Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Arthur Guinness Son & Co. (Dublin) Limited , Guinness Anchor Berhad, C/O Damien Clayton, United Kingdom; represented by Robin Blecker & Daley of United States of America.

The Respondent is Josh.com.my a.k.a. Josh Lim, Selangor 47400, Malaysia, represented by Tai Foong Lam, 50400, Kuala Lumpur, Malaysia..

The disputed domain names <thisisadamking.com> and <whoisadamking.com> are registered with Tucows, Inc, 96 Mowat Avenue, Toronto, ON, Canada M6K 3M1 (‘Tucows").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2002. On December 6, 2002, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name(s) at issue. On the same date, Tucows transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On December 11, 2002, the Center completed its checklist verification that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2002. The Response was filed with the Center on January 2, 2003.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on January 10, 2003. 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.

1. The Complainants, in connection with Diageo PLC, are one of the world’s leading premium drinks business producing and marketing over 200 spirits and wines in over 200 countries under various brands and trademarks, including the trademark GUINESS (Complaint, par 12(a)). The latter is a well recognized brand worldwide, and is stated to be the "No 1 stout in the world", being distributed to more than 150 markets worldwide, including Malaysia (Complaint, par 12(a)). In 2002, the Complainants sold over 11 million 9-litre cases of Guiness, of which 2.6 million cases were sold in Malaysia alone (Annex 5).

2. It appears from the Complaint (par 12(b)) that the Complainants and their predecessors have continually used the GUINESS mark in Malaysia in connection with their beer. A table in Annex 6 summarises the filings and registrations of GUINESS trade marks in Malaysia. There are some 28 for GUINESS alone, although the table does not indicate how these differ from one another and does not indicate in which classes of goods (or services) the applications have been made. It is also noted that the first 26 of these were only filed on June 28, 2001, while the last two were registered on February 22, 1989, and February 8, 1955, respectively. A further table of "Guiness..Formative TM Chart" is provided that lists various Guiness device trade marks (12 in all), which have been registered between July 29, 1955, and February 11, 1998. Once again, no indication is given of the classes in which these registrations are made (although it may be assumed that they at least cover beers), nor is there is any indication of the particular devices.

3. The Complainants have advertised their GUINESS beer through a wide variety of channels, including printed publications, radio, the Internet and billboards, and claim to have built up great goodwill and reputation in the mark, both worldwide and within Malaysia (Complaint, para 12(c)). It is against this background that, in 2002, they began an innovative marketing campaign to further enhance sales. This centered around a fictional character called ADAM KING, a "Guiness.. beer drinker, an international photojournalist and a man of inner strength, self belief and an embodiment of the Guiness… brand" (Complaint, para 12(e)). Among other things, this fictional character was intended to embody Asian male values, linking them to a liking for Guiness, and followed the pattern of similar marketing campaigns for Guiness that had been carried out previously in Africa (for a black James Bond character called MICHAEL POWER, and in Asia in the 1980s with a fictional character GEORGE LAM). The international advertising agency Saactchi and Saatchi were engaged to undertake this promotion campaign which was intended to run over several years.

4. The first stage of the campaign took the form of "teaser advertisements" to create interest and intrigue about the new fictional character. These were distributed through a number of media using the slogan "WHO IS ADAM KING" on a black background with a photograph of a draft of Guiness stout in a glass bearing the Guiness mark and harp logo, along with the teaser "Find out soon". According to the Complaint, par 12(f), these were distributed in the following ways in Malaysia:

"…advertisements displaying the slogan "WHO IS ADAM KING"™ appeared on cinema light pillars, outside LED power screens, human sandwich boards, promotional T-shirts, posters, pocket calendars, car sunshades, GUINNESS® beer packaging materials, leaflets, car flags, banners and coasters. In addition, the Complainants used projectors to display the slogan "WHO IS ADAM KING"™ on buildings and other structures, employed an ADAM KING™ Roving Team to promote the slogan "WHO IS ADAM KING"™ and GUINNESS® stout to customers in bars, displayed the "WHO IS ADAM KING"™ slogan on vans providing transportation to and from bars and night clubs, and aired a 10 second commercial featuring the slogan "WHO IS ADAM KING"™. The Complainants also used the slogan "THIS IS ADAM KING"™ in connection with advertisements displaying the counter slogan "THIS IS NOT ADAM KING"™ to show characters who were not the character ADAM KING™.

Samples of these advertisements are contained in Annex 9 of the Complaint. It also appears that SMS messages with the text "WHO IS ADAM KING?" were sent to mobile telephone users: this is how the Respondent sates that he firsr became aware of the advertising campaign: Response, par 5(b).

5. The first stage of the campaign began on June 24, 2002 (Complaint, par 12(g), and the second stage began on or about July 8, 2002, with the new slogan "THIS IS ADAM KING", with advertisements featuring photographs of the Adam King character in various poses, linked to Guiness beer, and with other advertisements containing third party endorsements of Adam King and his admirable qualities (Complaint, par 12((h0 and (i) and Annex 10). The Complainants allege that they have spent at least $US 8 million on this campaign, and have continued to use the character Adam King in the promotion of their product. Trade mark applications for the words ADAM KING have been filed in Malaysia, Singapore, Indonesia, Hong Kong, Europe and the USA in respect of beer and similar products (list provided in Complaint, Annex 11). The Complainant also asserts that it has acquired common law trade mark rights in the words "ADAM KING", "WHO IS ADAM KING" and "THIS IS ADAM KING" (Complaint, par 12(l)).

6. On or about July 3, 2002, the Respondent registered the first disputed domain name <whoisadamking.com> and on the following day registered the second name <thisisadamking.com>. It is undisputed that this was done without the authorization of the Complainants.

7. Both domain names lead to webpages that the Respondent has built up that contain items that criticize various aspects of the Complainants’ advertising campaign, in particular its failure to realize the potential of advertising online and the Complainants’ omission in not registering these domain names for themselves. They also provided users with a form requesting personal information, and receipt of this would be acknowledged if the user filled it out and submitted it. These pages have been regularly updated with new material on the Complainants’ Adam King campaign, and after July 15, 2002, began to contain disclaimers of any connection with the Complainants and the "official Adam King" (see the various extracts from the webpages in Complaint, Annexes 14-19 and 21). They also contain links to the Respondent’s own web page at <Josh.com.my> which describes his web designer services, his featured projects, his new media and corporation identity design, his portfolio of corporate and commissioned works, and his contact details.

8. The Complainant’s solicitors contacted the Respondent on or about August 12, 2002, stating that they were concerned about his registration and use of the domain names, and requesting transfer (Complaint, par 12(v)).. A meeting was held between the Complainants’ representatives and the Respondent on August 28, 2002, where this request was repeated and various statements (some disputed) were made by both sides (Complaint, par 12(x)). Further contacts occurred between the Respondent and the Complainants’ solicitors (Complaint, par 12(y)-(bb)). No agreement was reached, and ultimately the present administrative proceeding was commenced by the Complainants. .

The Complainants argues that the various requirements of par 4(a) of the Policy are made out as follows:

The Complainants rely here on their alleged common law rights in the words "ADAM KING", "WHO IS ADAM KING" and "THIS IS ADAM KING", as well their various trade mark applications for "ADAM KING". In support of their common law rights, they point to their use of the words "ADAM KING" as part of their advertising campaign that was launched on or about June 24, 2002, noting that this preceded the Respondents’ domain name registrations of July 3 and 4, 2002. The Complainants argue that, as a result of this campaign, the ADAM KING name had become instantly identified in the public mind with the fictional character of that name and, in turn, was suggestive of the qualities of their Guiness product (Complaint, p 17). They make the same claims in relation to the two slogans, arguing that these identify the fictional character and, in turn, the Complainants’ Guiness products. They then go on to argue that the Respondent’s domain names are identical to the slogan trade marks and, because of the prominence of the words "ADAM KING" in the domain names are confusingly similar to the ADAM KING trade mark (Complaint, p 18).

The Complainants allege that the Respondent was aware from the outset that the words ADAM KING and the associated slogans were associated with the Complainants, referring here to the "admissions" of the Respondent on his web site. Accordingly, the Respondent could not have registered these names with any intention of using them in connection with any bona fide offering of goods or services. In addition, the Complainants argue that the Respondent cannot have obtained any trade mark rights in the names or that he was in any way authorized to register the domain names by the Complainants. Finally, they argue that the uses by the Respondent cannot be regarded as legitimate noncommercial uses, in that they are directed towards confusing users as to the affiliation of his sites with the Complainants, and to bring them to his own web site and services. Accordingly, he has been able to use the domain names to gain publicity and notoriety for himself and his services, and his own commercial gain.

There are a number of aspects to the Complainants’ arguments here:

a. That the Respondent registered the domain names primarily for the purposes of selling them to the Complainants for valuable consideration in excess of out-of-pocket expenses (par 4(b)(i)): The Complainants point to evidence of negotiations with the Respondent, and an alleged offer from the Respondent to transfer the domain names for a sum of up to RM1.5 million each.

b. Using the domain names to attract, for commercial gain, internet users to the Respondent’s sites by creating a likelihood of confusion with the Complainants’ marks and slogans as to affiliation, sponsorship, etc (par 4(b)(iv)). The Complainants argue that, by registering and using these domain names, the Respondent has been able to divert users to his own site, ‘Josh.com.my’. Furthermore, he has been able to use this confusion in order to collect personal information from users. The Complainants add here that the disclaimers now provided by the Respondent serves to underline the fact that there has been confusion on the part of users.

c. Preventing the Complainants from reflecting their marks and slogans in corresponding domain names and engaging in a pattern of such conduct ((par 4(b)(ii)). The Complainants argue that this is the effect of the Respondent’s registration of the domain names, and points to another instance of this of this in relation to the Respondent’s registration and use the domain name "hotrnail.com". The Complainants also argue that there is no free speech defence available to the Respondent, citing several earlier Panel decisions to this effect, eg Bonneterie Cevenole S.A.R.L. v. Sanyouhuagong, WIPO Case No. D2001-1309; Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376.

The Respondent begins by stating that he became aware of the slogan "WHO IS ADAM KING" because of the receipt of an unsolicited short message on his mobile phone on or about June 31 (sic), 2002. Following this, he searched the name "ADAM KING" on the net and found no reference to the Complainants; rather, his searches threw up several unconnected registrations for the name: Response, par 5(c). He says further that, at the time of his registrations, he was unaware that the Complainants were using the slogans as anything other than an "advertisement gimmick" or that these were trade mark uses by the Complainant: Response, par 5(g). He also makes the point that at the time that he registered the name <thisisadamking.com>, the Complainants had not commenced the use of this slogan: Response, par 5(h).

The Respondent then addresses the specific elements of par 4(a) of the Policy as follows:

The words ADAM KING are not registrable as a trade mark under Malaysian law, citing here s 10(1) of the Trade Marks Act 1976 which provides inter alia for the registration of "the name of an individual, company or firm represented in a special or particular manner". He says further that such UK cases as Fanfold Ltd’s Application (1928) 45 RPC 325 and Standard Cameras Ltd’s Application (Robin Hood) (1952) 69 RPC 125 (on the analogous UK legislation) "clearly show that a name per se is not registrable in Malaysia": Response, p 12.

In addition, the Respondent argues that the slogan "who is Adam King" was never used as a trade mark by the Complainants in Malaysia, and had never indicated that this was a trade mark use in advertisements by the TM symbol. He argues further that he had already registered the domain name <thisisadamking.com> before the Complainants had begun to use their slogan "This is Adam King", and that even the Complainants’ use of another related slogan "This is NOT Adam King" began after this time: Response, p 12. Finally, he argues that the Complainant filed its ADAM KING trade mark applications after this date, asserting that "[u]nder Malaysian trade mark law, a later application cannot be a bar to an earlier application/registration" (referring here, apparently, to the earlier domain name registration: Response, p 13. Accordingly, he claims that the Complainant had no trade mark rights in the name "Adam King", and further that the slogans had been used in a descriptive way rather than as a trade mark in relation to goods or services.

Perhaps in light of the above, the Respondent does not appear to address any arguments concerning the other part of the first element, namely whether the domain names are identical or confusingly similar to the Complainants’ marks.

The Respondent’s principal point here is that he maintains his web site "to highlight the total lack [of] web presence of the advertising campaign of the Complainant and for internet users to give their comments on the [sic] such failures to exploit the internet": Response, p 13. He goes on to say that the purpose behind his link to his personal website is to allow internet users "view the website of the person who has successfully undermine [sic] the Complainants’ advertising campaign due to its lack of web presence", noting that he has also included links to other sites dealing with online marketing and web presence to allow internet users to see the comments of other web users in issues relating to web presence and online marketing: Response, p 14. He also draws attention to his disclaimer on the web site of any connection to the Complainant, and asserts that the publicity attracted by his activities, including the commentary in newspaper articles and the reference to them in case studies "clearly vindicate the Respondent’s legitimate right to register and use the said domain names": Response, p 14..

The Respondent rejects the Complainants’ arguments and makes the following points (some of these are relevant to the preceding element of legitimate non-commercial use):

a. He disputes that he made the offer to sell the names at the price alleged by the Complainants, saying rather that they placed him under great pressure at their meeting to make an offer and this is eventually what he did: Response, p 15.

b. That his registration and use of the domain names was not for a commercial purpose, but was intended to provide a critical commentary on the shortcomings in the Complainants’ advertising and promotion campaign. He argues further that the link to his own portfolio was necessary as part of his critique on online marketing as it is in the public’s interest that they should "know the background of the Respondent as a web designer and what gives the Respondent credibility to speak on the subject": Response, p 15.

c. That he took steps to disassociate his sites from the Complainants and therefore users were not, and are not, being misled in this regard,

d. Finally, he points to certain inaccuracies relating to the Complainant’s description of the sequence for the flash movie that was at "whoisadamking.com": Response, p 15..

This is an interesting case that has been the subject of well prepared and detailed submissions on both sides. Essentially, under paragraph 4(a) of the Policy, the Complainants have to establish three things. These are cumulative requirements, and the Panel’s findings on them are as follows.

The first thing that the Complainants must do here is to show that they have "rights" in a trade or service mark(s). In this regard, it needs to be remembered that both registered and unregistered marks can satisfy this requirement.

The Complainant has no registrations for any of the alleged marks ADAM KING, WHO IS ADAM KING and THIS IS ADAM KING, although it has applied for registration of the first. Accordingly, the Complainant relies upon (a) its applications for registration of ADAM KING, and (b) its common law rights in the unregistered marks ADAM KING, WHO IS ADAM KING and THIS IS ADAM KING.

As to the first of these, the Panel is not prepared to accept that rights in a trade or service mark for the purposes of par 4(a) of the Policy can be based solely on the fact of an application for registration having been made. This is not a point that the Complainant pursues in its Complaint, apart from its assertion at par 12(l) that this is one of the bases of its application. However, it can be dealt with here briefly. In an earlier decision, this same Panel has held that it was not prepared to find that par 4(a) was satisfied by the making of an application, in the absence of evidence of use: La Francaise des Jeux v. Tavenost Voyeurism Inc, WIPO Case No. D2002-0439. Other cases in which a similar approach has been taken are.Worldblackbet Inc v Nationwide Communications, Case No AF-0881, e-Resolution August 2, 2001, and Naturalwood Home Furnishings Inc v. The Sofa Factory Inc Case No AF-021, e-Resolution, August 13, 2001. In this regard, however, it is worth noting that the Respondent’s assertion that ADAM KING will not be registrable in any event may well be incorrect. Thus, the Malaysian Act quoted by the Respondents refers to a final category of registrable marks, namely "any other distinctive mark" (s 10(1)(e)), leaving open the possibility that ADAM KING might well be registrable under this heading. However, these are not matters on which the Panel can, or need, reach any conclusion in the present proceeding.

The better basis for the Complainants’ argument under par 4(a) is clearly that it had common law rights in the three marks at the date of the registration of the domain names on July 3 and 4, 2002. There is a timing issue here, and it is necessary to consider each alleged mark one by one.

1. ADAM KING: On the evidence presented by the Complainant, these words were being used in their advertising campaign prior to July 3 and 4, 2002, the launch having occurred on June 24, 2002. Although the scale of this pre-July 3 and 4, 2002, usage is not entirely clear, the Panel is prepared to accept that it was extensive. The question, however, is whether there was use of the words ADAM KING in such a way as to constitute use as a trade mark, such that it might be protected under the common law of passing off. In most of the pre-July 3 and 4, 2002, advertisements, the words ADAM KING are used as part of the larger phrase WHO IS ADAM KING, but there is a number of advertisements where the words ADAM KING appear, with a question mark, and the following sentence "Find out soon". The predominant part of the composite phrase, WHO IS ADAM KING, however, is clearly ADAM KING, in the sense that the interrogative words WHO IS lead clearly to the answer ADAM KING, so that the latter words are the striking part of each advertisement. The question that then arises is whether these words are used as a mark to identify the Complainants’ products. In this regard, it should be noted that most of the advertisements also carry the Guiness mark and harp logo affixed to a glass of Guiness beer, so it is clear that the words ADAM KING must refer in some way to this product. More directly, of course, ADAM KING refers to a fictitious character, but the connection of this character to the Complainants and their products seems clear. Accordingly, the Panel is prepared to conclude the Complainants, in the period immediately prior to July 3 and 4, 2002, had built up rights in the name ADAM KING in relation to both their beer and more generally their business, and that these were rights that they could have protected as unregistered trade marks under the common law of passing off..

2. WHO IS ADAM KING: While the Panel is prepared to accept that the words ADAM KING can be regarded as a trade mark in the relevant period, it is more difficult to determine whether the whole interrogative phrase was used in this way. Nonetheless, the phrase WHO IS ADAM KING recurs throughout the Complainant’s advertisements, and is used in conjunction with the Guiness word and device mark, and clearly in relation to beer/stout. Accordingly, the Panel finds that the Complainant had rights in this phrase as well, as an unregistered trade mark in the relevant period.

3. THIS IS ADAM KING: In this regard, the Panel accepts the Respondent’s submission that this phrase was not used prior to July 3 and 4, 2002, and accordingly no rights through use of this phrase can have arisen in the relevant period.

Proceeding on the basis that the Complainants have rights in both ADAM KING and WHO IS ADAM KING as unregistered trade marks, the next question is whether the disputed domain names are identical or confusingly similar. This is easily answered in the case of WHOISADAMKING.COM: it is clearly identical, when the suffix and lack of spaces between the component parts are ignored; alternatively, it is so close as to be confusingly similar.

The question then arises whether the domain name <thisisadamking.com> is identical or confusingly similar to the two marks. It is clearly not identical to either, but the Panel concludes that a finding of confusing similarity can be made, so far as the mark WHO IS ADAM KING is concerned: the substitution of THIS for WHO does not remove the possibility of confusion, particularly as THIS IS… can be seen as an answer to the interrogative WHO IS…

The Panel therefore concludes that the first element of par 4(a) has been made out. However, it wishes to note that the use of the TM indicators at the end of each of these marks by the Complainants in their Complaint was hardly necessary. No such usage is to be found in any of their advertisements, and it therefore was beside the point to insert such indicators in the Complaint itself, as the very question of trade mark subsistence was the one the Panel had to consider.

It is clear that the Respondent’s adoption of the domain names was done without the authorization of the Complainants. Does this fall within any of the illustrative categories in par 4(c) of the Policy?

1. There is no evidence of any use of the domain names, or demonstrable preparations to use them prior to the dispute in connection with any bona fide offering of goods or services: par 4(c)(i). In this regard, the Respondent denies any intention to use the domain names commercially, although the links to his own web page and services indicates that this may have been a collateral purpose behind the Respondent’s registration of the names. In the circumstances, this hardly seems to have been a use for the bona fide offering of these services (see further below).

2. The circumstances referred to in par 4(c)(ii) do not appear to exist.

3. The Respondent’s contention that he was making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade marks at issue is not made out: par 4(c)(iii). In this respect, the Panel notes the following:

a. This is not the same as cases where Respondents have created sites critical of a particular trade mark owner by incorporating some satirical or even pejorative element in the domain name, as in the "sucks" cases. In the latter, it is clear that the domain name leads to an "attack" site; by contrast here, the Respondent used one name that is identical to the one used by the Complainant in which the Panel has held that it had trade mark rights, namely WHOISADAMKING. It is only when users reach the Respondent’s site that they learn that this is not associated with the Complainants, and in, indeed, critical of aspects of their marketing campaign. Much the same can be said in relation to THISISADAMKING.COM, even if the Complainants do not have rights in this phrase for the purpose of this proceeding. It is nonetheless clear that this phrase was very shortly thereafter used by the Complainant, and the Respondent’s registration of the identical phrase gives no indication of the nature of the site to which it is linked.

b. The Respondent’s actual web site is certainly concerned with legitimate criticism of aspects of the Complainants’ advertising campaign, but it seems somewhat ingenuous for the Respondent to claim that its use was non-commercial in character and that the links to his own site are simply to demonstrate how online advertising should be done. Clearly, it will be to the benefit of the Respondent if users are then tempted to use his services – and the reason they have been led there is because of the Respondent’s registration and use of domain names that are identical or confusingly similar to the trade marks of the Complainants.

Accordingly, the Panel finds that the Complainants have satisfied this element of par 4(a).

The Complainants have placed their arguments in relation to this element on two main bases:

There is some conflict in the evidence here, in particular as to whether the Respondent’s offer was a real one or was the result of some kind of intimidation brought to bear by the Complainants and their representatives. There is also some dispute as to whether he told them that there was another party interested in buying the domains. On the evidence before the Panel, it is inclined to decide these matters in favour of the Complainants, and finds support for this conclusion in the letter that was sent by the respondent’s counsel to the Complainants’ solicitors on September 13, 2002, stating that if "your client is minded to make a reasonable offer, we shall advise our client to consider the same". Given that the same letter rejects the Complainants’ request that the Respondent transfer the domain names at cost, it must be assumed that this is an indication that the Respondent would accept a greater price. In addition, this offer made by the Respondent’s counsel cannot be characterized as having been made under any pressure, but was presumably a freely made and considered offer to negotiate. Accordingly, the requirements in par 4(b)(i) are made out here.

As mentioned above, this aspect of bad faith usage also seems established. Although the Respondent’s lack of affiliation or association with the Complainants becomes clear when the actual sites are accessed, there is clearly confusion caused when users key in the domain names, believing that these will take them to sites associated with the real Adam King. Once there, they receive a critical review of the Complainants’ advertising strategy, but the sub-text underlining the links to the Respondent’s own site is that they should use web "proper" services, such as those provided by the Respondent and those whom he recommends. This clearly establishes the commercial element that is required by par 4(b)(iv).

The Panel is inclined to the view that this ground is also made out, given the Respondent’s registration of the domain name <hotrnail.com>. Once again, his explanations for this other registration appear too ingenuous.

In the light of the above, the Panel finds that the allegations of registration and use in bad faith are made out.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names be transferred to the Complainant.