WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Drambuie Liqueur Company Limited v. DVLPMT MARKETING, INC

Case No. D2015-0039

1. The Parties

The Complainant is The Drambuie Liqueur Company Limited of Lanarkshire, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.

The Respondent is DVLPMT MARKETING, INC of Metairie, Louisiana, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <flamingdrambuie.com> (the “Disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2015. On January 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 16, 2015.

The Center verified that the Complaint together with the amended 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 January 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2015.

The Center appointed John Swinson as the sole panelist in this matter on February 18, 2015. 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 The Drambuie Liqueur Company Limited of the United Kingdom. The Complainant is the manufacturer of Scottish whisky. The Complainant was founded as a company in 1927. However, it submits that its use of the DRAMBUIE trade mark dates back to 1893.

The Complainant owns numerous trade marks for DRAMBUIE. For example:

- UK Registration No. 729012 (registered April 24, 1893) for DRAMBUIE as a word mark; and

- US Registration No. 1817026 (registered October 13, 1992) for DRAMBUIE as a typed drawing.

These will be collectively referred to as the “Trade Mark”.

The Complainant has also registered the domain name <drambuie.co.uk>.

The Respondent is DVLPMT MARKETING, INC of the United States. It has not provided a Response. Consequently, little information is known about the Respondent.

The Disputed Domain Name was registered on May 16, 2000. The website at the Disputed Domain Name resolves to a website which displays what appears to be computer-generated pay-per-click (“PPC”) links relating to alcoholic drinks.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The addition of the descriptive word “flaming” does not distinguish the Disputed Domain Name from the Trade Mark. The Trade Mark is the dominant element of the Disputed Domain Name.

Rights or Legitimate Interests

The Respondent has not been commonly known by the Disputed Domain Name. The Complainant has not authorized the Respondent to use the Trade Mark. The Disputed Domain Name is being used to generate revenue through PPC links, in this instance, as the Respondent is trading off the value in the Trade Mark. This is not a “bona fide offering of goods or services”.

Registered and Used in Bad Faith

Given the fame of the Complainant and the Trade Mark, the Respondent must have known of both when it registered the Disputed Domain Name. This is confirmed by the use of an image of the Complainant’s product on early versions of the website at the Disputed Domain Name. The Respondent is profiting from PPC revenue arising from the confusion of Internet users. Internet users are being directed to third party websites, including the websites of the Complainant’s competitors.

There have been 11 other UDRP cases against the Respondent. This indicates a pattern of conduct. In this case, the use of a privacy service constitutes evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

A person called M. Patterson emailed the Center on a number of occasions. It appears that he may be associated with the Respondent but he never disclosed his relationship with the Respondent. His emails were threatening and unusual. An example:

“This email looks like another phishing attempt to collect information from a US Citizen. Please send me a certified letter such that I can confirm that this is not an attempt to steal personal information from me.

If I do not hear from you via certified post, I will notify the Federal Trade Commission in regards to a malicious phishing attempt from your organization on a US Citizen I’m going to save a PDF copy of these emails to share with FTC if you persist in email correspondence and don’t actually pick up the phone or send proper letters.”

The Center responded in an appropriate way to Mr. Patterson’s emails.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

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

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Issues

The Panel confirms that the Center has taken the steps required under the Policy and the Rules regarding notification of the Complaint to the Respondent. The Panel is satisfied that the Respondent has been given adequate notice of the Complaint and a reasonable opportunity to file a Response.

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Panel has verified that the Complainant has rights in the Trade Mark. The Panel also finds that the Trade Mark is well-known.

The Disputed Domain Name is confusingly similar to the Trade Mark. It is well established that where a distinctive trade mark is wholly incorporated in a domain name, adding a descriptive term (i.e. “flaming”) will general not distinguish the domain name from the trade mark (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059 and cases cited therein). Here the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the descriptive term “flaming” does not prevent the confusing similarity of the Disputed Domain Name with the Trade Mark. The Panel notes that the Complainant’s product may be served “flaming”, and “Flaming Drambuie” is a type of cocktail.

In this case, the generic Top-Level Domain “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and may be ignored.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- There is no evidence that the Respondent is commonly known by the Disputed Domain Name.

- There is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.

- The website at the Disputed Domain Name appears to be commercial in nature. It features PPC links, some of which direct to third party websites. The Disputed Domain Name is not a dictionary or common word and is not being used in a descriptive sense or as a fan site. Accordingly, the Panel infers that it is being used to misleadingly divert Internet users. This is not a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on May 16, 2000. At this time, the Complainant had been using the Trade Mark for over a century. It is highly unlikely that the Respondent was unaware of the Complainant and the Trade Mark when it registered the Disputed Domain Name. (Esquire magazine has referred to the Complainant’s whisky as “the world’s most distinguished Scotch-based liqueur”.)

The Respondent’s registration of a domain name that wholly incorporates the Trade Mark, indicates that the Respondent registered the Disputed Domain Name to mislead users into thinking it is some way connected, sponsored or affiliated with the Complainant and its products, or that the Respondent’s activities are approved or endorsed by the Complainant.

It appears that the Respondent is trading off the Complainant’s substantial reputation for commercial gain (i.e. to generate PPC revenue). Here, this constitutes bad faith.

The following circumstances further evidence bad faith:

- The Respondent has engaged in similar conduct in relation to other domain names. It has been ordered to transfer 11 domain names over the past year, as a result of adverse UDRP decisions.

- It appears that the Respondent has used false details for the registrant contact. Upon receipt of the Complaint, the person listed as the registrant contact emailed the Center, stating that the correspondence in relation to the dispute looked like a phishing attempt. Previous panels have held that the deliberate use of incorrect or ineffective contact particulars constitutes evidence of bad faith (see e.g. WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932 and cases cited therein).

- The Respondent registered the Disputed Domain Name using a privacy service. While this is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent’s identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent (see, e.g. Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529).

The Respondent had the opportunity to make submissions to rebut the Complainant’s allegations but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name.

In light of the above, the Complainant succeeds on the third element 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 Disputed Domain Name, <flamingdrambuie.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: February 22, 2015