WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISION Bulmers Limited, Wm. Magner Limited v. Shawn Chiu Wai Case No. D2009-1368 1. The Parties
The Complainants are Bulmers Limited and Wm. Magner Limited, of Dublin, Ireland, represented by FR Kelly, Ireland.
The Respondent is Shawn Chiu Wai, Cayman Islands, Overseas Territory of the, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2009. On October 15, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On October 16, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2009.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 30, 2009. 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, Bulmers Limited (“Bulmers”) owns registered trademarks in Ireland and in other countries. These are trademarks for the word MAGNERS or for expressions including the word “MAGNERS”.
It has registered numerous domain names which include the word “MAGNER”. All of these registrations, of both trademarks and domain names, precede the date of the registration of the disputed domain name.
The Complainant, Wm. Magner Limited (“WML”) is a trading company which uses the trademarks with the consent of Bulmers. Both companies are related, being part of the C & C Group Plc, an Irish company which is a manufacturer, distributor and marketer of branded beverages and savoury snacks in Ireland and which is listed on the Irish and London Stock Exchanges.
Both Complainants join in the same Complaint in the event that the substantial goodwill and reputation which exists in the marks is deemed to vest in one or more of the companies. If that is not accepted, then Bulmers is the sole Complainant.
The word “MAGNERS” is also used as an unregistered mark in the course of trade in the United Kingdom for cider produced by WML in the United Kingdom since at least 1999. There it has established a 6% market share of the long-alcohol drink market, followed by launches in the United Kingdom, Europe and the United States of America. A substantial reputation has been established in the unregistered mark as has been provided by the history supplied by the Complainants. Outside of Ireland, cider is sold under the title “Magners Original Irish Cider”. The word “MAGNERS” is prominent on the label. Perry is also marketed under the MAGNERS brand.
The Respondent has had no connection with the Complainants and has not been authorised by either of them to register the disputed domain name which was registered as recently as July 31, 2009.
On August 25, 2009, the Complainant's lawyers wrote a letter to the registrant of the disputed domain name requesting a transfer. There was no reply to that letter. 5. Parties' Contentions A. Complainants
The Complainants have goodwill and reputation in the mark as a result of the registered trademarks and the unregistered common law mark. The only possible reason why anyone not connected with the Complainants would use the disputed domain name is for passing himself off as having some connection with the Complainants or their products.
The disputed domain name is confusingly similar to various registered and unregistered marks incorporating the word “MAGNERS” in which the Complainants have rights for those marks. The most distinctive element in these marks is the word “MAGNERS”.
The Respondent has no rights or legitimate interest in the disputed domain name. None of the situations set out at paragraph 4(c) of the Policy apply to him.
The disputed domain name was registered and is being used in bad faith. It was registered primarily for the purpose of selling the disputed domain name to the Complainants or a competitor for valuable consideration in excess of the Respondent's out-of-pocket costs.
An Internet search shows that the Respondent owns 1047 domain names.
On June 26, 2009, the Complainant registered the domain name . Registration of the disputed domain name took place on July 31, 2009. There is no conceivable use to which the Respondent could put the disputed domain name given his lack of any connection with the Complainants.
The Respondent is preventing the Complainants from reflecting their mark in the corresponding domain name and seeks to disrupt the business of the Complainants by attracting visitors looking for information of the Complainants' marks and creating difficulties with customers of the Complainants who may stumble upon his website. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the view of the Panel, the Complainants have established that it has rights in both the registered trademarks for the word MAGNERS and in an unregistered trademark in the United Kingdom for the word MAGNERS. The numerous registered trademarks alone would justify a finding under the first limb of Paragraph 4(a) of the Policy.
It is quite proper in these circumstances for there to be two Complainants, given the licensing relationship between them for the trademark.
The Complainants have a strong reputation for marketing cider under the name “MAGNERS”. The addition in the disputed domain name of the words “taste-tester” is merely a generic “add-on” and reinforces the view that the mark is concerned with some food or beverage.
In the Panel's view, the disputed domain name is confusingly similar to the marks in which the Complainants have rights. B. Rights or Legitimate Interests
The Complainants gave no license to the Respondent who has not filed a Response. He, therefore, has not set up any of the possible defences which might have been available to him under Paragraph 4(c) of the Policy. Based on the above facts and allegations, Complainant has established a prima facie case under paragraph 4(a)(ii). Hence, the Complainant has satisfied Para. 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
On June 26, 2009, the Complainant registered the domain name without any hyphen. The disputed domain name (identical but with a hyphen) was registered on July 31, 2009.
The inference is that this latter registration was to attract the attention of the Complainant and to elicit a lucrative offer to purchase for fear that the disputed domain name would be put to damaging use. There is no conceivable non-infringing use to which the Respondent could put the disputed domain name given his lack of connection with the Complainants.
As this Panel sees it, and on the available record, this is one of those cases where there can be no possible reason for the Respondent to have utilized the Complainant's marks other than the ulterior one of trying to sell the disputed domain name at a profit.
By registering the disputed domain name, the Respondent is preventing the Complainants from reflecting their mark in the corresponding domain name. The effect of the registration is to affect the businesses of the Complainants by attracting visitors looking for information about the Complainants or their marks and creating difficulties for persons searching the internet.
The evidence of bad faith registration and use is overwhelming and the Complainant has satisfied Paragraph 4(a)(iii) of the Policy. 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, be transferred.
In accordance with the request of the Complainants, the disputed domain name is to be transferred to the Complainant, Bulmers Limited.
Hon. Sir Ian Barker, QC
Sole Panelist
Dated: December 16, 2009
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