The Complainant is Pernod Ricard SA of Paris, France, internally represented.
The Respondent is Miles Richey, Richey Fixnet of Arlington, Texas, United States of America (“US”).
The disputed domain name <pernod-rlcard-uk.com> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2016, 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 July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 25, 2016. 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.
The Complainant is quoted at the Paris Exchange Standard and information about its business and results is readily available on the Internet including on its main website “www.pernod-ricard.com” or Wikipedia as can be seen from the extract set out at Annex 4 to the Complaint.
Annex 4 also includes extracts from professional magazines namely; Impact Newsletter of March 2016 reporting about the best spirit Alcohol Inc brands and the more important operators in the wine industry or the Power 100, the most Powerful Spirits & Wine Brands in 2015. Both show that Pernod Ricard is ranked number two in this market and that it has many brands as part of the 100 most important spirit brands worldwide including the aniseed spirit Ricard which is ranked as the sixteenth best-selling spirit worldwide.
“Pernod Ricard” is the registered trade name of the Complainant. The Complainant was founded in 1975 through the merger of the French companies Ricard SA and Pernod SA. At the time these companies were in France leading companies in the wine and spirits industry. Their respective main brands Pernod, an aniseed based liqueur created in 1805, and Ricard, aniseed based spirit created in 1932, were well known brands in France and enjoyed some reputation abroad being the symbol of French traditional spirit drinks.
During the last 40 years the Complainant has gradually grown to become an international company operating worldwide and co-leader in the worldwide wines and spirits industry. Indeed Pernod Ricard is the world leader in the premium spirits industry. It has a large portfolio of premium, international and local brands including ABSOLUT Vodka, BALLANTINES Scotch Whisky, CHIVAS REGAL Scotch Whisky, JAMESON Irish Whiskey, HAVANA CLUB Cuban rum, MALIBU rum, MARTELL Cognac and GH MUMM and PERRIER-JOUET Champagnes.
The Complainant is the owner of a number of trade mark registrations and lists these:
(a) United Kingdom of Great Britain and Northern Ireland (“UK”) registration no. 2274657 for PERNOD RICARD UK registered on March 22, 2002 in classes 33, 35 and 39.
(b) UK registration no. 2285667 for PERNOD RICARD UK plus sun device registered on May 24, 2002 in classes 32, 33, 35, 36, 38, 41 and 42.
(c) European Union (“EU”) registration no. 010331874 for PERNOD RICARD registered on March 12, 2012 in classes 9, 16, 25, 35, 36, 38, 41, 42 and 43.
(d) International registration no. 892637 for PERNOD RICARD in classes 32, 33, 35, 38, 41 and 43 for PERNOD RICHARD plus device.
(e) French registration no. 53401072 for PERNOD RICARD plus device registered on December 23, 2005 in classes 32, 33, 35, 38, 41 and 43.
(f) Brazilian registration no. 200046381 for PERNOD RICARD plus device registered on May 25, 2004 in class 33.
(g) EU registration no. 004660486 for PERNOD in class 33.
(h) US registration no. 544243 for PERNOD registered on June 26, 1951 in class 33.
(i) EU registration no. 004660478 for RICARD registered on July 13, 2006 in class 33.
(j) US registration no. 0759342 for RICARD registered on October 29, 1963 in class 33.
Copies of registration certificates and printouts of the relevant databases from trade mark offices are attached at Annex 3(a) to the Complaint.
The Complainant is also the registered owner of a number of domain names comprising Pernod Ricard, including <pernodricarduk.com> and <pernod-ricard-uk.com>. Pernod Ricard is part of the trade name of the UK company no 01870414, Pernod Ricard UK Limited of London, UK. At Annex 5 to the Complaint is set out an extract from the UK company’s data base. Pernod Ricard UK has its website “www.pernod-ricard-uk.com”.
In particular the Panel is satisfied that the Complainant trades worldwide and has a substantial reputation and trading goodwill. It also maintains a portfolio of trade marks details of some of which are set out above.
The history of this Complaint is that the disputed domain name <pernod-rlcard-uk.com> was registered on July 13, 2016. On the same day, the Respondent created email addresses using the disputed domain name and the name and surname of senior employees of the Complainant’s group. These email addresses were then used to send emails to other employees of the Complainant’s group, all working in the finance department. Copies of these emails are attached to the Complaint at Annex 10.
In the absence of evidence from the Respondent, the Panel finds the evidence adduced by the Complainant is true and precedes to determine this Complaint on the basis of the Complainant’s evidence.
The Complainant maintains:
1. The domain name in dispute is identical or confusingly similar to a trade mark in which the Complainant has rights.
2. That on the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. The domain name was registered and is being used in bad faith as is shown by the false email addresses.
The Respondent did not reply to the Complainant’s contentions.
For the reasons set out above the Panel finds that the Complainant has a portfolio of trade mark registrations using the marks PERNOD RICARD, PERNOD and RICARD.
The disputed domain name is <pernod-rlcard-uk.com> which consists of a combination of the names Pernod, Ricard and UK. The Respondent has replaced the second letter of the mark RICARD, i.e., “i” by an “l” in the disputed domain name. These are visually similar since both the “i” and the “l” predominately consist of a vertical line. In the Panel’s view, the element “RLCARD” is confusingly similar to the mark RICARD. The Panel also finds that the disputed domain name is using without variation the mark PERNOD which is, as shown above, a historical brand of the Complainant and exclusively associated with the Complainant’s business.
The Panel finds that the disputed domain name despite the substitution of the letter “l” for “i” is confusingly similar to the registrations referred to above. It follows that the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
There is no evidence before the Panel which shows that the Respondent is entitled to register or use the disputed domain name.
The Complainant has conducted searches using Corsearch which does not show any trade mark filed or registered by the Respondent. There is no evidence justifying the use of the disputed domain name nor of any authorizing entitling the Respondent to use the trade marks of the Complainant as part of the disputed domain name.
Annex 9 to the Complaint consists of the printout of pages from the disputed domain name which shows that it is directed to a web page proposing commercial links relating to alcoholic beverages competing with the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that the registration of the disputed domain name on July 13, 2016 and at the same time the creation of false email addresses using the names of senior employees of the Complainant is evidence of bad faith. There is no doubt that these emails were part of an attempt to misrepresent an association between the Respondent and to represent, contrary to the fact, a legitimate association between the Respondent and the Complainant. As pointed out by the Complainant, these fraudulent email addresses may be used in an obscene, defamatory, violent, unlawful and fraudulent manner.
In the absence of evidence from the Respondent, the Panel accepts the Complainant’s contention that the Respondent intentionally attempted to create a likelihood of confusion with the Complainant’s mark so as to disrupt the Complainant’s business for its own financial gain.
Accordingly the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <pernod-rlcard-uk.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: September 9, 2016