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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bulmers Ltd v WM Magner Ltd [2008] DRS 5779 (1 August 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5779.html Cite as: [2008] DRS 5779 |
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Complainants: Bulmers Limited and Wm. Magner Limited
Country: IE
Respondent: Easy Domain Connect Ltd.
Country: NL
magnerscider.co.uk
The Complaint was entered into the Nominet system on 5 June 2008 and was validated on 9 June 2008. On 9 June 2008, Nominet wrote to the Respondent advising that the Complainants had invoked Nominet's Dispute Resolution Service to complain about their registration of magnerscider.co.uk and that they had 15 days to respond. No response was received within the 15 day time period, or at all. On 9 June 2008, Bulmers Limited was nominated as 'lead Complainant' for the purposes of paragraph 3(b) of Nominet's Dispute Resolution Service Procedure (the 'Procedure'). The fee to obtain an independent Expert's decision under Nominet's Dispute Resolution Service Policy (the 'Policy') was paid to Nominet on 14 July 2008 and Jon Lang was appointed as the independent Expert on 21 July 2008.
The Respondent has not responded to the Complaint within the time period set by paragraph 5 of the Procedure or at all, despite the Respondent having been notified of the Complaint. Paragraph 15.b. of the Procedure enables the Expert, absent exceptional circumstances, to proceed to give a Decision despite the default of a party. Paragraph 15.c. enables an Expert, again absent exceptional circumstances, to draw such inferences as are appropriate from a party's non-compliance.
Given the documentary material submitted by the Complainants and in the absence of any contrary (or indeed any) evidence from the Respondent, the Expert accepts as facts those represented as such by the Complainants. A summary is set out below.
Bulmers Limited, the lead Complainant, is the registered proprietor of marks consisting of or containing the word MAGNERS, and Wm. Magner Limited is a trading company which uses the marks with the consent of Bulmers Limited. 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 origin back over 150 years and is the largest producer and distributor of cider products in Ireland. It has been listed on the Irish and London Stock Exchanges since May 2004.
Bulmers Limited are the proprietors of the following U.K./Community trade marks:
CTM Registration No. 1411594 MAGNERS dated December 6, 1999
CTM Registration No. 2722718 MAGNERS BLACK dated May 31, 2002
U.K. Registration No. 2328460 dated April 4, 2003.
These registrations predate registration of the domain name, magnerscider.co.uk.
The mark MAGNERS is also an unregistered trade mark which is used in the course of trade (for cider) in the U.K. by Wm. Magner Limited. For ease of reference, both Complainants will hereafter be referred to in the singular, as the Complainant.
The Complainant is also the owner of numerous top level domains and country code top level domains consisting of or containing the word "MAGNERS" including: magners.ie, magnerscider.ie, magners.co.uk, magnerscider.com, magnersirishcider.com, magners.com, magners.eu, magnerscider.eu, magnersirishcider.eu, magners.de.
The Complainant has been using the mark MAGNERS in the U.K. since at least October 1999, when its drink was launched in Northern Ireland. It very quickly established a substantial 6% market share of the entire long alcohol drink (LAD) market and there followed launches elsewhere in the U.K., Europe and the U.S. Through extensive sales, advertising and marketing, the Complainant has acquired a very substantial reputation in its mark.
The Complainant
• The use of the domain name magnerscider.co.uk is a misrepresentation that any goods or services associated therewith emanate from or are associated with the complainant;
• The use of the domain name magnerscider.co.uk is causing or will probably cause damage to the goodwill and reputation of the trade mark MAGNERS;
• The Respondent has no legitimate connection with the mark MAGNERS and is not engaged in the production of cider;
• The domain name magnerscider.co.uk is identical and confusingly similar to the marks of the Complainant. The Respondent has simply added the descriptive word "cider" to the Complainant's mark MAGNERS;
• There is no evidence of any use or demonstratable preparations to use the domain name in connection with a bona fide offering of goods or services;
• There appears to be no (legitimate) link between the Respondent and the Complainant's mark MAGNERS.;
• The disputed domain resolves to a "domain parking" site and is used to display advertisements. Every time a consumer clicks on one of the advertisements, the Respondent gains financially;
• At the date of registration, the Respondent was aware of the Complainant's earlier rights in the trade mark MAGNERS and use of the mark in combination with a descriptor i.e. "Magners cider"
• The Respondent is clearly aware of the fame of MAGNERS cider and is intentionally diverting customers of the Complainant through its use of the domain name;
• The Respondent is receiving click fees for diverting internet users to other websites and profiting from such diversionary use, which constitutes bad faith;
• The Complainant has sent to the Respondent a number of cease-and-desist letters, at various addresses, but all have been returned as undeliverable. An incorrect address used by a registrant is evidence of bad faith as is the lack of an email address or telephone number;
• The domain name in the hands of the Respondent is abusive because it was (a), primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant or its competitor for a price greater than the Respondent's costs, as evidenced by the current use of the domain in "domain parking" (b), primarily registered to stop the Complainant registering it despite their rights in the name (c), was one of a series of registrations that the Respondent has made which, because of their number, type and pattern, proves that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest (see DRS No. 4325 concerning the domain name rbsjobs.co.uk) and (d), was registered with incorrect contact details.
In summary, the Complainant contends that the domain name magnerscider.co.uk should be transferred.
The Respondent
The Respondent did not respond.
In order to succeed in a complaint under the Policy, a Complainant is required to prove, on a balance of probabilities and regardless of any failure of the Respondent to respond to a complaint, that it has rights in respect of a name or mark which is identical or similar to the domain name in issue and that the domain name in the hands of the Respondent is an abusive registration. As noted earlier, a Respondent's failure to respond does allow the Expert to draw adverse inferences, absent exceptional circumstances.
Complainant's rights
Having reviewed the documentary material submitted with the Complaint, the Expert is satisfied that the Complainant has rights in the mark MAGNERS which, being incorporated in its entirety into the domain name in issue, is similar to the domain name for the purposes of the Policy. It is significant that of the two constituent words of the domain name, 'magners' and 'cider', 'magners' (the mark in which the Complainant has rights) precedes 'cider' and can therefore be regarded as the dominant part of the domain name. The suffix of the domain name has of course been ignored in analysing similarity.
Abusive Registration
Paragraph 1 of the Policy defines Abusive Registration as a domain name which was either 'registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complaint's Rights or which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complaint's Rights;'.
A non-exhaustive list of factors which may indicate that a domain name is an abusive registration is set out in paragraph 3 of the Policy.
Such factors include circumstances indicating that the Respondent has registered or otherwise acquired the domain name primarily:
a) for the purposes of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the domain name;
b) as a blocking registration against a name or mark in which the Complainant has rights; or
c) for the purpose of unfairly disrupting the business of the Complainant.
Other factors suggesting an abusive registration include where circumstances indicate that the Respondent is using or threatening to use the domain name in a way which has confused or is likely to confuse people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant; or where the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern; or where it is independently verified that the Respondent has given false contact details.
A non-exhaustive list of countervailing factors is set out in paragraph 4 of the Policy. This includes circumstances indicating that before being aware of the Complainant's cause for complaint, the Respondent has:
a) used or made demonstrable preparations to use the domain name or one that is similar in connection with a genuine offering of goods or services;
b) been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name;
c) made legitimate non-commercial or fair use of the domain name.
Other countervailing factors include circumstances where the domain name is generic or descriptive and the Respondent is making fair use of it.
Abusive registration often arises from the use of a name of a well known company or trade mark in a domain name, as is the case here. The Complainant has advanced a number of assertions in support of the allegation of abusive registration, not all of which would support the finding sought. However, it is the case that use of the word 'cider' (being the core of the Complainant's business) in association with and immediately following the Complainant's mark, MAGNERS does lead to the conclusion that the Respondent is using the domain name in a way which has confused or is likely to confuse people or businesses into believing that it is registered to, operated or authorised by, or otherwise connected with the Complainant. In fact though, the Respondent has no relationship with the Complainant, has no apparent rights or legitimate interest in the domain name which resolves to a site containing links to other sites which provide or advertise the goods or services of others, who are unconnected with the Complainant. In all the circumstances, such use of the domain name takes unfair advantage of the Complainant's rights.
Whilst there can be innocent reasons for a third party using a complainant's name or mark in a domain name, the Respondent has not come forward and advanced any in these proceedings. A review of the albeit non-exhaustive list of countervailing factors in paragraph 4 of the Policy, would not appear to cast doubt on a conclusion that there has, in this case, been an abusive registration. Indeed, in the context of this Complaint, it seems extremely unlikely that there could be any innocent explanation as to why the Respondent chose to include the Complainant's mark in the domain name. Accordingly the Expert finds, on a balance of probabilities, that the Respondent registered and/or has used the domain name in issue for an abusive purpose and therefore, that magnerscider.co.uk constitutes, in the hands of the Respondent, an abusive registration.
Having found that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration, the Expert determines that the domain name, magnerscider.co.uk, should be transferred to the lead Complainant, Bulmers Limited.
Signed …… Jon Lang …
Dated 1st August 2008
