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January 25, 2011 / Nate Harris

Magner’s Cider Loses Battle of Band Over magnersessions.com

Summary of Bulmers Limited and Wm. Magner Limited v. (FAST-12785240) magnersessions.com 1,500 GB Space and 15,000 Monthly Bandwidth, Bluehost.Corn INC/Jason LaValla

(WIPO Case No. D2010-1885)

Filed: November 5, 2010; Decided: January 17, 2011 (Panelist: James A. Barker)

Disputed domain name: <magnersessions.com>

magnersessions.com

The Parties

Complainants Bulmers Limited and Wm. Magner Limited (collectively, “Magner”) manufacture, market, and distribute hard cider beverages. Magner has used several marks incorporating the term MAGNER in connection with cider since 1999. As part of its promotional activities, Magner sponsors live musical performances, recordings of which it makes available for download at <magneririshsessions.com>.

Respondent Jason LaValla registered the disputed domain name on July 5, 2010. At the time of the complaint, the disputed domain pointed to a sparse site that referred to an album recorded by a bunch of friends. The site offered several songs for download.

On the date of the decision, a slightly more full explanation appeared on the site:

Wagner and Marty are two bands from Simsbury, CT. Back in high school, they wrote a lot of songs apart and played a lot of shows together. In 2009 they all reunited. Each brought their own songs, but they’re releasing this album as one band: “Magner.”

The site indicates that Mr. LaValla is one of the friends (he performs vocals & guitar, and has a sweet mustache to boot). Magner sent a letter to Mr. LaValla requesting that he voluntarily transfer the domain, but apparently received no response.

Identical or Confusingly Similar

The disputed domain contains Magner’s mark MAGNER plus the descriptive word SESSIONS, which Magner has used in connection with its music download site. Therefore, the Panel finds that the disputed domain name is confusingly similar to Magner’s mark.

Rights or Legitimate Interest

Though the Panel finds that Magner has made out a prima facie case that Mr. LaValla lacks rights or legitimate interest in the disputed domain, it also finds that “there is sufficient evidence to plausibly support” Mr. LaValla’s case. As the Panel puts it:

The difficulty with [Magner's] argument is that the Respondent has put forward a plausible reason for his registration and use of the disputed domain name. The evidence of the Respondent’s website also supports his story. That website provides music for downloading, which is apparently music of an amateur band with which the Respondent claims a relationship. The website otherwise does not suggest to the Panel that there is an ulterior motive behind it. It is not, in this Panel’s experience, typical of a website established to exploit the value of a trademark.

[ . . . ]

it appears that the Respondent is making a genuine use of the disputed domain name in connection with the promotion of a band with which he is associated. The Respondent’s website appears to relate to only one band which the Respondent claims is called “Magner”. The word “sessions” is commonly associated with the recording or rehearsal of live music. The Respondent’s website relates only to that band, and music is legitimately available via the website. Usually, this Panel would be prepared to accept that a website is what it purports to be. To do otherwise would require a finding that the Respondent has engaged in a fraud. In summary proceedings of this kind, with limited opportunity for investigation and examination, is reluctant to make such a finding without some direct evidence to support it.

Though the Panel notes that there is some uncertainty about when the “Mary+Wagner=Magner” explanation appeared on the website, there is just not enough evidence to find that Mr. LaValla lacks rights or legitimate interest in the disputed domain name.

Registered and Used in Bad Faith

The Panel doesn’t dispute Magner’s argument that Mr. LaValla, in registering the disputed domain, would have “inevitably” come across the disputed domain, or that he must have been aware of Magner’s mark. Even if true, however, “[t]rademark rights do not create an absolute monopoly and therefore more than knowledge must be shown to prove bad faith.” Reliant Energy, Inc. v. Robert Wiggins (WIPO Case No. D2001-0769).

Decision

The complaint is denied.

Commentary

I think this case could have gone either way, in that each party’s version of the facts seem plausible. Panelist James A. Barker does a fantastic job of weighing the facts, applying the law, and, in my view, arriving at the right outcome in a close case.

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