World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Grant & Sons Limited v. Securing Your Name

Case No. D2012-1664

1. The Parties

The Complainant is William Grant & Sons Limited of Dufftown, Banffshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom.

The Respondent is Securing Your Name of Newport Beach, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sailorjerryspicedrum.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2012.

The Center received email communications from an individual purporting to be the owner of the Domain Name on September 21 and 25, 2012, of which the Center acknowledged receipt.

The Center appointed Nicholas Smith as the sole panelist in this matter on September 27, 2012. 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.

4. Factual Background

The Complainant is an independent, family-owned Scottish company which distils

Scotch whisky and other selected categories of spirits. The Complainant was founded in 1887 in Scotland and remains the largest Scotch whisky distillers in family ownership. The Complainant produces and sells a spirit drink of Caribbean Rum blended with spices under the name “Sailor Jerry Spiced Rum”. In 2011-2012 the Complainant sold approximately 1.4 million bottles of Sailor Jerry Spiced Rum within the United States, where the Respondent is based.

The Complainant has held trade mark registrations for SAILOR JERRY (the “SAILOR JERRY Mark”) since at least 1999. The SAILOR JERRY Mark is registered in the United States, the UK and the European Community. The Complainant has also registered SAILOR JERRY RUM in the UK since 2003 the “SAILOR JERRY RUM Mark”).

The Domain Name <sailorjerryspicedrum.com> was created on January 13, 2010. The Domain Name redirects to a website (“Respondent’s Website”) located at “www.sailorjohnny.com”. The Respondent’s website appears to promote the Respondent’s fishing business. It makes a number of references to the Complainant’s Sailor Jerry Spiced Rum product, including “Sailor Jerry Spiced Rum is the choice of any sailor worth a shit, when im the captain all other pitiful rums go over board”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s SAILOR JERRY and SAILOR JERRY RUM Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the SAILOR JERRY and SAILOR JERRY RUM Marks. It owns trademark registrations worldwide for the SAILOR JERRY and SAILOR JERRY RUM Marks, including in the US, UK and the European Community. The Complainant’s registrations of the SAILOR JERRY and SAILOR JERRY RUM Marks pre-date the registration of the Domain Name.

The Domain Name consists of the SAILOR JERRY and SAILOR JERRY RUM Marks with the addition of the word “spiced”. The word "spiced" is entirely descriptive of and, in this context, exclusively referable to the Complainant's product. The Complainant notes that its product is frequently referred to as SAILOR JERRY SPICED RUM in advertisements and other third party articles.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “SAILOR JERRY SPICED RUM” or any similar trade mark. The Respondent is not an authorised user of the SAILOR JERRY and SAILOR JERRY RUM Marks nor is the Respondent authorised or affiliated with the Complainant.

The Domain Name was initially passively held, however, following a cease and desist letter sent from the Complainant to the Respondent, the Doman Name now directs to a site that promotes the Respondent’s charter fishing boat business. This does not amount to use of the Domain Name for a bona fide offering of goods and services, nor is the Respondent is making a legitimate noncommercial or fair use of the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the famous SAILOR JERRY and SAILOR JERRY RUM Marks. The Respondent initially used the Domain Name in bad faith by passively holding the Domain Name. The Respondent now uses the Domain Name to mislead customers who are searching for products produced by the Complainant by re-directing them to his own website at “www.sailorjohnny.com” to promote his personal business. This amounts to the registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent has not provided a formal response to the Complainant’s contentions but has made a number of communications with the Center. The effect of the communications is summarized in the section below.

6. Discussion and Findings

A. Communications from the Respondent

On September 21, 2012 and September 25, 2012 an individual known as John Saggese wrote to the Center about the present proceeding. The communication came from an address that was not listed as a contact detail on the WhoIs page for the Domain Name or provided to the Center by the Register.

Mr. Saggese indicated that he was the owner of the Domain Name. He had received notification from his registrar of the present proceeding. He also indicated that he had no other information pertaining to the present proceeding and had never received any communications from the Center or the Complainant.

The Panel has reviewed the case file and confirmed that the Center has complied with the formal requirements of the Policy and Rules and properly notified the Respondent of the Proceeding using all available contact details. The Domain Name is registered by Securing Your Name, which appears to be a privacy service for or pseudonym of the actual registrant. The registrant of a domain name has the obligation to maintain accurate contact details in order that they may receive communications relating to their domain name. At the same time, paragraph 10(b) of the Rules provides that “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.

In the circumstances, on October 1, 2012, the Panel issued a procedural order requesting that the Center forward a copy of the Complaint to Mr. Saggese at the e-mail address he used for communicating with the Center and that Mr. Saggese be given until October 15, 2012 to provide:

a) any Response to the Complaint;

b) any explanation of the relationship between himself and Securing Your Name; and

c) any explanation for the failure of Secure Your Name to forward the Complaint to Mr. Saggese.

On October 4, 2012, Mr. Saggese responded to the Center’s e-mail of October 1, 2012 with a short e-mail indicating that:

a) he had only recently been notified of the dispute because of out-dated contact information;

b) he never made any money with the Domain Name; and

c) he “bought it like some one buys a piece of art because I am a big fan of sailor jerry and the name was available”.

Mr. Saggese sought a further extension of time to respond to the Complaint, which was not granted. On October 10, 2012, Mr. Saggese sent an e-mail to the Center requesting further information about the present proceeding. On the same date, Mr. Saggese sent an e-mail to the Complainant’s representative exploring alternative settlement opportunities. The Complainant’s representative replied to Mr. Saggese, copying the Center, on October 11, 2012.

The Panel notes that Mr. Saggese has been aware of the present proceeding since at least September 21, 2012. Mr. Saggese was provided with the Complaint and the Notification of Complaint and Commencement of Administrative Proceeding documents on October 1, 2012. These documents contain detailed information about the Policy, the Rules and the broader UDRP decision making process. Furthermore, the Center maintains a website that provides ample information for respondents who wish to file a response in a UDRP proceeding. The Panel finds that Mr. Saggese has had a fair opportunity to present his case in this matter and the Panel will now issue a decision on the merits of the matter. Such a decision will have regard to Mr. Saggese’s communications with the Center between September 21, 2012 and October 10, 2012.

B. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the SAILOR JERRY and SAILOR JERRY RUM Marks, having registrations for the words “SAILOR JERRY” and “SAILOR JERRY RUM” as a trade mark in various countries around the world.

The Domain Name consists of the SAILOR JERRY Mark and the suffixes “spiced rum” and SAILOR JERRY RUM Mark and the word “spiced”. The words “spiced rum” is term that is descriptive of the Complainant’s product, which is spiced rum. As noted in LEGO Juris A/S v. Private, Registration/Dohe Dot, WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive of the Complainant’s products is likely to produce confusion since it creates an association with the Complainant. As such the addition of the words “spiced rum” or the word “spiced” does not distinguish the Domain Name from the SAILOR JERRY and SAILOR JERRY RUM Marks in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SAILOR JERRY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SAILOR JERRY and SAILOR JERRY RUM Marks or a mark similar to the SAILOR JERRY and SAILOR JERRY RUM Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Domain Name redirects to the Respondent’s Website located at “www.sailorjohnny.com”. This site appears to promote the Respondent’s fishing business and refers to the Respondent as “Sailor Johnny”. The mere fact that the Respondent may be known as Sailor Johnny does not in itself grant him rights and legitimate interests in the <sailorjerryspicedrum.com> Domain Name.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests. In its communications with the Center, it has failed to establish any rights or legitimate interests, rather it claims that it registered the Domain Name “like some one buys a piece of art because I am a big fan of sailor jerry and the name was available”. This does not amount to a right or legitimate interest under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that the Respondent was aware of the Complainant and its reputation in the SAILOR JERRY and SAILOR JERRY RUM Marks at the time the Domain Name was registered. The Respondent’s Website makes a number of associations to the Complainant’s Sailor Jerry Spiced Rum product and suggests that the Respondent is a fan of the Complainant’s Sailor Jerry Spiced Rum product. Furthermore the Respondent, in communication with the Center has indicated that he registered the Domain Name because he “was a fan of sailor jerry and the name was available”.

The registration of the Domain Name in awareness of the Complainant’s SAILOR JERRY and SAILOR JERRY RUM Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent is currently using the Domain Name to promote his fishing business from a website located at “www.sailorjohnny.com”. Given the Domain Name’s use of the Complainant’s SAILOR JERRY and SAILOR JERRY RUM Marks, the Domain Name would generate considerable traffic from Internet users interested in the Complainant’s product. This diversion of web users interested in the Complainant’s products to the Respondent’s commercial website would be of commercial benefit to the Respondent. Therefore, the Panel finds the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s SAILOR JERRY and SAILOR JERRY RUM Marks Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sailorjerryspicedrum.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Dated: October 16, 2012

 

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