In the recent domain name dispute decision of Diageo Ireland v. Guinnessclaim (WIPO D2009-0679, July 26, 2009), a single member Panel was faced with a dispute over the domain www.guinnessclaim.com. Complainant is the well dark beer GUINNESS. It owns multiple trademark registrations across the globe and maintains a web site at www.guinness.com. The disputed domain was registered in September 2008. Complainant contended it was used for scam email messages, which included telling recipients they had won a prize. Respondent failed to respond to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove all of the following: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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.

The Panel provided a very short decision. First the Panel found that Complainant satisfied the first element, noting the disputed domain contained all of Complainant’s mark with the addition of the non-distinctive term “claim” at the end.

The Panel next addressed the second element, of rights or legitimate interests. The Panel found that Complainant met its prima fcie burden by alleging the following:

Respondent owns no trademark or trade name registrations for the disputed domain name; is not commonly known by the name; has not used the domain name in a manner that would provide Respondent with rights to the domain name; and is not licensed or authorized by Complainant to use Complainant’s GUINNESS marks. Complainant further alleges that Respondent’s use of the disputed domain name in association with a scam e-mail scheme is intended “to make the receivers think that the email comes from the Complainant or at least someone related to the Complainant” and that Respondent profits from this illegitimate confusion.

The Panel found that since the domain was held passively and used for an email scam all inferences were drawn in favor of Complainant. Since Respondent failed to respond, the Panel found the Complainant proved up the second element.

Moving to the final element, bad faith, the Panel noted that the registration of the domain was long after Complainant established its rights in the mark GUINNESS. The Panel found that the use of the domain for an email scam was bad faith and was done with actual knowledge of the mark in an effort to profit from confusion.

Ultimately, the Panel found Complainant satisfied all elements and ordered the domain be TRANSFERRED.