondent has posted adult and suggestive content on the web site to which the disputed domain name resolves with the intention of causing an embarrassment to the Complainant.
While the Respondent has not actually offered to sell the disputed domain name to the Complainant, this Panel is satisfied that, taken together, the circumstances of this case indicate that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the MUSGRAVE MARKETPLACE trademark and service mark for valuable consideration in excess of its out of pocket costs directly related to the disputed domain name.
This Panel finds that the disputed domain name has been registered and is being used in bad faith in the manner contemplated by paragraph 4(b)(i) of the Policy.
The Complainant has therefore also satisfied the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in its Complaint. 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 disputed domain name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: November 26, 2009
1 The Complaint states that the dispute relates to the registration of the domain name but thereafter the Complaint refers to the domain name . Because the basis and sense of the submissions and the annexes to the Complaint all relate to the former, it is clear that this Complaint relates to the domain name and that the omission of the letter “e” is a typographical error.
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