WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Grant & Sons Limited v. Frank Blincow
Case No. D2003-0540
1. The Parties
The Complainant is William Grant & Sons Limited of Bellshill, United Kingdom. The Respondent is Frank Blincow of Newton Mearns, Glasgow, United Kingdom.
2. The Domain Names and Registrars
The disputed domain name <glenfiddich.biz> is registered with Tucows, Inc. The disputed domain name <glenfiddich.info> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2003. On July 11, 2003, the Center transmitted by email to Tucows, Inc. and CSL Computer Service Lagenbach GmbH requests for registrar verification in connection with the domain names at issue. On the same date, Tucows, Inc. and CSL Computer Service Lagenbach GmbH transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Restricted Dispute Resolution Policy (the "RDRP") and the WIPO Supplemental Rules for the Restricted Dispute Resolution Policy ("the RDRP 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 July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 6, 2003.
The Center appointed Angela Fox as the sole panelist in this matter on August 21, 2003. 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 largest independent whisky distiller in the United Kingdom.
Among the Complainantís range is a single malt whisky sold under the brand name GLENFIDDICH. The Complainant sells its GLENFIDDICH whisky around the world, including in Scotland where both it and the Respondent are based, and through the Complainantís website, "www.glenfiddich.com."
The Complainant owns trademark registrations and applications for and incorporating GLENFIDDICH as the dominant element, which date from as early as 1960. The Complainant cites United Kingdom trademark registrations 809941 GLENFIDDICH in Class 33 of August 26, 1960, 1216606 GLENFIDDICH Label in Class 33 of April 11, 1984, 1423388 GLENFIDDICH in Class 32 of May 3, 1990, 1462465 GLENFIDDICH in Class 29 of April 25, 1991, 1462466 GLENFIDDICH in Class 30 of April 25, 1991, 2068117 GLENFIDDICH in Classes 41 and 42 of April 10, 1996, 2168390 GLENFIDDICH in Class 30 of June 3, 1998, and 2292233 GLENFIDDICH and Deer Device [Series of Two] in Class 33 of February 8, 2002; Community Trademark registrations 192575 GLENFIDDICH in Class 33 of December 18, 1998, and 880948 GLENFIDDICH and Deer Logo in Classes 18, 21, 25, 29, 30, 32, 33, 41 and 42 of August 23, 2000; and Community Trademark application 2576445 GLENFIDDICH and Deer Device in Class 33 of February 8, 2002. The Complainant has provided registry database extracts of all these except United Kingdom registration 2068117.
The Complainant promotes its GLENFIDDICH brand around the world through print media, television, events sponsorship and merchandise, as well as on its website where GLENFIDDICH whisky and merchandise can be purchased. In September 2001, the Complainant embarked on a £1 million advertising campaign for the brand in the United Kingdom, with a strong focus on Scotland.
The contested domain names <glenfiddich.info> and <glenfiddich.biz> were registered on October 8, 2001, and November 10, 2001, respectively. Both resolve to standard holding pages posted by the Respondentís registration service providers.
The Complainantís lawyers wrote to the Respondent on March 7, 2003, asking him to contact them concerning the domain names. In a telephone call on March 26, 2003, the Respondent informed the Complainantís lawyers that although he was not a drinker, he was aware of the Complainantís GLENFIDDICH brand and had a legitimate reason for registering the domain names. He was not, however, prepared to divulge that reason and indicated that he would instruct his lawyers that day to contact the Complainantís lawyers. No such contact was made despite several follow-up letters from the Complainantís lawyers warning that the Complainant would act to retrieve the domain names. On July 9, 2003, this administrative proceeding was filed.
5. Partiesí Contentions
The Complainant contends that the Respondentís domain names are identical to its registered trademark GLENFIDDICH. The generic top-level indicators ".biz" and ".info" are purely technical in nature and may be disregarded.
The Complainant avers that the Respondent has no rights or legitimate interests in the domain names, and that they have not been, nor will they be, used primarily for a bona fide business or commercial purpose. The Complainant did not authorize the use of its trademark by the Respondent, and there appears to have been no use of the domain names in the nearly two years since they were registered except to post standard holding pages from the Respondentís registration service providers. Although the Respondent claimed to have a legitimate reason for registering the domain names, he refused to divulge that reason when contacted by the Complainantís lawyers, even when warned that an administrative proceeding would be filed.
Finally, the Complainant contends that the domain names were registered and used in bad faith. The Complainant notes that a large-scale GLENFIDDICH advertising campaign had been launched in Scotland, where the Respondent is based, just before the domain names were registered. The Complainant concludes that the registrations were obtained in full knowledge of the Complainantís rights and with an intent to prevent the Complainant from reflecting its GLENFIDDICH trademark in corresponding ".biz" and ".info" domain names. The Complainant points to the registration by the Respondent of at least 19 other domain names incorporating trademarks or names of third parties, many of them well-known in the United Kingdom, as evidence of a pattern of such conduct.
In light of all this, the Complainant seeks the transfer of the contested domain names to it.
The Respondent did not reply to the case against him and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondentís default.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The above provisions apply to ".info" and ".biz" domain names. In addition, a complainant can succeed in an administrative proceeding against a ".biz" domain name under the RDRP if, in accordance with Paragraph 4(a) of the RDRP, he proves that the domain name has not been and will not be used primarily for a bona fide business or commercial purpose.
A. Identical or Confusingly Similar
The Complainant has shown to the Panelís satisfaction that it has registered trademark rights in GLENFIDDICH.
The contested domain names consist of GLENFIDDICH and the generic technical indicators ".biz" and ".info," which the Panel may disregard.
The Panel finds that the contested domain names are identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain names.
The Complainant did not authorize the Respondent to register the contested domain names or otherwise to use its GLENFIDDICH trademark, and the Respondentís known name does not correspond to the mark. Despite the passage of nearly two years since registration of the domain names, the Complainantís research has found no use of them apart from the hosting of standard holding pages posted by the Respondentís registration service providers, advertising their services. Such standard holding pages are common default content on unused websites and do not, on their own, constitute use of the domain names by the Respondent in connection with a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy.
The Complainant has made a compelling prima facie case that the Respondent lacks legitimate rights or interests in the domain names. The Respondent did not respond to this case except to make a bald, pre-complaint assertion to the Complainantís lawyers that he had a legitimate reason for registration, but was not prepared to disclose it. The Complainant has done all that was reasonably possible to show that, on the balance of probabilities, the Respondent has no rights or legitimate interests in the domain names. The Panel so finds.
C. Bona Fide Business or Commercial Use
Whether a ".biz" domain name has been, or will be, used primarily for a bona fide business or commercial purpose is a sub-set of the question of whether the Respondent has rights or legitimate interests in the domain name.
The website content at "www.glenfiddich.biz" consists of a standard holding page posted by the Respondentís registration service provider, advertising that companyís services. If this were to constitute use primarily for a bona fide business or commercial purpose, then practically all unused domain names would qualify since the posting of such pages is standard practice. In fact, such pages indicate to visitors that domain names are not in use. The Panel finds that the <glenfiddich.biz> domain name is not being used for a bona fide business or commercial purpose under Paragraph 4(a) of the RDRP.
Under Paragraph 4(a) of the RDRP, Panels may not infer purely from past non-use that a ".biz" domain name will not be used for a bona fide business or commercial purpose in the future. However, the Complainant has made a compelling prima facie case that the Respondent has no rights or legitimate interests in <glenfiddich.biz> based on other factors, including the absence of authorization to use the Complainantís trademark, the absence of any known association between the Respondent and the GLENFIDDICH name, and the Respondentís refusal to divulge his claimed legitimate reason for registration. In combination with the Respondentís non-use, all these factors together raise a prima facie case that the Respondent is unlikely to use <glenfiddich.biz> in connection with a bona fide business or commercial purpose in the future.
Absolute proof that a domain name will not be used in a certain way in the future is impossible. The Panel is satisfied that the Complainant need only establish that, on the balance of probabilities, the Respondent is unlikely to use the <glenfiddich.biz> domain name for a bona fide business or commercial purpose in the future. Taking into account the evidence and submissions on the absence of rights or legitimate interests in <glenfiddich.biz>, the Panel considers that the Complainant has done this.
For these reasons, the Panel finds that the domain name <glenfiddich.biz> is not being used and will not be used primarily for a bona fide business or commercial purpose.
D. Registered and Used in Bad Faith
Under Paragraph 4(b)(ii) of the Policy, it shall be evidence of both registration and use in bad faith if the Panel finds circumstances indicating that a domain name was registered in order to prevent the owner of a trademark from reflecting that mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Complainant submitted evidence that the Respondent has registered at least 19 other domain names incorporating well-known trademarks or names of third parties in the United Kingdom. These include inter alia <arsenalfc.biz>, <celticfc.biz>, <kallkwik.biz>, <leedsfc.biz>, <lloyds-tsb.biz> and <manunitedfc.biz>. The Respondent, a private individual with an address in Scotland, has no known association with any of the owners of the trademarks included in these domain names. The trademarks pertain to commercial fields as diverse as football, printing and banking, but one feature they share in common is that each is well-known in the United Kingdom. It seems likely that the Respondent was aware of those trademarks and that he registered the domain names with the intent to prevent their registration by the proprietors of the marks. In light of the large number of domain names involved and the potential repercussions on the Respondentís continuing ownership of them, the Panel would have expected the Respondent to reply if it had a plausible explanation for its ownership.
The registration of as few as three and seven domain names has been held to constitute a pattern of conduct under the Policy (in inter alia Ourisman Dodge, Inc. v. Ourisman "Okie doke" Dodge dot com and Ourificeman Dodge dot com, WIPO Case No. D2001-0108 and U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511). In the circumstances of this case, the Panel has no hesitation in finding that 19 domain names represent a pattern of conduct under Paragraph 4(b)(ii) of the Policy.
The Complainantís evidence suggests that the Respondent registered the contested domain names with the intention of preventing the Complainant from doing so. The Respondent, by his own admission, was aware of the GLENFIDDICH trademark. The Respondent has put forward no objective justification for his registration of domain names incorporating a trademark that he knew did not belong to him. When this conduct is considered against the backdrop of the Respondentís 19 other apparently abusive registrations highlighted by the Complainant, there is ample evidence to suggest that the two contested domain names were registered and used in bad faith under Paragraph 4(b)(ii) of the Policy. The Panel so finds.
For all the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and RDRP and 15 of the Rules, the Panel orders that the domain names <glenfiddich.info> and <glenfiddich.biz> be transferred to the Complainant.
Dated: September 1, 2003