The Complainants are Bulmers Limited and Wm. Magner Limited of Clonmel, Ireland, represented by F.R. Kelly & Co., Ireland.
The Respondent is Seasonticket of Dublin, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 12, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On August 12, 2010, Tucows Inc. 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 August 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on September 30, 2010. 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 Second Complainant has been using the mark MAGNERS for cider in the United Kingdom of Great Britain and Northern Ireland since at least 1999, where it was launched and where it quickly established a substantial 6% market share of the “entire long alcohol drink” market, followed by launches throughout Europe and in the United States of America. The mark is the export version of the Irish brand BULMERS.
The Complainants’ promotional activities include sponsorship of a number of sporting events in Great Britain including the “Magners League”, a rugby championship which includes teams from Great Britain and Ireland.
The First Complainant owns registered trademarks in many countries consisting of or comprising the word MAGNERS, including Community Trade Mark No. 1411594 dated December 6, 1999, for the word MAGNERS in class 33.
The disputed domain name was registered on February 23, 2010.
As of August 10, 2010, the disputed domain name was parked at a registrar holding page. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
In addition to registered rights, MAGNERS is also an unregistered trade mark which is used in the course of trade in the United Kingdom in particular for cider by the Second Complainant. This unregistered trade mark is protected in the United Kingdom under the tort of passing off.
Through extensive sales, advertising and marketing, the Complainants have acquired a very substantial reputation in their mark.
The use of the disputed domain name is an “instrument of fraud” for the purposes of the law of passing off in the United Kingdom.
The disputed domain name is confusingly similar to the Complainants' trade mark MAGNERS and the sponsorship title ”Magners League”. Rights or Legitimate Interests
There has been no evidence prior to notice of this dispute of any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. It is sufficient that the Complainants make a prima facie case in order to shift the burden of proof to the Respondent.
The Respondent is “Seasonticket”. No elements appear to exist to link this name with the mark MAGNERS. Nor is this entity in any way connected or affiliated to the Complainants or authorised to carry out activities, either commercial or noncommercial, on behalf of the Complainants. There is no website corresponding to the disputed domain name.
There is no commercial advantage in setting up such website other than to sell to the Complainants or a competitor. To create rights or legitimate interests in a domain name, any bona fide offering of goods or services must have been made prior to notice of the dispute. This occurred on July 6, 2010.
The Complainants are entitled to take action for trade mark infringement as they have a reputation in the European Union. Registered and Used in Bad Faith
The disputed domain name was registered primarily for the purpose of sale to the Complainants or to a competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The Respondent registered the disputed domain name obviously intending to attract the attention of the Complainants and to elicit a lucrative offer to purchase it for fear that it would be put to damaging use. There is no conceivable non-infringing use to which the Respondent could put the domain name, given its lack of any connection with the Complainants. The domain name is merely the addition of the non-distinctive world “fantasy” to the Complainants’ sponsorship title “Magner’s League”.
By registering this domain name, the Respondent is preventing the Complainants from reflecting their mark in the corresponding domain name.
The Respondent seeks to disrupt the business of the Complainants, in attracting visitors looking for information on the Complainants’ mark and creating difficulties for customers of the Complainants who
may stumble upon its website when trying to find the Complainants’ website. The Respondent may also be seeking to benefit from click fees when his website is mistakenly opened by a person looking for the Complainants’ website. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have established rights in the mark MAGNERS by virtue of their registered trade marks as well as their extensive trading activities under that name.
The disputed domain name is confusingly similar to the Complainants’ mark. It differs only by adding the words “fantasy league”. The addition of this generic term is insufficient to distinguish the domain name and trade mark. The Complainants’ distinctive trade mark remains the dominant part of the domain name and indeed the additional words enhance the connection with the Complainants, given their involvement in sponsorship of sporting events.
The Panel concludes that the disputed domain name is confusingly similar to the Complainants’ trade mark.
The Complainants have therefore established the first element of the Policy. B. Rights or Legitimate Interests
The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070.
The Complainants have not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any bona fide use of the disputed domain name.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainants have established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes, also in the view of the Panel’s findings below, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainants have therefore established the second element of the Policy. C. Registered and Used in Bad Faith
On the face of it, none of the factors in paragraph 4(b) of the Policy apply. There is no evidence of registration for the purpose of sale to the Complainants per paragraph 4(b)(i)). There is no evidence of a pattern of conduct, as required by paragraph 4(b)(ii) of the Policy. Paragraph 4(b)(iii) is inapplicable as there is no evidence that the Respondent is a competitor of the Complainants. There is no evidence of use of the disputed domain name and so paragraph 4(b)(iv) of the Policy does not apply.
However, in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel noted that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith" and concluded that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The panel stated that "it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith."
It went on to say:
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith."
See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which states the following consensus view on this issue:
“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
The Panel notes the following:
1. The Complainants’ trade mark MAGNERS is distinctive.
2. The Complainants sponsor sporting events including the “Magners League”.
3. The Respondent is located in the Republic of Ireland – where the Complainants are based.
4. In the circumstances, the Panel considers it inconceivable that the Respondent registered the disputed domain name other than with the Complainants in mind.
5. It is impossible to think of any plausible, genuine use of the disputed domain name by the Respondent.
6. The Respondent has not replied to the Complainants’ pre-action correspondence nor has it filed a response denying the Complainants’ allegations in the Complaint.
The Panel considers that these factors, taken together, are indicative of both bad faith registration and use of the disputed domain name. The Complainants have therefore established the third element 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 to the First Complainant Bulmers Limited, as requested in the Complaint.
Adam Taylor
Sole Panelist
Dated: October 14, 2010
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