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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chivas Holdings (IP) Limited v. Vinh Nguyen Xuan, Song Long Vietnam Media, Hanoi OSX Team

Case No. D2017-2034

1. The Parties

The Complainant is Chivas Holdings (IP) Limited of Renfrewshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Pernod Ricard (Canada), Canada.

The Respondent is Vinh Nguyen Xuan, Song Long Vietnam Media, Hanoi OSX Team of Hanoi, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <chivasvietnam.org> and <ruouchivasregal.com> are registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2017.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 8, 2017. 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, Chivas Holdings (IP) Limited, a Scottish Private Limited Company and part of the Pernod Ricard group, has proven to be the owner of the CHIVAS and CHIVAS REGAL marks.

The Complainant is inter alia the owner of:

Vietnamese Trademark registration No. 8617, CHIVAS registered in class 33;

Vietnamese Trademark registration No. 8618, CHIVAS REGAL registered in class 33.

The Complainant is also the owner of numerous domain names consisting of the CHIVAS and CHIVAS REGAL trademarks, including <chivas.com>, <chivasregal.com>, <chivas.com.vn>, <chivas.vn>, <chivasregal.vn> and <chivas-regal.vn>.

The disputed domain names were registered by on August 16, 2013.

The Complainant's trademark and domain name registrations long predate the registration of the disputed domain names.

The disputed domain name <chivasvietnam.org> does not appear to resolve to an active website, whereas the disputed domain name <ruouchivasregal.com> resolves to a page announcing that the website is "down for maintenance".

Chivas Regal is a blended scotch whisky which traces its roots back to 1801. Annex 4 of the Complaint.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the CHIVAS and CHIVAS REGAL trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

The Complainant underlines that CHIVAS REGAL is an international brand sold in over 150 markets worldwide and that Viet Nam, where the Respondent is located, is one of the top 15 markets for the CHIVAS REGAL brand and, as a result of extended and continuous use in this country over the last 20 years, it is recognized as a well-known trademark in Viet Nam.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant demonstrate to the Panel that:

(i) The disputed domain names are identical or confusingly similar to a trademark 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the CHIVAS and CHIVAS REGAL trademarks.

The disputed domain names <chivasvietnam.org> and < ruouchivasregal.com> identically reproduce the Complainant's CHIVAS and CHIVAS REGAL trademarks with the addition of a geographic term and a generic term respectively, i.e., "Viet Nam" and "ruou" ("ruou" meaning "alcohol" in Vietnamese).

It is well established that where the complainant's trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity. In the present case, the disputed domain names incorporate the renowned CHIVAS and CHIVAS REGAL trademarks in their entirety with the addition of geographic and generic terms.

This is not sufficient to overcome a finding of confusing similarity pursuant to the Policy.

Therefore, the Panel finds the disputed domain names to be confusingly similar to the CHIVAS and CHIVAS REGAL trademarks in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain names.

Finally, this Panel believes the CHIVAS and CHIVAS REGAL marks, due to their renown, are not trademarks that unauthorized traders could legitimately adopt for commercial use other than for the purpose of creating an impression of an association with the Complainant.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the Respondent's bad faith.

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the CHIVAS and CHIVAS REGAL marks when it registered the disputed domain names.

The Respondent's knowledge of the CHIVAS and CHIVAS REGAL marks is particularly obvious, given the worldwide renown they have acquired and the Respondent's choice to combine the CHIVAS REGAL trademark with the generic term "ruou", i.e., "alcohol" in Vietnamese.

In addition, the fact that the Respondent chose to register two domain names containing the renowned CHIVAS and CHIVAS REGAL trademarks is further evidence that the Respondent knew of the Complainant's trademarks and products when registering the disputed domain names.

Therefore, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its areas of business at the time of registration of the disputed domain names.

Moreover, the Panel notes the following:

The Respondent has created a likelihood of confusion with the Complainant and its trademarks by registering domain names that incorporate the Complainant's CHIVAS and CHIVAS REGAL trademarks in their entirety while merely adding related generic terms to said trademarks. This confuses Internet users looking for the Complainant's products and services, and misleads them as to the source of the disputed domain names.

The fact that the disputed domain names do not resolve to active websites and appear to be passively held, does not prevent a finding of bad faith.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain names <chivasvietnam.org> and <ruouchivasregal.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: December 19, 2017

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