The Complainants are Bulmers Limited are Wm. Magner Limited of Clonmel, Ireland (unless indicated otherwise, both referenced in the singular as “the Complainant”), represented by FRKelly, Ireland.
The Respondent is (FAST-12785240) 1,500 GB Space and 15,000 Monthly Bandwidth, Bluehost.Corn INC /Jason LaValla of Provo, Utah and New York, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2010, FastDomain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 17, 2010.
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 November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent filed an email communication with the Center on December 6, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on December 15, 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 first Complainant (Bulmers Limited) is the registered proprietor of the marks which are the subject of this complaint. The second Complainant (Wm. Magner Limited) is a trading company which uses those marks with the consent of the first Complainant. The Complainants are related companies, being part of the group of companies headed by C&C Group Plc, an Irish based company which traces its origins back over 150 years. C&C Group Plc is one of the largest manufacturers, marketers and distributors of branded cider and beer beverages in Ireland and which is listed on the Irish and London Stock Exchanges since May 2004.
The first Complainant (Bulmers Limited) has registered rights in many countries in respect of marks consisting of or comprising the word “magners”. In addition, Bulmers Limited has registered numerous domains consisting of or containing the mark MAGNERS, which pre-date the date of registration of the disputed domain name. All of these registrations are used and/or are intended to be used in connection with cider. The Complainant also claims common law rights in its marks.
The Complainant has been using the mark MAGNERS in the UK since at least 1999, when it was first launched and where it very quickly established a substantial 6% market share of the entire long alcohol drink market, followed by launches elsewhere in the UK, throughout Europe and in the United States. As noted in extracts of a Wikipedia page relating to its products, the term MAGNER was derived from the name of William Magners, who started commercial cider production in Clonmel, County Tipperary, Ireland.
As part of its promotional activities, the Complainant sponsors live music performances in venues throughout the world including the United States. To promote these performances, the Complainant registered and uses the domain name . The website provided downloads of music from the live performances.
The disputed domain name was registered on July 5, 2010.
As evidenced in the Complaint, on November 3, 2010, the disputed domain name reverted to a sparsely featured webpage with the heading “Magner” and, appearing immediately below and to the right of that term, the word “sessions” in smaller lettering. That heading was followed by a list (a song list, according to the Respondent), numbered from 2-13, and then the term “Download”. At the end of that webpage is the statement “Our friends contributed to this album, but they do their own thing too (and they do it well). Check out William Thomas and his band The Maples, and Magdalene Rolka’s solo work.” Other than the heading, there is no reference to the Complainant or its products. At the date of this decision, that website includes additional text stating among other things “Wagner and Marty are two bands from Simsbury, CT. Back in high school, they wrote a lot of songs apart and played a lot of shows together. In 2009 they all reunited. Each brought their own songs, but they’re releasing this album as one band: “Magner.” The website indicates that one of the members of the band is the Respondent, Jason LaValla. The website also includes samples of music.
As also evidenced in the Complaint, on August 9, 2010, the Complainant’s representative sent an email to the Respondent putting the Respondent on notice of the Complainant’s trademarks and seeking the voluntary transfer of the disputed domain name. There is no evidence in the case file that the Respondent replied to that correspondence.
The Complainant has previously been a complainant in a series of disputes under the Policy. These include, for example, Bulmers Limited, Wm. Magner Limited v. Applepie Solutions Limited,WIPO Case No. D2005-1274; Bulmers Limited, Wm. Magner Limited v. Shawn Chiu Wai,WIPO Case No. D2009-1368; Bulmers Limited, Wm. Magner Limited v. Piri Jaroubek N.A.,WIPO Case No. D2009-1369; Bulmers Limited and Wm. Magner Limited v. Ho Nim, WIPO Case No. D2010-0330; Bulmers Limited v. Geoff Gillan,WIPO Case No. D2010-0716; Bulmers Limited, Wm. Magner Limited v. Seasonticket,WIPO Case No. D2010-1361; Bulmers Limited and Wm. Magner Limited v. Brian Mahony,WIPO Case No. DTV2009-0009. In each case, the panels found that the Complainant had sufficiently established rights in its registered mark MAGNERS. InWIPO Case No. D2009-1368 andWIPO Case No. D2009-1369 the panel also found that the Complainant had established unregistered rights in its mark and that, as in this case, it is proper for there to be two Complainants given the licensing relationship between them for the trademark. 5. Parties’ Contentions A. Complainant
The following is extracted from the Complaint.
The domain name is merely a misspelling of the Complainant’s domain name and posted website at . The use of the near identical mark MAGNERSESSIONS.COM is a misrepresentation that any goods or services upon which it is used emanate from or are associated with the Complainant. Actions based upon direct misrepresentation are comparatively rare. The Respondent has copied or imitated the trading name and the trademark by which the Complainant’s business or goods are known.
The domain name is nearly identical to the trademark MAGNERS and confusingly similar to the marks of the Complainant including the domain name . If the gTLD is ignored, the disputed domain name is nearly identical to the Complainant’s mark and if the gTLD is not ignored, they are confusingly similar.
As regards the Complainant’s marks containing logos, the most dominant and distinctive element of the marks is the word MAGNERS. The logo element will not be used when incorporated into a domain name. Therefore the MAGNERS logo marks are identical to the disputed domain name or at least confusingly similar.
There has been no evidence prior to notice of this dispute of any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name is onerous, since proving a negative circumstance is always more difficult than establishing a positive one. It is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of prove on the Respondent. This is satisfied in the present case as follows.
The registrant is named Jason LaValla. No elements appear to exist that can link Jason LaValla to the mark MAGNERS nor the surname “Magner”, nor is this individual in any way connected or affiliated to the Complainant or authorized to carry out activities, either commercial or non commercial, on behalf of the Complainant.
The disputed domain name is currently pointing to a music website which, like the Complainant’s website , provides downloads of songs. There is no commercial advantage in setting up such a website other than to sell to the Complainant 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. It has been held that ‘dispute’ is meant in the broadest sense of the word. The Complainant wrote to the Registrant requesting a transfer of the domain on August 9, 2010. By the action of approaching the Registrant informing it of its rights in the mark MAGNERS and requesting transfer of the disputed domain name, the Complainant commenced this dispute.
The Complainant submits that the domain name was registered primarily for the purpose of selling the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs.
On July 5, 2010 the Respondent registered the disputed domain name obviously intending to attract the attention of the Complainant and to elicit a lucrative offer to purchase the domain for fear 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 Complainant. The domain name is merely the addition of the non distinctive word “sessions” to the Complainant’s mark MAGNERS and differs from the Complainant’s domain name by omission of the word IRISH.
It is clear that by registering this 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.
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 website when trying to find the Complainant’s website. The Respondent may also be seeking to benefit from click fees when his website is mistakenly opened by a person looking for the Complainant’s website. B. Respondent
The following is extracted from the Response.
“MagnerS is a website for two bands named “Wagner” and “Marty.” The bands released a number of songs for free, together as one band. Half the songs were Wagner's and half the songs were Marty's. The names were elided to "Magner" because music generally is organized by band name, and because the songs were produced as a single album, meant to be heard as a unit. The album was called “Sessions”, simply because of our fondness for the sessions during which we recorded it.
MagnerS is a noncommercial website. It exists only to allow our friends to download for free the Magner Sessions album. No one has ever paid or been asked to pay for the album. The website is not an advertisement for future sales. Moreover, there is no advertisement on the site, through which anyone could make any money. (Despite the Complainant’s unsubstantiated assertions to the contrary.) Moreover,
respondents have no intent in “cybersquatting,” trying to extort the Complainant in bad faith, good faith, or otherwise. (Despite the Complainant’s unsubstantiated assertions to the contrary.) To allow the Complainant to take for free a domain name rightfully registered and paid for by the Respondent would unjustly enrich them. This “something for nothing” transfer seems especially unfair in light of (1) the Complainant’s un-researched allegations, and (2) the resources a large corporate entity, such as the Complainant, should be able to devote to adequately screening frivolous claims.
In summary, there is no trademark infringement because the Respondent has not traded on any mark, the Respondent does not plan to trade on any mark, and because the Respondent has not registered the domain in bad faith. The Respondents are musicians who devoted a substantial amount of time to recording an album for fun. The website exists merely as a way for the Respondent to share music for free with their friends and family.” 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
As a procedural matter, the Panel accepts that the Complaint may proceed in the name of both of the Complainants, for the same reasons given by the Panel in Bulmers Limited, Wm. Magner Limited v. Shawn Chiu Wai,WIPO Case No. D2009-1368; Bulmers Limited, Wm. Magner Limited v. Piri Jaroubek N.A,WIPO Case No. D2009-1369.
The Panel also notes that it has undertaken limited factual research in connection with this case, in addition to the material presented in the case file. In particular, the Panel visited the Respondent’s website. Such limited research is consistent with the consensus view of panelists, set out in paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. A. Identical or Confusingly Similar
There is no dispute that the Complainant relevantly has rights in its MAGNERS mark. The Panel considers that the disputed domain name is confusingly similar to that mark. In this respect, this Panel agrees with the view of the Panel in America Online, Inc. v. GSD Internet,WIPO Case No. D2001-0629 that “confusingly similar” means a similarity likely to lead to confusion as to trade origin.”
The disputed domain name wholly incorporates the Complainant’s MAGNERS mark and incorporates the descriptive word “sessions”. As noted by the panel in Bulmers Limited v. Geoff Gillan,WIPO Case No. D2010-0716 “It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words. (cf. Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896.”
Moreover, in this case, the descriptive word “sessions” is one which the Complainant has used in association with its mark, through its own domain name . The disputed domain name may therefore create confusion because it includes both the Complainant’s mark and a term that has been used in connection with the marketing of the Complainant’s products. In these circumstances, the Panel’s view is that an ordinary Internet user, viewing the disputed domain name against the Complainant’s mark, would be likely to be confused as to the trade origin of that domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the MAGNERS mark in which the Complainant has rights. B. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, the burden is on the Complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that a complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.) The Complainant has made a prima facie case against the Respondent in this respect.
Paragraph 4(c) of the Policy illustrates several ways in which the Respondent may demonstrate rights or legitimate interests: “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 Complainant says there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services; no evidence of any link between the Respondent (Jason LaValla) to the mark MAGNERS or the surname “Magner”; and the Complainant has given the Respondent no permission to use its mark. The Complainant says that there is no commercial advantage in the Respondent setting up his website other than to sell to the Complainant or a competitor.
The Respondent’s response to this is, in essence, that he was not seeking a commercial advantage in registering the disputed domain name. The Respondent says that he registered the disputed domain name to allow the downloading of his band’s (Magners’) music.
On balance, the Panel finds that there is sufficient evidence to plausibly support the Respondent’s case. It follows that, in the Panel’s view, the Complainant has not met its burden of showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel makes this finding for the following reasons.
The Complainant’s case is largely formulated on the basis that the Respondent was seeking to exploit the value of the Complainant’s MAGNERS mark when he registered and used the disputed domain name. The Complainant says that the Respondent has copied or imitated its trade mark primarily to elicit an offer from the Complainant to purchase it. The Complainant also says that the Respondent may have been seeking “click through” revenue. There is, however, little evidence in the case file to support these allegations. There is no evidence that the Respondent sought to sell the disputed domain name to the Complainant. There is no evidence to suggest that the Respondent was seeking to obtain a commercial advantage from any confusion with the Complainant’s mark, either from the nature of the Respondent’s website or otherwise. There is no evidence that the Respondent was seeking ‘click through’ revenue on its website, and the Complainant does not otherwise detail the basis for this allegation.
In the absence of direct evidence, the Complainant invites the Panel to infer that the Respondent lacks rights or legitimate interests. In this respect, the Complainant says that there is no conceivable non-infringing use of the disputed domain name given the Respondent’s lack of connection with the Complainant, and that the Respondent (Jason LaValla) has no connection with the term “magners”.
The difficulty with this argument is that the Respondent has put forward a plausible reason for his registration and use of the disputed domain name. The evidence of the Respondent’s website also supports his story. That website provides music for downloading, which is apparently music of an amateur band with which the Respondent claims a relationship. The website otherwise does not suggest to the Panel that there is an ulterior motive behind it. It is not, in this Panel’s experience, typical of a website established to exploit the value of a trademark.
As noted above, under paragraph 4(c)(iii) of the Policy, a respondent may demonstrate a right or legitimate interest where there is evidence of a legitimate noncommercial or fair use of a domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Particularly, it appears to the Panel that the disputed domain name may have been used for a legitimate noncommercial use of this kind. WIPO’s Index of WIPO UDRP Panel Decisions cites decisions relating to questions around three types of legitimate non-commercial or fair use: being ‘criticism & commentary’, ‘parody sites’, and ‘fan sites’. While the Respondent’s use in this case is not one of those kinds, the three categories referenced in the WIPO Index are merely examples (albeit common examples) of questions that have arisen in relation to claims of legitimate noncommercial or fair uses. The terms of paragraph 4(c)(iii) are broadly framed. As such, what is a legitimate noncommercial use must be determined by the circumstances of each case.
In this case, there is no evidence that the Respondent’s website was intended for commercial gain. Neither is there any evidence that the Respondent sought to misleadingly divert Internet users looking for the Complainant. The only thing that might be pointed to in this respect is the mere registration of the disputed domain name which, as the Panel has found, is confusingly similar (on a side by side comparison) to the Complainant’s mark. But this cannot be sufficient evidence, on its own, for a finding that the Respondent lacks a legitimate interest. To find otherwise would conflate the first element of the Policy (paragraph 4(a)(i)) with the second (paragraph 4(a)(ii). More substantively, such a finding would not address the underlying issue of whether the registration is legitimate. There is also no evidence that the Respondent was motivated to tarnish the Complainant’s mark. Tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value. There is no evidence that the Respondent’s website carried associations of this kind.
The lack of evidence that the Respondent’s website was intended for commercial gain, to misleadingly divert Internet users, or to tarnish the Complainant’s mark, is not however sufficient for a finding under paragraph 4(c)(iii). There remains the more general question of whether the Respondent is otherwise making a legitimate use. What is legitimate depends on the facts of each case. In this case, the Panel considers that the Respondent’s has sufficiently demonstrated that he is making a legitimate use for the following reasons:
Firstly, although evidence primarily consists of what can be gleaned from the Respondent’s website, it appears that the Respondent is making a genuine use of the disputed domain name in connection with the promotion of a band with which he is associated. The Respondent’s website appears to relate to only one band which the Respondent claims is called “Magner”. The word “sessions” is commonly associated with the recording or rehearsal of live music. The Respondent’s website relates only to that band, and music is legitimately available via the website. Usually, this Panel would be prepared to accept that a website is what it purports to be. To do otherwise would require a finding that the Respondent has engaged in a fraud. In summary proceedings of this kind, with limited opportunity for investigation and examination, is reluctant to make such a finding without some direct evidence to support it.
The Panel notes that there is some evidence that the content of the Respondent’s website changed from that on the site in early November (as evidenced in the Complaint). In particular, when the Panel visited the Respondent’s website on December 28, 2010, the website contained additional explanation as to the nature of the band “Magner” than appeared in the earlier screen shots provided by the Complainant. Such a change may be indicative that the Respondent sought, after notice of the dispute, to provide more explanation on its website in response to the allegations against it. Even if so, such a post-facto explanation does not, in the Panel’s view, conflict with the evidence of the Respondent’s website provided by the Complainant.
Secondly, the Respondent has provided a response which is, on its face, plausible. It is a case that is not directly contradicted by other evidence in the case file. Both on the evidence provided in the Complaint and the Response, the Respondent’s website relates to the offer of music.
Thirdly, the Respondent’s website does not appear to exploit the value of the Complainant’s mark or otherwise relate to the value of that mark. The Respondent’s website makes no reference to the Complainant or its products, or products of its competitors.
While the Panel is not prepared to conclude that the Respondent has no rights or legitimate interests for these reasons, the Panel notes that the evidence in the case file is not unequivocally in the Respondent’s favor. In particular, the Respondent provides little direct evidence. Instead, the direct evidence relied on by the Panel, as to the Respondent’s use of the disputed domain name, comes from screenshots of the Respondent’s website attached to the Complaint, as well as the Panel’s own visit to the Respondent’s website.
There is also no clear evidence of when the Respondent’s website became operational. The Complainant provides evidence that it put the Respondent on notice of this dispute in August 2010. The Complainant provides evidence of the content of the Respondent’s website in early November 2010. There is no direct evidence of the content of the Respondent’s website before he was notified of this dispute. Had that content been substantially different or absent, prior to the Respondent being notified of the dispute, than content appearing on the site after the Respondent was notified of the dispute, there may have been an inference that the content was developed primarily in response to these proceedings, rather than for a legitimate purpose. However, there was no such evidence. Therefore, in the absence of evidence to the contrary, the Panel considers that the only reasonable inference is that the Respondent’s website was generally the same both before and after notice of this dispute.
There is also an apparent coincidence between the Complainant’s registration of the domain name (which the WhoIs record indicates was registered in 2008) and the disputed domain name . However, for the reasons set out above, the Panel is not prepared to infer a lack of legitimacy in the Respondent’s registration merely because of this coincidence. Further, and importantly, even if the Respondent was aware of the Complainant’s mark and registration of that other domain name, such awareness is not by itself a reason to infer a lack of rights or legitimate interests, for similar reasons to those set out below in relation to bad faith.
For these reasons, the ambiguities in the evidence do not, in the Panel’s view, sufficiently outweigh the plausibility of the explanation put forward by the Respondent. As such, the Panel finds that the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Because of the Panel’s finding above, it is not necessary for it to make a finding on this ground. However, for completeness, the Panel notes that it would also not have found that the disputed domain name was registered and bad faith for reasons similar to those set out above in relation to the Respondent’s rights or legitimate interests.
The Panel has noted above the coincidence between the Complainant’s registration of and the disputed domain name . It might also be suggested that, in exploring a domain name for registration, the Respondent would inevitably have come across the Complainant’s registration of domain names incorporating its mark. The Complainant has suggested that, because of the fame of its mark, the Complainant cannot have been unaware of it.
But it is important to point out that mere awareness of the Complainant’s MAGNERS mark would not be sufficient for a finding of bad faith (nor for a finding that the Respondent lacked a right or legitimate interest). As noted by the Panel, e.g., in Reliant Energy, Inc. v. Robert Wiggins,WIPO Case No. D2001-0769, bad faith is not established merely because the Respondent knew of the Complainant’s interest in a mark: “Trademark rights do not create an absolute monopoly and therefore more than knowledge must be shown to prove bad faith.” Even if the Respondent’s awareness of the Complainant’s mark could be inferred in this case (on which the case file is equivocal), a finding of bad faith would require some evidence that the Respondent was seeking to unfairly exploit the Complainant’s mark. The Panel considers that the case file contains insufficient evidence for such a finding. 7. Decision
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Sole Panelist
Dated: January 17, 2011
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