The Complainant is Grants of Ireland Limited, of Dublin, Ireland, represented by F.R. Kelly & Co., Ireland.
The Respondent is Liam J. Carolan, of Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <carolans.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On November 24, 2008, Network Solutions, LLC 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 December 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2008. The Response was filed with the Center on December 20, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on January 7, 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.
Prior to the filing of the Response, the Center received a number of emails from Terence P. Carolan. In one of those emails Mr. Terence Carolan said:
Finally, the ‘respondent' is listed as Liam J. Carolan – actually it's Liam F. Carolan, he's my brother and is the ‘technical' person listed for the CAROLANS.com domain – but I am the one who purchased and registered the CAROLANS.com domain – does that need to be fixed before we can proceed, or should I just prepare the response and both Liam and I sign it?
On December 11, 2008, the Center responded to the emails from Mr. Terence Carolan, pointing out that the proceeding had been commenced against the registrant of the Domain Name, and not against the technical contact, zone contact, administrative contact, or billing contact. The Center advised that, if those persons were different from the registrant, they were requested to forward the notification of the Complaint and any attachments to the registrant. The Center invited the Respondent to consult the Response filing guidelines available on the Center's website.
When the Response was received by the Center, it showed Terence P. Carolan and Liam F. Carolan as respondents, and it was signed by both individuals.
On January 6, 2009, the Complainant's representatives wrote to the Center seeking authorization to file a Reply to certain matters raised in the Response. The Complainant's representatives referred specifically to the Respondent's allegation in the Response that the Domain Name is “used exclusively for private electronic communications between members of the CAROLANS domain”. The letter from the Complainant's representatives asserted that there was nothing private about the banner page used [on the website at the Domain Name] or the use of an image of the Complainant's product. By email dated January 8, 2009, the Center advised the Complainant that it would be for the Panel in its sole discretion to determine whether the Complainant should be permitted to make a supplemental filing.
In the Complaint, the Complainant alleged that the Respondent's business address listed on a website at the Domain Name, was that of a corporation (based in Redwood City, California) operating a website at “www.wineglobe.com”. In the Complaint, the Complainant supplied a number of email addresses at the <wineglobe.com> domain name. In accordance with the Rules, paragraph 2(a)(iii), the Center emailed the Notification of Complaint and Commencement of Administrative Proceeding to those email addresses, and the Center continued thereafter to copy its email communications to the various “@wineglobe.com” email addresses.
On January 7, 2009, the Center received an email from Gaurav Rekhi, advising as follows:
I have sent out an email a few times. There is no affiliation between Wineglobe and Carolans.com and I would like Wineglobe to be removed from this dispute.
In addition, the business address listed in the complaint is Wineglobe's business address, not Carolans.com. Please change this information.
Thanks.
Gaurav
The Center responded to Mr. Rekhi on January 8, 2009, advising that his communication was being brought to the Panel's attention.
By Procedural Order No. 1 issued on January 20, 2009, the Panel rejected the Complainant's request to file a Reply, but requested further documents from both Parties and a Supplementary Statement from the Respondent (answering certain questions put to him by the Panel). These were to be provided by January 23, 2009, and the time for the Panel to give its decision in the case was extended to January 28, 2009.
The Respondent responded by email within the time allowed by the Panel. The Complainant did not respond to the Panel's request. 1
4. Factual Background
The Complainant
The Complainant manufactures and markets a liqueur known as CAROLANS Irish Cream Liqueur. According to the Complaint, the product was developed in 1978. The Complainant asserts (and the Respondent does not deny) that subsequent sales of the liqueur, which is now marketed in over 80 countries, have established the Complainant's product as the world's number 2 Irish cream liqueur.
The Complainant is the registered proprietor of the word mark CAROLANS in numerous jurisdictions. It is not necessary to refer to them all. The Panel notes first that the Complainant is the registered proprietor of the word mark CAROLANS in the Republic of Ireland, in respect of Irish Cream Liqueur in international class 33.
It is also the proprietor of the word mark CAROLANS in the United States of America (mark number 1249218; registration date August 23, 1983), in respect of liqueurs in international class 33.
The Respondent and the Domain Name
The Domain Name Whois particulars show that the Domain Name record was created on October 20, 1998.
According to the Complaint, the website at the Domain Name (“the Respondent's website”), is used for the Respondent's activities “and on-line sales of wine and alcohol”. The Complainant asserts that the Respondent's website can also be accessed at “www.wineglobe.com”, and that the <wineglobe.com> domain name was created on February 28, 1998. According to the Complaint, all of the email addresses on the Respondent's website use the address “… @wineglobe.com”. The Complainant further alleges that the Respondent trades under the name “Wine Globe Store”, and that it is the Respondent who holds the domain name <wineglobe.com>.
The Complainant also alleges that the Respondent's website has featured a bottle of the Complainant's CAROLANS Cream Liqueur, with the disclaimer: “We do not sell this here”.
In the Response, the Carolan brothers explain that “Carolan” is a family surname, and that the Domain Name was registered over 10 years ago for the sole purpose of providing a private domain for all of the Carolans in their immediate family. They say that the Domain Name is used exclusively for private electronic communications between “members of the CAROLANS domain”. The Response asserts that the brothers' only reason, motive, or intent in registering the Domain Name was because it was the plural version of the family surname.
According to the Response, the great majority of the individual domain members are immediate family members of the Respondent.
No “member of CAROLANS.com” is said to have had any association with the sale of wine or alcohol, whether online or from any physical location.
The Respondent acknowledges that, 3 to 5 years after the registration of the Domain Name a picture of a bottle of Carolans Irish Cream Liqueur was placed on the banner page of the Respondent's website. The Respondent acknowledges that the statement “We do not sell this item here” appeared with the picture of the bottle of Irish Cream Liqueur, and says that a link to the “www.wineglobe.com” website was also included on the page.
The Response was accompanied by an affidavit severally sworn by Mr. Terence Carolan and Mr. Liam Carolan. The affidavit stated that the registration of the Domain Name was effected without any prior knowledge of the Complainant's mark “Carolans Irish Cream Liqueur”, and confirmed a statement in the Response that the “family domain and its registrants” have never engaged in any commercial activity on the Internet where the Domain Name has been concerned. Specifically, the affidavit confirmed the statement in the Response that the registrants had never engaged in the sale of wine, liqueurs, or any other alcoholic beverage, whether on-line or through a standard “brick and mortar” location.
In respect of the posting on the Respondent's website of a picture of a bottle of the Complainant's product, the disclaimer, and the link to the website at “www.wineglobe.com”, the affidavit noted that, at the time, the Complainant's product was offered for sale through the website at “www.wineglobe.com”. The affidavit went on to state:
9. The disclaimer was made for the express purpose of avoiding any likelihood of confusion between the Grant's of Ireland Limited mark ‘Carolans Irish Cream Liqueur' and the non-commercial family domain ‘CAROLANS.com'.
10. The link was added for what we believed was a simple, on-line courtesy to any confused searcher as well as to the object of any confused search to help the parties get together for their mutual desires.
11. ‘CAROLANS.com' has never intentionally or otherwise engaged in any effort to attract or redirect on-line consumers to Wineglobe.com, or any other on-line retailer.
In their affidavit, Terence and Liam Carolan denied that the Respondent's website had ever been used to provide advertising space, whether on a pay-per-click basis or otherwise. They also denied that they had had any contact “in any way, shape or form with anyone from or acting for the website Wineglobe.com”. They deposed (in respect of <wineglobe.com>): “We do not know each other”.
(On that topic, the Respondent had stated at pages 5 and 6 of the body of the Response: “Wineglobe.com has virtually nothing to do with CAROLANS.com – nothing. The Complainant states that CAROLANS.com is somehow associated with the domain Wineglobe.com – other than an errant URL there is and never has been any association between CAROLANS.com and Wineglobe.com.”)
The Respondent stated in the Response that he has no business address at Redwood City, California. As he put it in the Response, “CAROLANS.com has no business address because it is not a business. CAROLANS.com is headquartered out of a home [in New Jersey – that of Mr. Terence Carolan] and another home [in Illinois – that of Mr. Liam Carolan]. No member of CAROLANS.com has ever been to Redwood City, CA.”
Pre-commencement Communications between the Parties
According to the Complaint, the Complainant wrote to the Respondent on December 14, 2007, requesting that the picture of the Complainant's product be removed from the Respondent's website. The Complainant did not produce a copy of the alleged December 14, 2007 letter, and the Respondent denies ever having received it. (The Respondent speculates in the Response that the letter may have been sent by email and been deleted on arrival at the Respondent's inbox as spam, junk mail, or may have been “misfiled”.)
In its Procedural Order No. 1, the Panel asked the Complainant to produce a copy of this letter. The Complainant failed to respond to the Panel's request.
Respondent's Actions on Receipt of the Complaint
The Respondent and his brother say that both the picture and the link to the “www.wineglobe.com” website were removed immediately when they first perceived that there was a problem, namely on receipt of the Complaint on December 1, 2008. They say that they would have done that years ago if someone had only asked, but no-one ever did.
Additional Evidence
The Complaint had annexed to it WhoIs particulars for the domain name <carolan.com>, showing that the record for that domain name was not created until March 1999, approximately 4½ months after the Domain Name was first registered. The Complainant also produced a copy of the website at “www.wineglobe.com”, printed on November 7, 2008. The web pages produced show that an online wine, spirits, and liquor shop was operating at the site on that date, under the name “Wineglobe”. The Panel did not note any reference on the pages produced, to the Complainant or to any of its products. Nor was there any reference to the Respondent, his family, or the Domain Name.
The Complainant also produced the results of an online search run on the names “Carolans” and “Carolan” on the United States' Census Bureau website, on November 20, 2008. There were no hits at all on the name “Carolans”, and the name “Carolan” was ranked (in the Bureau's ranking of commonly-occurring names in the United States of America, with “1” being the most common), at number 17,009.
The Respondent attached to the Response an affidavit sworn by one Donald Simpson, an attorney specializing in intellectual property matters (and presumably briefed to advise the Respondent on the present Complaint). The affidavit does not appear to state any relevant facts – it is better described in the next section of this decision, dealing with the Parties' contentions.
The Respondent and his brother say that, on December 6, 2008, they registered the domain names <carolans.org>, <carolans.us>, and <carolans.us.com>.
Respondent's Supplementary Statement
The Respondent's Supplementary Statement consisted only of an email from the Respondent to the Center dated January 23, 2009. For convenience, the Panel will refer to this email as “the Reply”. Notwithstanding the Panel's specific request that the Reply be certified as to accuracy and completeness in the same manner as the Response had been certified, the Reply did not contain any such certificate.
In the Reply, the Respondent confirmed that he or his brother was the original (1998) registrant of the Domain Name. He said he could not recall which of them was the registrant. In response to a request from the Panel for the names of all persons who had procured links from the website at the Domain Name to the website at “www.wineglobe.com”, and for details of the authority pursuant to which such persons acted in procuring the links, the Respondent stated:
The link to wineglobe was created by me through a random search as a resource for carolans irish cream that simply and harmlessly pointed visitors to a place where they could buy the product.
No-one at wineglobe was ever notified or contacted because there was no intent to gain anything other than helping any visitors who happened to come on to carolans.com looking for carolans irish cream with a link to visit a place where they could find it. At the time and to the best of my knowledge creating a link to a website that referred a visitor somewhere did not require authority.
FOR Example: Let's imagine that you knocked on the front door of my house and I answered the door. You ask me “where can I find some fresh apples?” and I tell you to go next door … is this wrong? …
5. Parties' Contentions
A. Complainant
The Complainant contends as follows:
1. The Domain Name is identical to the CAROLANS mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) The Respondent is not commonly known by the Domain Name, or by the name “Carolans”. Nor is the Respondent's business known by the name “Carolan”: the name under which the Respondent trades is Wine Globe Store. As the Respondent holds the domain name <wineglobe.com>, there is no reason for the Respondent to use a domain name incorporating the Complainant's CAROLANS mark other than to divert customers of the Complainant.
(ii) There is no commercial advantage in setting up a website at the Domain Name other than to sell the Domain Name to the Complainant, or to a competitor of the Complainant, or to attract hits which would not otherwise be made.
3. The Domain Name was registered and is being used in bad faith, having regard to the following matters:
(i) The fact that the Respondent's home page shows a picture of the Complainant's products rules out any argument of coincidence by virtue of the Respondent's name being “Carolan”. The Respondent was aware of the Complainant's mark, and intended to benefit from the “coincidence” that the Domain Name is the same as the Complainant's mark (citing Deutsche Post AG v. Mail Mij LLC,
WIPO Case No. D2003-0128).
(ii) The depiction of a bottle of the Complainant's Irish Cream Liqueur on the Respondent's website demonstrates bad faith. The disclaimer on the Respondent's website came too late, as a consumer reading the disclaimer had already been diverted to the Respondent's website by the Respondent's use of the Domain Name.
(iii) The Respondent's failure to respond to the Complainant's cease and desist letter also demonstrates bad faith.
(iv) The Domain Name was registered primarily for the purpose of attracting business. Given the Respondent's field of interest and lack of any connection with the Complainant, there is no conceivable non-infringing use to which the Respondent could put the Domain Name.
(v) If the Respondent's intentions were genuine, the more obvious domain name for him to use was <carolan.com>, which was not registered at the time.
(vi) The Domain Name has value as an attractive force which would serve to increase traffic to the Respondent's web page, and would increase its value for sale to any third party.
(vii) In registering the Domain Name, the Respondent has prevented the Complainant from reflecting its mark in a corresponding domain name. (The Complainant has been forced to register other domain names incorporating the mark CAROLANS, namely <carolansirishcream.com> and <carolanscreamliqueur.com>).
(viii) The Respondent has been seeking to disrupt the business of the Complainant, by attracting visitors looking for information on the Complainant's mark, and by creating difficulties for customers of the Complainant who might stumble upon the Respondent's website when trying to find the Complainant's website.
(ix) The Complainant approached the Respondent as soon as it became aware of the registration of the Domain Name, and requested that it remove the picture of the Complainant's product from the Respondent's website. There has been no unreasonable delay in the instigation of this proceeding. In any event, laches and delay are not relevant to domain name complaints.
(x) In British Telecommunications Plc and Others v. One in a Million Limited [1999] FSR 1, the English Court of Appeal held that the only possible reason why anyone not connected with the plaintiffs would wish to use a domain name incorporating their marks or names, would be to pass himself off as part of the plaintiffs' group, or to pass off his products as those of the plaintiffs. The British Telecommunications Plc case has been followed by the English Courts in Global Projects Management Limited and Another v. Citigroup Inc and Others (decision of Park J, Chancery Division, October, 2005). The Court confirmed the mere registration and holding of a domain name that leads people to believe the holder of the domain name is linked with a person, is enough to make the domain name a potential “instrument of fraud”, and amounts to passing off.
(xi) The use of the Domain Name is causing or will probably cause damage to the Complainant's goodwill and reputation. Where marks are identical or virtually identical, the likelihood of damage may be inferred.
B. Respondent
The Respondent contends as follows:
1. The Complainant's assertion that <carolans.com> is an online business engaged in resale of wine and alcohol, is absolutely ridiculous.
2. The online sale of wine and alcohol would require various levels of business licensing, both state and federal, as well as tax ID numbers, business insurance, and various other requirements. <carolans.com> has none of those things, because it is not a business, and never has been. The allegation that the Respondent has used the Domain Name to sell liquor without those licenses or authorities, is libelous.
3. If the removal of the picture on the Respondent's website was so important to the Complainant, why did it not send a registered letter, with return receipt requested, to the Respondent?
4. Suggesting that an unrelated website with no relevance to <carolans.com> is proof of wrongdoing with an intent to cause the Complainant harm, blatantly obfuscates the facts.
5. The Complainant's references to the UK Court decisions in British Telecommunications Plc v. One in a Million Limited [1999] FSR 1, and Global Projects Management and Another v. Citigroup Inc and Others, are irrelevant, for the reasons set out in the affidavit of Mr. Donald Simpson attached to the Response. (Mr. Simpson simply dismissed these decisions as being “irrelevant and inapplicable to the present case”. According to Mr. Simpson, the test for infringement of a trademark is “likelihood of confusion in the marketplace”, and the Domain Name has never been used “in the marketplace”. Mr. Simpson dismissed any question of “cybersquatting”, apparently on the basis that that concept is limited to situations where a party “buys up domain names with no intention of using the domain names except for the purpose of selling them to other businesses …” (Mr. Simpson's emphasis.))
6. The Complainant has failed to take reasonable steps to protect its mark on the Internet, and its claim that it needs the Domain Name is without foundation. The Respondent and his brother were able to purchase the domain names <carolans.org>, <carolans.us>, and <carolans.us.com> on December 6, 2008, after the present Complaint had been filed. In addition, <carolans.net> is registered to a realtor in Australia. The Respondent and his brother had no intention of cybersquatting on any of these domain names, and would give them up without profit – the action taken in registering these domain names was only taken to prove a point.
7. The Respondent accepts that the Complainant holds a trademark incorporating “Carolans” in the mark “CAROLANS IRISH CREAM LIQUEUR”. However, the registration of the Domain Name was effected without that knowledge. The pluralized <carolans.com> Domain Name was registered as a reflection of all the Carolans who would be using the Domain Name.
8. The Respondents have never, whether accidentally or intentionally, acted to create confusion with the Complainant's mark as a source, sponsor, or an affiliate, nor has the Respondent accidentally or intentionally given the appearance of requesting an endorsement, or location, product, or service.
9. The Respondent has never acted in bad faith under any circumstances. The picture of the Complainant's product, and the link to the “wineglobe.com” website, were never done to disrupt or tarnish the Complainant's mark, or to somehow redirect consumers to another website for commercial gain. Those steps were taken to avoid any likelihood of confusion associated with the Domain Name and the Complainant's CAROLANS IRISH CREAM LIQUEUR mark. When contacted for the first and only time about the perceived problem on December 1, 2008 (with the service of the Complaint in this proceeding), the Respondent immediately removed the picture and the link.
10. At no point did the Respondent give any thought when registering the Domain Name, to selling, renting, or otherwise transferring the Domain Name to the Complainant or to any other Complainant. The Respondent was not aware of Carolans Irish Cream Liqueur when registering the Domain Name, and wasn't aware of it for several years afterwards.
11. The Respondent has never, accidentally or intentionally, engaged in a pattern of behavior consistent with the disruption of the business of the Complainant or any other organization. The Respondent has never accidentally or intentionally acted to prevent the owner of a mark from reflecting that mark in a corresponding domain name.
12. The Complainant has engaged in an attempt at reverse domain name hijacking. According to Mr. Simpson's affidavit, the Complainant was either “grossly negligent” in bringing the Complaint, or has “willfully made false and misleading statements of fact and law”. Mr. Simpson deposed that, had the Complainant done “a reasonable and responsible search of facts and an honest analysis of the law”, it would have found a number of things, including:
(i) that the Domain Name has not been used “in commerce”, and
(ii) that the Carolan family has used the Domain Name solely for family affairs. As Mr. Simpson put it: “the Carolans family has been using [the Domain Name] for quite a number of years for family communications, a proper lawful use, and have never used it in any other capacity”.
6. Discussion and Findings
A. Procedural Issues – Identity of Respondent, Complainant's Request to file Reply, and Email Communication from Mr. Rekhi of Wineglobe
The Identity of the Respondent and the Position of Wineglobe and Mr. Rekhi
These points can be dealt with quite shortly. The Complaint correctly names as Respondent the registrant shown in the Whois particulars for the Domain Name and confirmed by the registrar. The registrant, Mr. Liam Carolan, has signed the Response, including the certificate as to accuracy and completeness which is required by the Rules, paragraph 5(b)(viii). The other party who appears to have a substantial interest in the Domain Name (Mr. Terence Carolan), has also signed the Response, including that certificate. In those circumstances, it appears to the Panel that the parties were sufficiently named, in both the Complaint and the Response.
Mr. Rekhi and Wineglobe requested that the company Wineglobe “be removed from this dispute”. Except to the extent that copies of the Complaint and communications from the Center have been sent to it, Wineglobe has never actually been in the dispute. No relief has been (or could have been) sought from Wineglobe – it has not been named as a Respondent. In those circumstances, no order or direction from the Panel is necessary.
Complainant's Request to file a Reply
The Rules contain no provision allowing complainants to file replies. However, in certain very limited circumstances a panel may, in its discretion, allow a complainant to file a reply. Generally, those circumstances have been limited to cases where the complainant wishes to raise some material matter of fact or law which it could not with reasonable diligence have ascertained and included in its complaint, or where the response raises material matters which the complainant could not reasonably have anticipated (see, for example, DK Bellevue, Inc d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780).
In this case, the Complainant's request for leave to file a reply referred only to an intended challenge to the Respondent's characterization of his use of the Respondent's website (contrasting the Respondent's claim that the Domain Name was intended only for private electronic communications between family members, with the Respondent's action in apparently permitting a picture of the Complainant's product to be shown on the Respondent's website). There did not appear to be anything in that which the Complainant could not have dealt with in its Complaint. In accordance with the principles discussed above, the Complainant's request to file a reply was therefore rejected.
B. What the Complainant must prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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.
C. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It has established that it is the registered proprietor of the trademark CAROLANS in the Republic of Ireland (and elsewhere), and that is sufficient to establish a right in a trademark for the purposes of paragraph 4(a)(i) of the Policy. That mark is identical to the Domain Name – the “.com” suffix is not taken into account in the comparison which panels are required to make under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.
It is usually sufficient to establish a prima facie case under this part of the Policy, for a complainant to show that the disputed domain name is identical or confusingly similar to its trademark or service mark, that it has not authorized the respondent to register the disputed domain name, and that there is nothing to suggest that the respondent might be commonly known by the disputed domain name (so that a right or legitimate interest might exist under paragraph 4(c)(ii) of the Policy). In this case, however, the Complainant has not expressly stated that it has not authorized the Respondent to register the Domain Name, and when it claims to have finally done something about the Domain Name (which it says was not until December of 2007, over 9 years after the Domain Name was registered), its concern appears to have been limited to having the picture of the bottle of the Complainant's Irish Cream Liqueur removed from the Respondent's website. The Respondent denies receiving the December 2007 letter, and when the Panel asked the Complainant to produce it, the Complainant failed to answer the request.
The Panel is surprised at the Complainant's statement that it did not become aware of the registration of the Domain Name until December 2007. The Complainant's product is said to have been on the market since July 1979, and the Domain Name was registered as long ago as October 1998. The Complainant describes its product as “the world's no 2 Irish cream liqueur”, and the Panel infers from that wording that there is at least one other “Irish cream liqueur” on the market. The critical distinguishing word as far as the Complainant's product is concerned then, must be the word “Carolans”. If that is right, it is difficult to believe that the Complainant would not have been keenly interested in whether <carolans.com> was available for its use. The Complainant's failure to pursue its claimed rights in respect of the Domain Name for such a long period clearly called for some explanation, but the Complainant has elected to rely only on the argument that laches, or delay, is not a defense to a claim under the Policy. That may be so, but the Panel is left with the uneasy feeling that it has only been told part of the story.
That comment applies similarly to the case advanced by the Respondent. Contrary to the assertions of the Respondent, it appears that the Domain Name has been used commercially. Someone has gone to the trouble of uploading onto the Respondent's website not merely a picture of a bottle of the Complainant's product, but also two drinking glasses, neatly positioned to the right of the bottle. The Panel notes from the Wayback Machine at “www.archive.org”, that that particular picture appeared on the Respondent's website from at least as early as July 22, 2001. In 2002, the same picture appeared with the words: “We don't sell this here … but here's a good resource that's reasonably priced”. There followed a click-on link which took the website visitor to a third party online liquor seller. Back in 2001, the link appears to have been to a company called Internet Wines & Spirits based in Fairview Heights, Illinois – later, the relevant link was changed to the “www.wineglobe.com” website.
If the Respondent was operating a purely non-commercial website, for only private intra-family communications, why would he go to the trouble of uploading a picture of the Complainant's bottle, adding two neatly-arranged glasses, and volunteering that the product available at the linked website was “reasonably priced”? It looks like use in commerce to the Panel, even if the Respondent did not personally gain any direct financial reward for providing the links. Certainly the proprietors of the Wineglobe and Internet Wines & Spirits businesses must have benefited from the provision of these links, so at very least the Domain Name has been used to provide commercial benefit to a third-party business.
Nor has the Respondent explained the role of a corporation called “Intermedia Access Corporation”, which corporation inserted a copyright claim on pages from the Respondent's website from 2001 and 2002, which are available on the Wayback Machine at “www.archive.org”. The Panel would have appreciated some explanation of the role played by that company, especially as the copyright claim suggests that Intermedia Access Corporation was responsible for the design of the Respondent's website, including the picture of the bottle of the Complainant's product, the two drinking glasses, and the “reasonably priced” statement. The Panel repeats – someone has gone to quite some trouble to design the Respondent's website, and it is not apparent why anyone would have done so if there was not going to be any return for that time and effort. To borrow from the Respondent's analogy, it is one thing to greet a visitor who arrives at one's door looking for fresh apples, to direct that visitor to the fresh apple seller operating next door. It is quite another thing to send a visitor who is looking for a particular, named apple seller off to an unrelated business which happens to sell apples (and other fruits which the visitor might decide that he prefers to apples), giving the visitor detailed artwork showing the unrelated vendor's apples with unnecessary additional items, and adding laudatory comments about the unrelated vendor's apple prices.
The apparent gaps in the evidence as described above make it difficult for the Panel to resolve the question of whether the Respondent has a right or legitimate interest in the Domain Name. However it is not necessary for the Panel to do so – in view of the conclusion the Panel has reached on the question of bad faith registration under paragraph 4(a)(iii) of the Policy, the Complaint must fail in any event. Accordingly, the Panel makes no finding under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
It is well established under the Policy, that a complainant must establish not only that the disputed domain name has been used in bad faith, but also that it was registered in bad faith. That requirement, now universally accepted by panels deciding cases under the Policy, has been followed since at least the decision of Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
In this case, the Domain Name was registered as long ago as October 1998. The Respondent's surname is the same as the Domain Name, except that an “s” has been added to the Respondent's surname to form the Domain Name. The Respondent explains that that was done because other members of the Carolan family would use the Domain Name, for private, non-commercial, family-related Internet activities. The Respondent and his brother have provided a sworn affidavit testifying to that intended use, and they have also provided sworn evidence that the registration of the Domain Name was done “without any prior knowledge of the mark ‘Carolans Irish Cream Liqueur' owned by Grants of Ireland Limited.”
The Respondent has confirmed that it was he or his brother who first registered the Domain Name in October 1998, and the Panel has seen no evidence that the Respondent's website provided a link to any third party online liquor seller, before July 2001. Prior to that date, archived pages from the Respondent's website carried the line: “Carolans Family Web Share”. That is important, because it is consistent with the Respondent's claim that the Domain Name was registered for private Carolans family purposes. The fact that the Respondent might at some later stage have decided to take advantage of the family name for some commercial purpose (if that is what he did – it is not necessary for the Panel to make any finding on the question), does not in the circumstances of this case establish that the Respondent had any bad faith intent or motive at the time the Domain Name was registered. The Complaint must therefore fail for want of proof of bad faith on the part of the Respondent when the Domain Name was registered in October 1998.
F. Reverse Domain Name Hijacking
The Panel is not prepared to make a finding of reverse domain name hijacking in this case. The Complainant holds a trademark which is almost identical to the Domain Name, and for a period of some years the Domain Name carried a link to a third party online liquor seller's website at which numerous liquor products of other manufacturers were sold, in addition to the Complainant's product. That is a fairly typical bad faith situation which panels regularly encounter. As the Panel has noted, whoever provided the links to the third party online stores went to some trouble to do so, and in the Panel's view the Complainant cannot be blamed for inferring that the Respondent was in some way associated with the online liquor store, or at least deriving some reward for going to the trouble of providing a link which a picture of the Complainant's product, neatly arranged with two drinking glasses. The Complaint has failed substantially because the Complainant has not proved bad faith on the Respondent's part back in October 1998, when the Domain Name was registered. The Panel does have concerns over the Complainant's apparent failure to put all of its cards on the table, but at the end of the day those concerns do not constitute proof that the Complainant acted in bad faith in filing the Complaint.
Before leaving this part of the decision, it is appropriate to refer to Mr. Simpson's trenchant criticisms of the Complainant. In short, the Panel did not find Mr. Simpson's affidavit particularly helpful. It appears to have been written on the basis that the Complaint was a complaint of trademark infringement under the Lanham Act, which applies in the United States of America. Why American law was apparently considered relevant, when the Internet is accessible worldwide and the Complainant is based in Ireland, was not explained.
Complaints under the Policy are not trademark infringement claims. Different considerations apply. Once a complainant has proved that it owns a trademark or service mark which is identical or confusingly similar to the disputed domain name (ownership anywhere in the world will do), the focus under the Policy switches to the respondent. Does the respondent have some right or legitimate interest in respect of the disputed domain name? If not, is there proof that the respondent registered, and has used, the disputed domain name in bad faith? Often, the question of bad faith comes down to whether the respondent knew of the complainant or its mark when the disputed domain name was registered, and if so, whether the disputed domain name was registered in an attempt to profit from the complainant's goodwill in its trademark (whether by confusing Internet users into visiting a website at the disputed domain name, or by selling the disputed domain name to the complainant, or to a competitor of the complainant, at a profit). Proof of any trademark infringement by a respondent will always be relevant, but it is not a necessary condition for success in a complaint under the Policy. To take but one example, a respondent who has registered a disputed domain name in order to prevent a complainant from registering its trademark in a corresponding domain name, and who has engaged in a pattern of such behavior, may be guilty of bad faith registration and use under Paragraph 4(b)(ii) of the Policy, but may not have engaged in commerce at all (or even used the disputed domain name), and may not be guilty of any trademark infringement.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick Smith Sole Panelist
Dated: January 28, 2009
1"Editorial Note: On February 10, 2009, the Complainant advised the Center that, on January 21, 2009, it emailed to the Center a copy of the December 14, 2007 letter which the Panel had requested. The Center did not receive the Complainant's January 21 email, which appears to have been sent to the wrong email address (it was sent to [email protected], instead of to [email protected] ). The Complainant's February 10, 2009 communication was referred to the Panel, who (having given his decision in the case) declined to make any further order or direction."
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