WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heaven Hill Distilleries, Inc. v. Whois Privacy Services Pty Ltd. / Dzone Inc.
Case No. D2013-2173
1. The Parties
The Complainant is Heaven Hill Distilleries, Inc. of Bardstown, Kentucky, United States of America, represented by Wyatt, Tarrant & Combs, United States of America.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Dzone Inc. of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <evanwilliams.net> (the "Domain Name") is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2013, 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 December 24, 2013,
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 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on February 6, 2014. 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 Panel understands from the Complainant's name and from the nature and specification of some of the trademarks relied upon, that the Complainant is engaged in the alcoholic drinks industry.
The Complainant is the registered proprietor of a number of trademarks around the world comprising the words "Evan Williams", including United States trademark no. 695,029 EVAN WILLIAMS registered on March 22, 1960 in respect of whiskey, which has been in continuous use by the Complainant since July 1955. The Complainant has registered a number of domain names comprising "evanwilliams" including <evanwilliams.com> registered on December 25, 1997 and operated a website using that domain name since at least March 2011.
The Respondent registered the Domain Name on April 24, 2011. At the time of the Complaint it resolved to a webpage comprising a number of sponsored listings and other links to a variety of other websites including competitors of the Complainant. The webpage includes the invitation "BUY THIS DOMAIN" in the top banner.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its EVAN WILLIAMS trademark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted, uncontested rights in the EVAN WILLIAMS mark both by virtue of its United States and other trademark registrations and as acquired through longstanding use. The Domain Name is identical to the Complainant’s trademark”, ignoring the “.net” suffix for this purpose. Accordingly, the Panel finds that the Domain Name is identical to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Respondent has not been given permission to use the EVAN WILLIAMS name. The Respondent has used the Domain Name for a website comprising sponsored and other links and an offer to sell the Domain Name. In the Panel's view, the Respondent is making financial gain by using the goodwill attached to the Complainant's mark to attract Internet users to its website and being paid for click-through advertising. The Panel considers that such activity could not give rise to any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint to put forward any case as to how it might have such rights or interests.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Name, the longstanding use by the Complainant of its EVAN WILLIAMS trademark in the United States and elsewhere, as well as the use to which the Domain Name has been put, the Panel considers that it is most likely that the Respondent had the Complainant and its business in mind when it registered the Domain Name.
In the view of the Panel, the registration, and subsequent use of the Domain Name to attract Internet users to the Respondent’s website for commercial gain through click-through advertising, is paradigm bad faith registration and use according to paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Respondent registered and has used the Domain Name 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 <evanwilliams.net> be transferred to the Complainant.
Date: February 21, 2014