Diageo Ireland v. Domain Park Limited c/o Hostmaster Hostmaster
Claim Number: FA0904001259312
Complainant is Diageo Ireland (“Complainant”), represented by Glenn A. Gundersen, of Dechert LLP, Pennsylvania, USA. Respondent is Domain Park Limited c/o Hostmaster Hostmaster (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <harpbeer.com>, registered with Rebel.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2009.
On April 27, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <harpbeer.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@harpbeer.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harpbeer.com> domain name is confusingly similar to Complainant’s HARP mark.
2. Respondent does not have any rights or legitimate interests in the <harpbeer.com> domain name.
3. Respondent registered and used the <harpbeer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diageo Ireland, is the owner of the HARP mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 870,991 issued June 10, 1969) and other governmental trademark authorities worldwide. The HARP mark is used in conjunction with the advertising and sales of alcoholic beverages throughout the world.
Respondent registered the <harpbeer.com> domain name on November 20, 2006. Respondent is using the disputed domain name to resolve to a website containing advertisements and click-through links that further resolve to the third-party websites of Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant has established rights in the HARP mark sufficient to satisfy Policy ¶ 4(a)(i) based on multiple registrations with the USPTO and other governmental trademark authorities worldwide. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <harpbeer.com> domain name is confusingly similar to its HARP mark. The disputed domain name incorporates Complainant’s HARP mark in its entirety with the addition of the descriptive term “beer” and the generic top-level domain “.com.” The Panel finds that the addition of the word “beer” to Complainant’s HARP mark fails to sufficiently distinguish the disputed domain name, and may even heighten the degree of similarity because it describes Complainant’s products. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel further concludes that the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis because it fails to alleviate the confusing similarity between Complainant’s HARP mark and Respondent’s <harpbeer.com> domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes that Respondent’s <harpbeer.com> domain name is confusingly similar to Complainant’s HARP mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must establish a prima facie case to support these assertions, and the Panel finds Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Respondent failed to submit a response in these proceedings, thus the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will review the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence)
Respondent is not authorized to use Complainant’s HARP
mark. Moreover, the WHOIS information
lists Respondent as “Hostmaster Hostmaster.” The Panel therefore concludes that Respondent
is not commonly known by the <harpbeer.com> domain name. See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website that promotes Complainant’s competitors through the use of click-through advertisements, which divert Internet users to third-party websites. The Panel presumes that Respondent is profiting from such use, and therefore finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that features click-through advertising links which further resolve to websites of Complainant’s competitors. The Panel finds that this likely disrupts Complainant’s business and, therefore, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is intentionally attracting Internet users through the confusingly similar domain name, presumably for commercial gain through the receipt of click-through fees. The Panel finds that this is an attempt to mislead Internet users as to Complainant’s affiliation with the resolving websites, and that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant has satisfied Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harpbeer.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 15, 2009
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