marsbar.net

The Complainant in this administrative proceeding is Mars UK Limited, a private limited company, organised and existing under the laws of England having its registered office at 30 Dundee Road, Slough, Berkshire, SL1 4JX, United Kingdom represented by Clifford Chance Limited Liability Partnership, of 200 Aldersgate Street, London EC1A 4JJ, United Kingdom.

The Respondent is Ben Peters of 23 Brackenbury Road, London W6 0BE, United Kingdom.

The domain name in issue is <marsbar.net> ("the Domain Name").

The Registrar is Register.com, Inc., of 575, 8^th Avenue - 7^th Floor, New York, NY10018, USA ("Register").

The WIPO Arbitration and Mediation Center ("the Center") received on February 22, 2002, an electronic version of the Complaint and on February 27, 2002, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On March 6, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On March 1, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On the same day, Register transmitted via e-mail to the Center its Verification Response, confirming that the Respondent, and each of the Administrative, Technical and Billing Contacts is Ben Peters of the above address.

A Response was filed on March 25, 2002. In addition to his substantive Response, the Respondent drew attention to "certain discrepancies" in the Complaint. In three places the Complaint refers to a domain name <marschocolate.com> and in another place to <marsconfectionery.com>. The Complainant’s solicitor in an e-mail dated March 26, 2002, describes these as typing errors and that in each case the domain name should be <marsbar.net>, i.e. the Domain Name, and seeks leave to amend the Complaint accordingly. The Panelist accepts that these were typing errors, and furthermore considers that these are such obvious errors that no formal amendment of the Complaint is necessary. It is clear that the Complainant intended to refer throughout to the Domain Name.

On April 9, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by April 23, 2002.

(a) The Complainant has registered its trademark MARS ("the Trademark") in numerous countries worldwide (including the United States and the United Kingdom) in a number of classes including 29, 30 and 31 in respect of various food products including, in particular, confectionery.

(b) The Domain Name was registered with the Registrar in question on June 13, 2000.

The Complainant asserts, inter alia, as follows:

(i) The Mars group of companies is one of the world's leading manufacturers of confectionery products sold in over one hundred countries throughout five continents. Among Mars' best known chocolate confectionery brands is the world-famous MARS bar.

(ii) Annual sales and advertising and promotional expenditure for the Complainant’s MARS bar are enormous. Sales in Europe of the MARS bar (by net sales value) in 1999, alone were over US$360m; while advertising expenditure in Europe for the MARS bar in 1999, was over US$42m.

(iii) As a result of the Complainant's long, continuous, and exclusive use, the Trademark has acquired a secondary meaning that is associated by consumers and the public with its products, in particular its chocolate products. It is a well-known mark within the meaning of Article 6bis of the Paris Convention 1883.

(iv) The Complainant learnt of the registration of the Domain Name in June 2001. At that time the Domain Name did not resolve to an active website and was being offered for sale on the website <greatdomains.com>. On June 11, 2001, the Complainant's solicitors wrote to the Respondent objecting to the Respondent's registration of the Domain Name. In its letter of June 11, 2001, Clifford Chance requested the transfer to the Complainant of the Domain Name. On July 2, 2001, the Respondent telephoned Clifford Chance and stated that he would not transfer the Domain Name since the Domain Name had been linked to an active website about the planet Mars. A review of the Domain Name following that conversation revealed that the Domain Name was being used in relation to a web site operated by the Respondent entitled "The Mars Bar" "Welcome to the red planet on-line". The web site contains descriptions of alcoholic cocktails, links to other sites and the ‘Mars Shop’ from which T-shirts and mugs are offered for sale. The website appears to be of a very rudimentary nature. It would further appear that the site was created during the period between the Respondent’s receipt of Clifford Chance’s letter of June 11, 2001, and the Respondent's telephone call to Clifford Chance on July 2, 2001. The Respondent has not provided any evidence of preparations for this website prior to Clifford Chance's letter of June 11, 2001, despite the fact that by that time, the Domain Name had already been registered for almost a year. This is not surprising, however, given that, as indicated above, the Domain Name was being offered for sale by Respondent on <greatdomains.com>.

(v) On July 17, 2001, Clifford Chance wrote to the Respondent, indicating that the Complainant was willing to pay the Respondent his costs of registering Domain Name. The Respondent did not respond to this letter or to a follow-up letter sent to him on August 13, 2001.

(vi) The combination of the words ‘Mars’ and ‘Bar’ is clearly confusingly similar to the trademark ‘MARS’ registered in respect of chocolate and other confectionery.

(vii) The Complainant has not licensed or otherwise permitted the Respondent to use the Trademark nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating that mark. Further, there is no evidence that the Respondent has been commonly known by the Domain Name: in fact, for all practical purposes, it is inconceivable that the Respondent could have made any significant use of the name without it coming to the Complainant's attention. Given the extent of use and notoriety of the Complainant's MARS mark it is quite simply not credible for the Respondent to have used or to have prepared to use the Domain Name in connection with a bona fide offering of goods or services. It follows that the Respondent has not asserted and cannot assert legitimate non-commercial or fair use of the domain name in issue. Indeed, as indicated above, it is clear that the Respondent registered the domain name with the intention of offering it for sale. Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name.

(viii) Evidence of bad faith registration and use is established by the following circumstances. First, the Trademark is amongst the best known trademarks/brands worldwide. It is inconceivable that the Respondent would not be aware of this fact. Second, by virtue of the widespread use and reputation of the Trademark, members of the public in the UK and elsewhere will inevitably believe that the entity owning the Domain Name is the Complainant or is in some way associated with the Complainant. Third, any realistic use of the Domain Name can only constitute a misrepresentation of an association with the Complainant and its goodwill, and, consequently passing off and trademark infringement. It is just not possible to conceive of a plausible circumstance in which the Respondent could legitimately register or use the Domain Name in good faith.

(ix) Further the Respondent is offering for sale items which amount to an infringement of the Claimant’s registrations of the Trademark which cover, inter alia, T-shirts and mugs.

The material part of the Response is quite short, as follows:

(i) The site "marsbar.net" was designed primarily as an information resource, reflecting the personal interests of the Respondent.

(ii) At the time of registration of the Domain Name, the idea for the web site, ‘Mars Bar: The Red Planet On-line’, had been formulated. However, the Respondent did not, at this time, have the resources to immediately produce a finished site. Thus, during the registration process provided by Register, the option to submit the site to <greatdomains.com>, offered through means of a simple checkbox, seemed, to the Respondent, to be a harmless action. No other effort was made by the Respondent to actively sell or transfer the Domain Name. No individual, nor any commercial body was approached by the Respondent in this regard.

(iii) The timing of the publication of the "marsbar.net" site had no relation to any correspondence between parties working on behalf of ‘Mars UK’, and the Respondent. In fact, as far as the Respondent is aware, the site was made public, in a rudimentary state, some time prior to any contact with the Complainant.

(iv) It is a fact that the "marsbar.net" site does not, and never has, contained any reference to ‘Mars UK’, the company, nor to any of the products of said company.

(v) The Respondent has never, at any time, acted in bad faith; although not terribly sophisticated, the construction of the site represents a considerable expenditure of time and effort on the part of the Respondent.

(vi) As far as the Respondent is aware, ‘Mars UK’ produces no product that is actually named ‘Mars Bar’, nor do they hold any trademark on such a product.

(vii) It is simply inconceivable that anybody visiting the "marsbar.net" site could possibly assume any connection with the ‘Mars UK’ company, given the content of the site, and thus the argument for brand dilution or passing off seems preposterous.

(viii) To conclude, the "marsbar.net" site was not created with any malicious intent in mind, nor with any anticipation of the concerns or involvement of the Complainant. It seems a highly remote possibility that the existence of this site could ever lead to the confusion of 'Mars UK' clients or potential clients, nor to any brand dilution, loss of goodwill or loss of earnings thereby.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

As to element (i), it is clear that the Domain Name is not identical to the Trademark. Despite the undoubted fame of the Trademark, it is possible to conceive of circumstances where the name "Mars" (i.e. the planet or the god) could legitimately be adopted for a domain name without confusion with the Trademark. However, it is the very addition of the word "bar" to the word "Mars" that renders the Domain Name confusingly similar to the Trademark. Despite the fact (as pointed out by the Respondent) that the Complainant has not registered "MARSBAR" as a trademark, the Panelist has no doubt that the overwhelming majority of the British population would instantly associate the Domain Name with the bar of chocolate confectionery made and sold by the Complainant. The Complainant has established element (i) of paragraph 4(a) of the Policy.

As to element (ii) of paragraph 4(a) of the ICANN Policy is concerned, the Respondent faces the problem that the item of confectionery, the "Mars bar", was in the year 2000, one of the best known confectionery products on the U.K. market, and it is inconceivable that the Respondent was unaware of this fact. Not surprisingly, the Respondent is unable to demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply here so as to demonstrate that he has the necessary rights or legitimate interests.

So far as element (iii) is concerned, the onus is on the Complainant to show, on the balance of probabilities, that the Respondent (a) registered and (b) is using the Domain Name in bad faith. Under paragraph 4(b)(i) of the Policy the following shall be evidence of the registration and use of a domain name in bad faith:

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."

The Complainant asserts above that the Domain Name was registered for the sole purpose of offering it for sale. The offer on the <greatdomains.com> website does not state a price, but instead invites offers, the minimum amount of which should be U.S. $300.

This act in itself is probably sufficient to establish that the Domain Name was registered and was being used in bad faith. The subsequent creation of an active website offering for sale T-shirts and mugs marked "The Mars Bar" demonstrates an intention to infringe the Trademark.

In all the circumstances of this case, the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith.

In the light of the findings in paragraph 7 above, the Panelist concludes that:

· the domain name <marsbar.net> is confusingly similar to the trademark MARS of the Complainant;

· the Respondent has no rights or legitimate interests in the domain name;

· the domain name has been registered and is being used in bad faith.

Accordingly, the Panelist orders that the Domain Name <marsbar.net> be transferred to the Complainant, Mars UK Limited.