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Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic Case No. D2 !


". &he 'arties The Complainant is Arthur Guinness Son & Co. (Dublin) Limited of St. Jamess Gate Bre er!" Dublin #" $reland" represented b! %r. Dan &nra'ht(%oon! of SJ Ber in & Co. of London. The )espondent is %r. De*an %a+esi+ of ,-. Carmi+hael Suite ,//" %ontreal" 0C 123 4B5" Canada" representin' himself.

2. &he Domain Name and (e)istrar The disputed domain name is 6'uiness.+om7 and the )e'istrar is 8et or9 Solutions" $n+." of 1erndon" :ir'inia" ;SA.

*. 'rocedural +istor, This is an administrati<e pro+eedin' pursuant to the ;niform Domain 8ame Dispute )esolution =oli+! (>the =oli+!>) adopted b! the $nternet Corporation for Assi'ned 8ames and 8umbers (>$CA88>) on Au'ust 2." 4---" in a++ordan+e ith the )ules for the =oli+!" appro<ed b! $CA88 on ?+tober 2@" 4---" (>the )ules>) and the Supplemental )ules for the =oli+! (>the Supplemental )ules>) of the A$=? Arbitration and %ediation Center (>the Center>). The Complaint as re+ei<ed b! the Center b! email on De+ember 5" 2///" and in hard +op! on De+ember B" 2///. The Center a+9no led'ed re+eipt on De+ember B" 2/// and that da! sou'ht re'istration details from the )e'istrar. ?n De+ember 42" 2/// the )e'istrar +onfirmed that the )espondent is the re'istrant" the )e'istrars 5./ Ser<i+e A'reement ( hi+h in+orporates the =oli+!) is in effe+t and that the status of the disputed domain name is >a+ti<e.> ?n De+ember 4," 2///" the Center satisfied itself that the Complainant had +omplied ith all formal reCuirements" in+ludin' pa!ment of the pres+ribed fee. ?n De+ember 4@" 2///" the Center printed out a +op! of the disputed Aebpa'eD formall! notified the )espondent b! postE+ourier" faF and email of the Complaint and of the +ommen+ement of this administrati<e pro+eedin' and sent +opies to the Complainant" the )e'istrar and $CA88. The formal date of the +ommen+ement of the pro+eedin' as a++ordin'l! De+ember 4@" 2///. The last da! spe+ified in the noti+e for a response as Januar! 2" 2//4. ?n De+ember 4#" 2/// the Center a++eded to a reCuest from the )espondent for an eFtension of time for the )esponse until Januar! -" 2//4. ?n Januar! -" 2//4 the )espondent filed a )esponse b! email and on Januar! 44" 2//4 in hard+op!. $ts re+eipt as a+9no led'ed b! the Center on Januar! 4/" 2//4. ?n Januar! 4." 2//4" the Center notified the parties of the appointment of Alan L. Limbur! as a sin'le( member panelist" %r. Limbur! ha<in' submitted a Statement of A++eptan+e and De+laration of $mpartialit!. The Center nominated Januar! 2-" 2//4" as the date b! hi+h" absent eF+eptional +ir+umstan+es" the panel is reCuired to for ard its de+ision to the Center. The lan'ua'e of the pro+eedin' as &n'lish.

The panel is satisfied that the Complaint as filed in a++ordan+e ith the reCuirements of the )ules and Supplemental )ulesD pa!ment as properl! madeD the panel a'rees ith the Centers assessment +on+ernin' the Complaints +omplian+e ith the formal reCuirementsD the Complaint as properl! notified in a++ordan+e ith para'raph 2(a) of the )ulesD the )esponse as filed ithin the eFtended time spe+ified b! the Center in a++ordan+e ith the )ules and the administrati<e panel as properl! +onstituted. ?n Januar! 42" 2//4" the Complainant submitted a ><oluntar! response> to the )espondents response and on Januar! 45" 2//4 the )espondent submitted its o n ><oluntar! response> to the Complainants >+ounter(response>. The panel de+lines to ha<e re'ard to either of these supplementar! submissions. $n Goldline International, Inc. v. Gold Line, (A$=? Case 8o. D2///(4454) the ,(member panel saidG >The Complainant submitted a )epl! to the )esponse. The )ules for ;niform Domain 8ame Dispute )esolution =oli+! (>)ules>)" thou'h" do not pro<ide the parties ith an! ri'ht to file replies on their o n <olition. )ather" )ule 42 pro<ides that onl! the Panel ma! reCuest further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies" Case 8o. D2///(/4.. (A$=? June 4" 2///). 8e<ertheless" Complainants routinel! submit replies" hi+h not onl! is usuall! a aste of part! resour+es (not to mention the resour+es of the Center and =anelists)" but also dela!s the final resolution of the pro+eedin'" hi+h undermines the =oli+!s promise of rapid" +ost effe+ti<e dispute resolution. CRS Technology Corp. v. CondeNet, Inc." Hile 8o. HA///2////-,5@B (8AH %ar+h 2B" 2///). Hor these reasons" man! =anels ha<e held that additional submissions are inappropriate eF+ept in the rarest of +ir+umstan+es" su+h as dis+o<er! of e<iden+e not reasonabl! a<ailable to the submittin' part! at the time of its initial submission" or ar'uments b! the respondent that the +omplainant +ould not reasonabl! ha<e anti+ipated. Id. Plaza Operating Partners, Ltd. Doc!"ent Technologies, Inc. v. International #lectronic Co""!nications, Inc. " Case 8o. D2///(/2B/ (A$=? June ." 2///)D $niversal City St!dios, Inc. v. G.%.&. #nterprises" Case 8o. D2///(/@4. (A$=? June 2-" 2///)D 'al()art Stores, Inc. v. Richard )acLeod" Case 8o. D2///(/..2 (A$=? September 4-" 2///)D #lectronic Co""erce )edia, Inc. v. Taos )o!ntain" Hile 8o. HA///#////-5,@@ (8AH ?+tober. 44" 2///)D Par*!"s Christian Dior S.%. v. +adore" Case 8o. D2///( /-,# (A$=? 8o<ember ," 2///)D ,iz Co""!nications, Inc. v. Reds!n d-a ....ani"erica.co" " Case 8o. D2///(/-/5 (A$=? De+ember 22" 2///). Be+ause the )epl! in this +ase presents neither pre<iousl!( una<ailable e<iden+e nor authorit!" it is stri+9en and the =anel has disre'arded it in its entiret!>. $n this +ase the +omplainant has not +ontended that it has dis+o<ered e<iden+e not reasonabl! a<ailable to it at the time of its Complaint" nor does the )esponse appear to ha<e raised ar'uments that the +omplainant +ould not reasonabl! ha<e anti+ipated. There appear to be no other eF+eptional +ir+umstan+es that ould *ustif! admission of a supplementar! submission from the Complainant" still less an! response to it from the )espondent. $t +ould be ar'ued that sin+e both parties filed their unsoli+ited submissions before the panel as appointed" dela! is not an issue in this +ase. 1o e<er" to re+ei<e those submissions simpl! for that reason ould undermine the intent of the )ules.

-. .actual /ac0)round $n Dublin" $reland" the Complainant (a subsidiar! of Dia'eo pl+) has bre ed and sold beer under the name and trademar9 G;$88&SS sin+e 4B.@. ;nder that name it has eFported beer around the orld sin+e 4B.- and its beer is no bre ed in 5/ +ountries and sold in 45/. ApproFimatel! 4/ million 'lasses are pur+hased dail!. G;$88&SS beer has #/I of the >bla+9 beer> or stout se+tor of the orld mar9et. $t is hea<il! promoted and ad<ertised.

The trademar9 G;$88&SS has been used in Canada sin+e 4-// and re'istered in Canada in respe+t of stout and beer sin+e 4-.@ ()e'. 8o. T%A4,@#2B) and in other +ountries" either alone or in +ombination ith other ords. The Complainant and other members of the >Guinness Group> operate a Aebsite at httpGEE .'uinness.+om" a++essible from an! here in the orld and +ontainin' information about the G;$88&SS brand. The )espondent" ha<in' an address in Canada" re'istered the domain name 6'uiness.+om7 in Hebruar!" 4--- and has sin+e been operatin' a Aebsite at that address hi+h" on April 4" 2///" the )espondent des+ribed as >dedi+ated to the dis+ussion of home bre in' and sports> J)esponse" AnneF AK. Sin+e the Complainant first +omplained about the )espondents use of the disputed domain name" the site has broadened to be+ome a >dis+ussion board> on <arious topi+s" in+ludin' spirits" ru'b!" so++er" the $rish and Celti+ +ultures" as ell as a free(form forum" and <arious dis+laimers ha<e been added to disasso+iate the site from the Complainant.

1. 'arties2 Contentions A. Com3lainant (i)hts The Complainant has +ommon la as ell as re'istered trademar9 ri'hts in the name G;$88&SS" hi+h is famous. 4dentit, and con5usin) similarit, The disputed domain name +ontains a ord hi+h is +onfusin'l! similar to the +ommon la )e'istered trademar9 G;$88&SS. 4lle)itimac, The Complainant has not authoriLed the )espondent to use the trademar9 G;$88&SS nor to re'ister nor use a domain name in+orporatin' that mar9. Gi<en the orld ide fame and notoriet! of the mar9 G;$88&SS" no trader ould +hoose the domain name 6'uiness.+om7 unless to +reate a false impression of asso+iation ith the Complainant or its beersD to attra+t business from the Complainant or misleadin'l! to di<ert the publi+ from the Complainant to the )espondent. /ad .aith B! <irtue of the idespread use and reputation of the G;$88&SS trade mar9" members of the publi+ in Canada and around the orld ould mista9enl! belie<e that the re'istrant of the 6'uiness.+om7 domain name as the Complainant or as in some a! asso+iated ith the Complainant. Gi<en the idespread use and notoriet! of the famous G;$88&SS mar9" the )espondent must ha<e been a are that in re'isterin' the domain name he as misappropriatin' the <aluable intelle+tual propert! of the o ner of the G;$88&SS trademar9. and

The )espondents re'istration of the 6'uiness.+om7 domain name has also pre<ented the Complainant from re'isterin' a domain name hi+h +orresponds to the Complainants trademar9s +ontrar! to para'raph @(b)(ii) of the =oli+!. The )espondent has intentionall! attempted to attra+t" for +ommer+ial 'ain" $nternet users to the ebsite b! +reatin' a li9elihood of +onfusion ith the trademar9s in brea+h of para @(b)(i<) of the =oli+!. $n a telephone +on<ersation ith the Complainants Canadian la !ers" Beres9in & =arr in %ar+h 2///" the )espondent a+9no led'ed that some people <isited his site pre+isel! be+ause of the presen+e of the ord >'uiness>. $t as eFplained to him that this as one of the reasons the Complainant ob*e+ted to his re'istration of 6'uiness.+om7 and that he as not entitled to benefit from the 'ood ill of the Complainant in this a!. The )espondent left a telephone messa'e statin' that he ould dis+uss his options ith +ounsel. Soon after" Beres9in & =arr re+ei<ed a telephone messa'e from a ne spaper *ournalist in California inCuirin' about the >dispute> bet een the Complainant and the )espondent. SubseCuentl! the )espondent said that the *ournalist friend had made some referen+e to this dispute in a +hat room on the $nternet. This as a +lear attempt b! the )espondent to eFert eFternal pressure on the ne'otiation pro+ess and an indi+ation that the )espondent had little intention of +o(operatin' ith the Complainant. SubseCuentl!" the )espondents la !ers +onta+ted Beres9in & =arr to su''est that if suffi+ient +onfusion +ould be sho n" the sum of CA8M5"/// be paid to the )espondent to +han'e the domain name ( a +lear attempt to benefit finan+iall! from the +onfusion +reated b! the re'istration of the domain name (+ontrar! to para'raph @(b)(i) of the =oli+!). 1o e<er" the )espondents primar! moti<e is to in+rease the number of <isitors to his site" ith the ob*e+ti<e of translatin' this traffi+ into +ommer+ial 'ain throu'h ad<ertisement re<enue" sin+e the homepa'e for 6'uiness.+om7 +ontains ad<ertisin' banners. The )espondent ill ne<er be +apable of usin' the disputed domain name for a le'itimate purpose as the notoriet! of G;$88&SS is su+h that members of the publi+ ill al a!s assume that there is an asso+iation bet een the )espondent and the Complainant" andEor bet een the )espondent and the G;$88&SS trade mar9. /. (es3ondent The Aebsite 6 .'uiness.+om7 is a dis+ussion board. All +ontent" ith the eF+eption of 'raphi+al elements and site stru+ture" is user(pro<ided. 8o site element" be it teFt or 'raphi+al" depi+ts" des+ribes or refers to the Complainants ares or ser<i+es. 4dentit, or con5usin) similarit, The )espondent is not infrin'in' the Complainants trademar9s as he is not sellin' similar ares or ser<i+es" hi+h ould infrin'e the Complainants trademar9s" in the same 'eo'raphi+al areas here the Complainant operates. The fame of the trademar9 G;$88&SS is not uni<ersal. ?ther G;$88&SS(related trade mar9s eFist in different 'eo'raphi+al re'ions" sellin' different ares and ser<i+es. Hor eFampleG( ( >The Guinness Aorld Boo9 of )e+ords> (6 .'uinnessre+ords.+om7)" re'istered inter alia for the ser<i+e of pro<idin' edu+ation" entertainment and re+reation throu'h the medium of museums and eFhibitions as ell as for the ares of boo9s and periodi+al publi+ations. ( >The Guinness Group> (6 .'uinness'roup.+om7)" hi+h pro<ides $nternet business +onsultin'.

( >$n<este+ Guinness Hli'ht> (6

.'ffunds.+om7)" hi+h pro<ides in<estment ser<i+es.

The ord >G;$88&SS>" in the mind of +onsumers" is not automati+all! asso+iated ith >Guinness Beer> nor the Complainants trademar9s. Therefore the domain name does not infrin'e on the Guinness Beer related trademar9s. Le)itimac, The )espondent is ma9in' a >le'itimate non+ommer+ial or fair use of the domain name" ithout intent for +ommer+ial 'ain to misleadin'l! di<ert +onsumers or to tarnish the trademar9 or ser<i+e mar9 at issue>. &<en thou'h there are re<enues 'enerated b! the ad<ertisin' banners on the site" these re<enues are modest and ser<e onl! to +o<er the hostin' and maintenan+e +osts of the site and are not for personal 'ain. There are no +ommer+ial a+ti<ities related to the sale of bona fide produ+ts or ser<i+es on the site. Also" the )espondent has not at an! time put the domain on sale. As e<iden+e of the )espondents la+9 of intent to di<ert +onsumers" a noti+e prominentl! lo+ated at on the top of e<er! pa'e of the site states the follo in'G >%TT#NTION/ This .e- site is in no .ay a**iliated .ith G!inness Ltd. 0"a1ers o* G!inness &eer2 or the G!inness &oo1 o* 'orld Records. G!inness Ltd., and the G!inness &oo1 o* 'orld Records, neither endorse nor are a**iliated .ith g!iness.co" in any .ay. This .e- site is solely dedicated to the disc!ssion o* the vario!s incl!ded topics.> Hurther" a dis+laimer at the bottom of e<er! pa'e (....g!iness.co"3disclai"er.ht"l)" and at the top of the user HreCuentl! As9ed 0uestions (HA0) pa'e (....g!iness.co"3!--3*a4.ht"l)" re(iterates this teFt as ell as outlinin' the terms of use of the site" and adds the follo in'G >G!inness &eer and the G!inness &oo1 o* 'orld Records are registered trade"ar1s and service "ar1s o* the respective holders.> The )espondent is usin' the domain name ith the belief that he is ma9in' >fair use> of this domain" a++ordin' to the Lanham A+t" Se+tion ,,(b)(@)" hi+h statesG >That the !se o* the na"e, ter", or device charged to -e an in*ringe"ent is a !se, other.ise than as a "ar1, o* the party5s individ!al na"e in his o.n -!siness, or o* the individ!al na"e o* anyone in privity .ith s!ch party, or o* a ter" or device .hich is descriptive o* and !sed *airly and in good *aith only to descri-e the goods or services o* s!ch party, or their geographic origin. > The )espondents site +learl! states that the site is >solel! dedi+ated to the dis+ussion of the <arious in+luded topi+s>" hi+h +onstitutes" in the )espondents belief and 'ood faith" >fair use>" for it is not used as a mar9. Hurther" nearl! all +ontent is user pro<ided. The )espondent is not tr!in' to tarnish the trade mar9s o ned b! the Complainant" as ma! be itnessed b! the tasteful" and unrelated to Guinness Beer" +ontent of the site. /ad 5aith The )espondent did not a+Cuire the domain to disrupt or +ommer+iall! harm the business of the Complainant" nor is he a +ompetitor of the Complainant. &<er! effort has been made to eliminate the li9elihood of an! possible mista9en asso+iation bet een the site and the Complainant" namel! b! the prominent noti+e and dis+laimer throu'hout the site. Hurther" the onl! mention of 6'uiness.+om7" the domain" are lin9s to the home pa'e of the site" and is onl! intended to +onfirm to <isitors that the! ha<e

a++essed the +orre+t Aorld Aide Aeb address. Also" the fa+t that the noti+e states that >This eb site is solel! dedi+ated to the dis+ussion of the <arious in+luded topi+s> and the fa+t that the dis+ussion 'roups do not mention an! of the Complainants trade mar9s or ser<i+e mar9s" further redu+e the li9elihood of +onfusion. The )espondent did not a+Cuire the domain name in order to pre<ent the Complainant from refle+tin' his trademar9s or ser<i+e mar9s in a +orrespondin' domain name. The Complainant did not pro<e that the )espondent has en'a'ed in a pattern of su+h +ondu+t" as per =ara'raph @(b)(ii) of the =oli+!. The )espondent did not a+Cuire the domain name to +onfuse $nternet users ith the Guinness Beer trade mar9" nor for the sale of ares or ser<i+es" and that the onl! re<enues 'enerated are from ad banners hi+h are not used for personal 'ain. As to the Complainants statement that the )espondent made a >+lear attempt ... to eFert eFternal pressure on the ne'otiation pro+ess N>" upon re+ei<in' the +all from Beres9in & =arr" the )espondent immediatel! attempted to find +ounsel usin' t o sour+esG immediate friends and famil!" and la (related ne s'roups (not +hat rooms). ?ne of the )espondents friends +onta+ted the Californian *ournalist" ho subseCuentl! +onta+ted Beres9in & =arr. This as done ithout the )espondents 9no led'e. The )espondent did not at an! time ha<e a relationship ith the *ournalist from California" nor did he en+oura'e said *ournalist to +onta+t Beres9in & =arr. The )espondent as see9in' to find a +ounselor ith domain name and trade mar9 eFperien+e b! postin' on April 4" 2///" ithout pre*udi+e" a reCuest for help in la (related ne s'roups. At no time did he intend to eFert eFternal pressure on the ne'otiations" but as rather see9in' le'al help. &ither the Complainant misinterpreted the +ommuni+ations or sub*e+ti<e interpretation is bein' used to stren'then the Complaint. As further proof of the )espondents illin'ness to +o(operate ith the Complainant to rea+h a +onstru+ti<e a'reement" the )espondents proposedG ( The <oluntar! addition of more noti+es and dis+laimers on the site. ( The <oluntar! +han'es to si'nifi+antl! modif! ho the +ontent is presented. ( The offer to the Complainant to monitor postin's and e(mail traffi+ ori'inatin' from the site" ith the 'oal of pre+isel! measurin' the effe+t of +han'es to distan+e the site from the Complainant. ( The offer to +han'e the site name" if mutuall! a'reed upon le<els of mista9en asso+iation from postin's and e(mails are eF+eeded. $n this +ase" a reasonable transition dela! has been proposed" as ell as +ompensation to +o<er the +osts of re(desi'nin' the site. At no time as the )espondent see9in' to benefit finan+iall! from this proposed a'reement" nor did he offer to sell the domain name. The primar! moti<e of the site is dis+ussion" not +ommer+ial 'ain. As to the Complainants assertions re'ardin' the automati+ asso+iation of the domain name ith Guinness Beer" this is spe+ulati<e. See the )espondents ar'uments on the G;$88&SS alle'ations of fame and on the site noti+es. (everse Domain +ijac0in) This Complaint has been made in bad faith and +onstitutes re<erse domain hi*a+9in' for the follo in' reasonsG

( The )espondents site has been in operation sin+e 4--- ithout in+ident" and the timin' of this Complaint +oin+ides ith the +on+lusion of pre<ious su++essful similar Complaints a'ainst other domain holders. This indi+ates that the Complainant is on an a+ti<e +ampai'n to 'ain +ontrol of domain names per+ei<ed to be similar to their trade mar9s" and that the Complainant is attemptin' to stren'then its +ase a'ainst the le'itimate fair use of the domain b! the )espondent. ( The Complainant attempts to +reate an impression" ith misleadin' e<iden+e" that the )espondent did not ish to +o(operate ith the Complainant durin' pre<ious +ommuni+ations" su+h as the referen+e to >eFternal pressure> on the pre<ious attempt at ne'otiation bet een both parties" the belief that the )espondent see9s to personall! 'ain from the domain name" the misinterpretation of the +onstru+ti<e site modifi+ation andEor relo+ation proposal b! the )espondent as reCuested b! the Complainant and the la+9 of a response from the Complainant to this proposal. ( The Complainant attempts to sho that the +ommuni+ations ith the )espondent ere +ourteous. The telephone +on<ersation des+ribed as instead per+ei<ed b! the )espondent to be rather threatenin'" and left no doubt in his mind that the Complainant ould be satisfied b! nothin' less than the transfer of the domain name to the Complainant. ( The Complainant omitted pertinent +ommuni+ations bet een the )espondent and the Complainant hi+h demonstrate the threatenin' and intransi'ent tone of the Complainant" indi+atin' that the sole purpose and intent of the dis+ussion as for the )espondent to relinCuish +ontrol of the domain name to the Complainant. ( The Complainant also omitted pertinent +ommuni+ations bet een the )espondent and the Complainant hi+h demonstrate that the )espondent as a+ti<el! see9in' +ounsel" +ontrar! to the Complainants alle'ations. ( The sites a+ti<ities" as des+ribed herein" do not +ommer+iall! affe+t or harm the Complainants orld ide business. The )espondent therefore finds the moti<es of the Complaint to be in Cuestion.

#. Discussion and .indin)s To Cualif! for +an+ellation or transfer" a Complainant must pro<e ea+h element of para'raph @(a) of the =oli+!" namel!G ( the disputed domain name is identi+al or +onfusin'l! similar to a trademar9 or ser<i+e mar9 in hi+h the Complainant has ri'htsD and ( the )espondent has no ri'hts or le'itimate interests in respe+t of the domain nameD and ( the disputed domain name has been re'istered and are bein' used in bad faith. (i)hts There is no dispute that the Complainant has ri'hts in the trademar9 G;$88&SS. 4dentit, or con5usin) similarit, $t has been de+ided in man! +ases under the =oli+! that >essential> or ><irtual> identit! is suffi+ient for the purposes of the =oli+!G see The Stanley 'or1s and Stanley Logistics, Inc v. Ca" Cree1. Co., Inc " (A$=? Case D2///(/44,) and No1ia Corporation v. No1iagirls.co" (A$=? Case D2///(/4/2).

The suffiF >.+om> is of no si'nifi+an+e. See The 6or.ard %ssociation, Inc., v. #nterprises $nli"ited (8AH +ase HA///#////-5@-4" ?+tober ," 2///)G >$t should be noted that hen a trademar9 is +omposed in hole or in part of a domain name" neither the be'innin' of the ;)L" nor the TLD (.+om) ha<e an! sour+e indi+atin' si'nifi+an+e. Those desi'nations are merel! de<i+es that e<er! $nternet site pro<ider must use as part of its address>. This applies eCuall! here a domain name is +omposed in hole or in part of a trade mar9. $n Diageo plc v. +ohn 7!ccarini, Individ!ally and t3a C!pca1e Patrol" (A$=? Case D2/// O /--.)" the learned panelist saidG >$n the absen+e of an! )esponse from the )espondent" this Administrati<e =anel a++epts that in the present state of de<elopment of the *urispruden+e in this area" in +ases here the administrati<e panel is bein' 'uided b! the prin+iples de<elopin' in the la s of the ;SA" the appropriate test to appl! is the multi( fa+tor test set forth in the de+ision of the ;nited States Court of Appeals for the 8inth Cir+uit in %)6 Inc. v. Slee1cra*t &oats" 5-- H.2d ,@4 (-th Cir. 4-B-). $n doin' so" this Administrati<e =anel is +ons+ious that this test ma! not be entirel! suited to the determination of these issues as +an be seen from the diffi+ulties eFperien+ed b! this Administrati<e =anel in its appli+ation (infra). 8onetheless it is the test that has been applied in a number of +ases here there has been a >(su+9s> element. Hurthermore" in the present +ase the Complainant has submitted that this is the appropriate test to appl! and the )espondent has made no submissions on the point. $n the +ir+umstan+es" this Administrati<e =anel ith some reser<ations" a++epts that this is the appropriate test to appl!>. This is not a +ase in hi+h it is appropriate to appl! prin+iples of ;S trademar9 la G the parties are lo+ated in $reland and Canada. Hor the purposes of this dispute" the Complainant has submitted to the *urisdi+tion of the +ourts of Canada. The onl! +onne+tion ith the ;SA is the )e'istrar. This is insuffi+ient to attra+t the appli+ation of ;S la to this +ase. A++ordin'l!" this panel re'ards the appropriate test for +onfusin' similarit! to be a +omparison of the domain name and the mar9" follo in' Gate.ay, Inc. v. Pi8elera.co", Inc. 0*or"erly Gate.ay )edia Prod!ctions, Inc.2 (A$=? Case D2///(/4/-) and The 6or.ard %ssociation, Inc.,(supra). $n terms of si'ht and sound" the domain name 6'uiness.+om7 is <irtuall! identi+al to the Complainants G;$88&SS name and mar9. &F+ept for the missin' >8> in the domain name and the in+onseCuential suffiF >.+om>" the t o are identi+al. A++ordin'l!" if an $nternet user see9in' to +onta+t the Complainant at its Aebsite ere to misspell or mist!pe the 6 .'uinness.+om7 domain name b! lea<in' out an >8>" that person ould be dire+ted un9no in'l! to the )espondents ebsite. The +lose misspellin' at issue here is +onfusin'l! similar to the Complainants mar9. See" e.' ." #ncyclopedia &ritannica, Inc. v. +ohn 7!ccarini and The C!pca1e Patrol a31a Co!ntry 'al1 a313a C!pca1e Party" (A$=? Case D2///(/,,/)D O8ygen )edia, LLC v. Pri"ary So!rce" (A$=? Case D2///( /,.2). Be+ause the Complainants trademar9 is so ell 9no n" $nternet users findin' 6'uiness.+om7 on sear+h en'ines or else here are li9el! to be misled into thin9in' the Complainant is the re'istrant or is other ise asso+iated ith the disputed domain name or" if not misled" at least +onfused into onderin' hether this is so. The )espondent does not den! that the disputed domain name is +onfusin'l! similar to the G;$88&SS trademar9. )ather he sa!s there is no trademar9 infrin'ement be+ause his site does not sell similar ares in the same 'eo'raphi+al sphere as the Complainant. But there is an important distin+tion bet een the domain name on the one hand and the Aebsite on the other. The use to hi+h the site is put has no bearin' upon the issue hether the domain name is +onfusin'l! similar to the trademar9" be+ause b! the time $nternet users arri<e at the Aebsite" the! ha<e alread! been +onfused b! the similarit! bet een the

domain name and the Complainants mar9 into thin9in' the! are on their a! to the Complainants Aebsite. The panel also adopts the reasonin' in $n Diageo p.l.c. v. +ohn 7!ccarini (A$=? Case D2///(/5@4)G >The Complainant has re'istered the domain name 6'uinnes.+om7. This domain name is identi+al to Complainants trademar9 Guinness" eF+ept thatG (4) the domain name adds the 'eneri+ top(le<el(domain >.+om> and (2) the elimination of the letter >s>. >The addition of the 'eneri+ top(le<el(domain ('TLD) .+om is ithout le'al si'nifi+an+e in determinin' similarit!. >The elimination of the letter >s> bet een >'uinnes> and >Guinness> does not si'nifi+antl! affe+t the <isual impression made b! the domain name as +ompared ith the mar9" and does not affe+t the pronun+iation of the domain name as +ompared ith the mar9. The =anel therefore +on+ludes that the domain name is identi+al or +onfusin'l! similar to a trademar9 or ser<i+e mar9 in hi+h the Claimant has prior eF+lusi<e ri'hts.> The panel finds that the disputed domain name 6'uiness.+om7 is essentiall! identi+al and +onfusin'l! similar to the Complainants trademar9 G;$88&SS. The Complainant has established this element. 4lle)itimac, =ara'raph @(+) of the =oli+! sets out" ithout limitation" +ir+umstan+es hi+h" if pro<ed" establish a re'istrants ri'hts or le'itimate interests to a disputed domain name. The Complainant has the onus of proof on this" as on all issues. The Complainant has not authoriLed the )espondent to use the G;$88&SS name and mar9 nor to in+lude that mar9 in an! domain name. The )espondent has not asserted that he is +ommonl! 9no n b! the disputed domain name and has offered no eFplanation of his +hoi+e of that name. Si'nifi+antl!" the )espondent has not asserted that he as una are of the Complainants mar9 hen he re'istered the disputed domain name. 1e has not denied that he a+9no led'ed to the Complainants la !ers that some people <isited his site pre+isel! be+ause of the presen+e of the ord >'uiness>. 1is des+ription in April" 2/// of the Aebsite as >dedi+ated to dis+ussion of beer and sports> re<eals his a areness of the G;$88&SS mar9 and its stren'th in relation to beer. The )espondent points to the dis+laimers on his Aebsite as e<iden+e of his >la+9 of intent to di<ert +onsumers>. But b! the time +onsumers 'et to read the dis+laimers" the domain name has alread! di<erted them from the Complainant. The panel finds the use of a domain name +omprisin' a misspellin' of the Complainants mar9 pro<es the )espondents intent to di<ert +onsumers. The panel finds that the )espondent re'istered the domain name ith the fame of the G;$88&SS mar9 in his mind and ith the intention of di<ertin' to his site $nternet traffi+ intended for the Complainant" primaril! to stimulate interest in his dis+ussion 'roup but also for the purpose of 'eneratin' re<enues from the ad<ertisin' banners on his site. Despite the +laimed modest! of those re<enues" the panel finds su+h use is not non+ommer+ial. &<en if it ere" the panel ould find that use neither le'itimate nor fair. The +ir+umstan+es des+ribed in subpara'raph @(+)(iii) of the =oli+! are not present. 1a<in' attra+ted $nternet traffi+ to his site b! tri+9er!" the )espondent +annot resort to dis+laimers at the Aebsite" ho e<er eFpli+it" nor to >tasteful +ontent>" to +lothe the domain name ith le'itima+!. See #stee

La!der Inc. v. estela!der.co", estela!der.net and +e** 9anna, (A$=? Case D2///(/#.-" September 25" 2///)G >The fa+t that the users" on+e so di<erted or attra+ted" are +onfronted ith numerous dis+laimers does not +ure the initial and ille'itimate di<ersion>. Aithout disputin' the fame of the Complainants mar9" the )espondent points to others ho use the name G;$88&SS in +onne+tion ith their tradin' a+ti<ities" in order to +ast doubt upon the uni<ersalit! of that fame. Assumin' that the Complainant and others" separatel!" ha<e 'ood ill in their respe+ti<e fields in the same mar9" the )espondent does not sho a le'itimate interest in the disputed domain name if" instead of or in addition to see9in' to di<ert traffi+ from the Complainant" he intended to di<ert traffi+ from other le'itimate users of the mar9. The )espondent offers no eFplanation as to ho the >fair use> pro<ision of the Lanham A+t (as distin+t from subpara'raph @(+)(iii) of the =oli+!) has an! rele<an+e to this pro+eedin'" the parties to hi+h are in $reland and Canada. $n an! e<ent" his +ondu+t does not fit ithin an! of the possible +ir+umstan+es +ontemplated in se+tion ,,(b)(@) of that A+t hen all the ords of that se+tion are ta9en into a++ount. The panel finds that the Complainant has pro<ed that the )espondent does not ha<e an! ri'hts or le'itimate interests in the disputed domain name. /ad 5aith The e<iden+e does not establish +ir+umstan+es ithin subpara'raphs @(b)(i)" (ii) or (iii) of the =oli+!. As to subpara'raph @(b)(i<)" the panel adopts the follo in' passa'e from %lta,ista Co"pany v. Saeid :o"to-ian (A$=? Case D2///(/-,B)G >The use of misspellin's alone is suffi+ient to pro<e bad faith under para'raph @(b)(i<) of the =oli+! be+ause )espondent has used these names intentionall! to attra+t" for +ommer+ial 'ain" $nternet users to his ebsite b! ma9in' a li9elihood of +onfusion ith the Complainants mar9>. The panel has found that the domain name is bein' used both for a dis+ussion 'roup and for the +ommer+ial 'ain of 'eneratin' re<enue from ad<ertisin' banners on the )espondents site. The )espondent must ha<e 9no n of the Complainants famous mar9 hen he re'istered the disputed domain name and he did so in order misleadin'l! to di<ert traffi+ to his site from that of the Complainant. The panel finds the reCuirements of this subpara'raph satisfied. The +ir+umstan+es set out in para'raph @(b) of the =oli+! are not eFhausti<e. The! are to be ta9en as e<iden+e of both bad faith re'istration and bad faith use. &<en if" +ontrar! to the panels findin'" the respondents Aebsite ere non+ommer+ial" the panel ould ma9e the follo in' separate findin'sG ( the respondent re'istered the disputed domain name in bad faith be+ause he must ha<e 9no n of the Complainants famous mar9 before he re'istered the domain nameD and ( the domain name is bein' used in bad faith be+ause it is bein' used intentionall! to mislead $nternet users into <isitin' the )espondents Aebsite in the belief that the! are <isitin' the Complainants Aebsite. The panel a++epts that this last findin' is +ontrar! to the out+ome in Daniel + ;!ir1, Inc., v. )ichael +. )accini (Case HA ///.////-@-.@)" in hi+h the +omplaint as dismissed on the 'round that the )espondents dis+ussion site as non+ommer+ial. That de+ision did not +onsider hether elements of bad faith ere present other than those spe+ified in para'raph @(b) of the =oli+!D as hea<il! influen+ed b! the ;S Hirst Amendment ri'ht of free spee+h ( hi+h has no appli+ation in this +ase be+ause there are

no ;S parties) and appeared to disre'ard the fa+t that &ally Total 6itness 9olding Corporation v. 6a-er" 2- H.Supp. 2d 44.4 (;SDC C.D. Cal. 4--#) did not in<ol<e use of the =laintiffs trademar9 in the domain name O see 'al()art Stores, Inc., v. 'als!c1s and 'al"art P!erto Rico " (A$=? Case D2///(/@BB). A++ordin'l!" the Complainant has pro<ed that the domain name as re'istered and is bein' used in bad faith. (everse domain name hijac0in) The )espondent +laims the Complaint +onstitutes an attempt at domain name hi*a+9in'. This is defined in para'raph 4 of the )ules as >usin' the =oli+! in bad faith to attempt to depri<e a re'istered domain(name holder of a domain name.> See also para'raph 45(e) of the )ules. To pre<ail on su+h a +laim" )espondent must sho that Complainant 9ne of )espondents unassailable ri'ht or le'itimate interest in the disputed domain name or the +lear la+9 of bad faith re'istration and use" and ne<ertheless brou'ht the Complaint in bad faith. See" e.'." Sydney Opera 9o!se Tr!st v. Trilyn8 Pty. Ltd." (A$=? Case D2///( 422@) and Goldline International, Inc. v. Gold Line (A$=? Case D2///(4454). $n S"art Design LLC v. 9!ghes" (A$=? Case D2///(/--,) bad faith as found to en+ompass both mali+ious intent and re+9lessness or 9no in' disre'ard of the li9elihood that the )espondent possessed le'itimate interests. The +omplaint ha<in' been upheld" the )espondent +annot su++eed on this point.

6. Decision =ursuant to para'raph @(i) of the =oli+! and to para'raph 45 of the )ules" the panel reCuires the domain name" 6'uiness.+om7" to be transferred to the Complainant.