Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant:
Cadbury Limited of PO Box 12, Bournville Lane, Bournville, Birmingham B30 2LU, United Kingdom.

Respondent:
Keith Gregory of 59 Leighton Drive, Leigh, Lancashire WN7 3PN, United Kingdom.

The disputed domain name is "cadbury.net", registered with Network Solutions, Inc. of Herndon, VA 20170, United States of America, on June 27, 1999, by the Respondent.

1) The Complaint in Case D2000-0897 was filed by email on July 28, 2000.

2) The WIPO Arbitration and Mediation Center has found that:

- the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

The Panel accepts these findings and itself finds that:

- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- a Response to the Complaint was filed in due time; and that

- the Administrative Panel was properly constituted.

3) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

4) No further submissions were made in the Case.

5) The date scheduled for issuance of a decision is: October 15, 2000.

6) No extensions have been granted or orders issued in advance of this decision.

7) The language of the proceedings is English.

1) The Complainant is a UK registered company which for decades has traded in the UK and elsewhere in the world as a confectionery manufacturer. Its products are well-known by the trademark, "Cadbury" and it has produced extensive evidence of registrations of that name as a trademark for goods associated with its business in many countries, the most venerable being that of May 8, 1886, in the UK.

2) The Respondent is an accountant. He states that, on behalf of clients, he has registered "approaching 70" domain names. Among the registrations which he has made is "guiness.org".

A. Complainant

The Complainant asserts:

That the Respondent's conduct as a whole shows that from the outset he knew of the existence and reputation of the Complainant through its trademark;

That the Respondent was not known by the Cadbury name and has not used the name in connection with any bona fide offering of goods or services;

That when the Complainant, through its solicitors, sought a transfer at cost, the Respondent secured a statement that the Domain Name was to be valued at US$250,000-$2.5 million; and then invited bids opening at US$50,000, which amounted to clear evidence that the Respondent's primary purpose throughout was to procure the transfer of the domain to the Complainant for a sum far above the cost of obtaining and maintaining it.

That the Respondent had obtained the registration in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that, since he had also obtained the domain name "guiness.org"; the Respondent was involved in a pattern of such conduct, since "Guinness" is the name and mark of the famous Irish brewing concern.

Accordingly the Complainant seeks transfer of the domain name in issue to itself.

B. Respondent

The Response asserts, by way of honest explanation:

That the domain name was registered on behalf of an accounting client who was a design engineer; the name was chosen as a combination of CAD (for computer assisted design) and Bury (the Lancashire town in the client's address).

That the steps of securing the large valuation and the listing of opening bids followed from an unsolicited approach by the Complainant's solicitor to purchase the domain name.

That the registration of "guiness.org" was a typing error for "guineas.org".

The Panel finds that, in accordance with Paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complaint is made out, i.e.

1) the Domain Name 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 confusing similarity

The Respondent has not contested the assertion that "Cadbury" is a household trademark for confectionery and that his domain name is identical with or confusingly similar to that mark.

(B) Rights or Legitimate Interests of the Respondents

The explanation which the Respondent offers of his client's alleged reason for selecting the domain name cannot be accepted, given the Respondent's subsequent conduct in seeking a transfer of it for a large sum and the absence of any other genuine use or preparations for use.

(C) Bad Faith

The Respondent's conduct in securing the valuation and the statement of opening bid price on the website, "shoutloud.com" puts beyond question that he registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, or to a competitor of the complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

The Panelist also considers it highly likely that the domain name was registered in order to prevent the Complainant, as owner of the trademarks, from reflecting those marks in a corresponding domain name, as part of a pattern of such conduct. The pattern of conduct stems from the registration of "guiness.com", for which the Respondent offers only the laconic suggestion of a clerical error.

The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4:

- that the domain name in dispute is identical with the registered trademarks of the Complainant;

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that it has been registered and is being used in bad faith.

The Panel accordingly requires that the domain name "cadbury.net" be transferred forthwith to the Complainant.

William R. Cornish
Panelist