WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bulmers Limited and Wm. Magner Limited v. Brian Mahony Case No. DTV2009-0009 1. The Parties
The Complainant is Bulmers Limited and Wm. Magner Limited of Dublin, Ireland, represented by FRKelly, Ireland.
The Respondent is Brian Mahony of Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2009. On November 12, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 12, 2009, 1&1 Internet AG 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 November 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2009.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 9, 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 of Great Britain and Northern Ireland 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. 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.
As a promotional activity, the Complainants have had a long association with Rugby Union through key sponsorship of the Magners League, a championship which includes teams from England, Ireland, Scotland and Wales.
The disputed domain name was registered on October 11, 2006. There are no sites corresponding to the disputed domain name.
The Complainant wrote to the registrant requesting a transfer of the disputed domain name on May 12, 2009. At that date, the disputed domain name was incorrectly pointing to a website “”. Investigations by the Complainant found that the domain name belonged to an Irish company, Gleeson Concrete, which had no connection with the disputed domain name.
An email from the Complainants' solicitors pointed out to the Respondent that the disputed domain name was incorrectly pointing to and asked for transfer to the Second Complainant.
The Respondent then pointed the disputed domain name to the website “”.
In an email dated May 20, 2009, the Respondent said
“I deny that I have registered this name in bad faith. In fact, upon hearing of the fact the domain [name] was pointing to another website, I immediately rectified the problem and pointed it towards . This was a technical error. Regards” 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 to pass himself off as having some connection with the Complainants or their products.
The disputed domain name is confusingly similar to various marks incorporating the word “MAGNERS” in which the Complainants have rights. The most prominent and distinctive element of the disputed domain name is the word “MAGNERS”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and 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 and 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.
The Respondent is preventing the Complainants from reflecting the MAGNERS mark in a corresponding domain name and seeks to disrupt the business of the Complainants in 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 Complainant's 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 registered trademarks and also that they has rights in an unregistered trademark in respect of the United Kingdom market. They have numerous trademarks, some of which are worldwide and which would justify their claim under the first limb of Paragraph 4(a) of the Policy for domain names which incorporate the word “MAGNERS”.
The expression MAGNERSLEAGUE clearly refers to a Rugby sponsorship developed by the Complainants which focuses on international matches. It has obtained the status of a common law trademark in its own right. It is quite appropriate in these circumstances for there to be the two Complainants, given the licensing arrangements between them.
It is clear that the Complainants have a strong reputation for making cider under the name “Magners”. Although the word “league” does not relate to the product sold by the Complainants, it clearly relates to a sporting tournament of considerable importance in the rugby world sponsored by the Complainants. As such, the name of the tournament “Magners League” would be well-known and it is difficult to see any reason why the Respondent had any right to appropriate this name.
The disputed domain name is confusingly similar to the numerous MAGNERS trademarks and is identical to the common law mark in MAGNERS LEAGUE. B. Rights or Legitimate Interests
The Respondent has not filed a Response and has not invoked paragraph 4(c) of the Policy. Hence, based on the allegations set out above which establish the Complainant's prima facie case, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is clear that the disputed domain name was registered and is being used in bad faith. Persons wishing to find out about the tournament sponsored by the Complainants would easily be diverted by the disputed domain name.
It is easy to imagine that an Internet visitor might wish to discover when rugby games sponsored by the Complainants are being shown on television. Hence the use of the suffix “.tv”. It would be particularly important in relation to a rugby tournament.
This is one of those cases where there can be no possible reason for the Respondent to have utilized the Complainant's marks for the purpose of registering a doman name other than the ulterior one of trying to sell the disputed domain name at a profit. As this Panel sees it, based on the record, there is no conceivable non-infringing use to which the Respondent could put the disputed domain name.
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 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 to the Complainant, Bulmers Limited.
Hon. Sir Ian Barker
Sole Panelist
Dated: December 21, 2009
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