WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Drambuie Liqueur Company Limited v. Glen Hammond
Case No. D2015-0063
1. The Parties
The Complainant is The Drambuie Liqueur Company Limited of Lanarkshire, Scotland, United Kingdom of Great Britian and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is Glen Hammond of Cringleford, Norwich, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <drambuie.scot> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2015. On January 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Response was filed with the Center on February 17, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on March 9, 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 was founded in 1927. It is the manufacturer of the Scotch whisky liqueur named “Drambuie”. The Complainant is based in Scotland and its DRAMBUIE products are manufactured there.
The Complainant is the owner of various registered trademarks for DRAMBUIE, the earliest of which was registered in 1893. The Complainant’s mark was derived as a homophone of the Scots Gaelic “dram buidheach” or “dram buidhe”, respectively translating as a “drink which satisfies” or a “golden or pleasant drink”.
The Complainant maintains an online presence, including at websites at the domain name drambuie.com.uk”, which was registered in 1996.
The Respondent operates a residential sales and letting business and, in correspondence with the Complainant, describes himself as an entrepreneur.
The disputed domain name has a creation date of September 23, 2014, seven seconds after the start of the generic Top-level Domain (“gTLD”) “.scot” became generally available for registration. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant says that its marks, dating back to 1893, are some of the oldest, best known, and most valuable in existence. Once the gTLD in this case is disregarded, the disputed domain name is relevantly identical to the Complainant’s marks. In the event that the gTLD is included for comparison, the possibility of confusion is enchanced, due to the strong association of the Complainant’s mark and its DRAMBUIE branded products with Scotland.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has not received any license or permission from the Complainant to use its mark in the disputed domain name. The Respondent cannot derive a legitimate interest from the passive holding of the disputed domain name, and has given no explanation of his motivations for registering it.
The Complainant says that the Respondent has acted in bad faith. Given the fame of the Complainant’s mark, it is inconceivable that the Respondent did not have the Complainant and its trademarks in mind when he registered the disputed domain name. The Complainant has also registered its mark with ICANN’s Trademark Claims Service. This means that the disputed domain name was registered in a period when the Registrar was required to have provided notice to the Respondent that the disputed domain name matched a trademark record in the Trademark Clearinghouse. The Respondent has also registered the trademarks of third parties, which is evidence of a pattern of bad faith registration. The Complainant says that it is reasonable to infer that the Respondent’s primary purpose was to sell the disputed domain name to the Complainant or a competitor for a price in excess of its out of pocket costs, which amounts to evidence of bad faith under paragraph 4(b)(i) of the Policy.
The Respondent replied by email to the Center on February 17, 2015 (although not in a form technically compliant with the Rules). The Respondent stated that he registered the disputed domain name in good faith alongside other Scottish brands with the view of creating an online specialist supermarket for local products. The Respondent said that he purchased the disputed domain name and others on the belief that availability implied an ability to use, and expresses surprise that the Complainant “has shown such a lackadaisical approach to registering [the disputed domain name].” The Response, like the Complaint, attaches copies of correspondence between the parties, in which the Complainant asserts its rights, and the Respondent pleads ignorance of any wrongdoing.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and has been used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s long-standing and well-known mark, for the following reasons.
The disputed domain name wholly incorporates the Complainant’s mark. It is well-established that this can form a basis for confusing similarity. See e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The majority of UDRP panels have traditionally ignored the gTLD for the purpose of comparison under paragraph 4(a)(i) of the Policy. These decisions have often related to extensions in the “.com”, “.org”, or “.net” space, or for country code domains. In these cases, the extensions serve a largely functional or technical purpose.
In this case, the Panel does not consider that the “.scot” extension can be ignored for the purpose of comparison. More recently, new gTLDs have been opened for general registration. In this case, the “.scot” gTLD clearly conveys a meaning, in addition to its technical purpose. The greater variety of gTLDs that are now available give a registrant greater choice between potential meanings in a domain name. In this way, the Respondent’s choice of a meaningful gTLD is similar to the choice the Respondent exercises in selecting the second-level domain. Here, the “.scot” extension clearly conveys an association with Scotland - a location strongly associated with the Complainant’s mark. As such, the gTLD extension in this case is more likely to create confusion about the association of the disputed domain name with the Complainant’s mark.
Finally, the Respondent did not contest the allegation that the disputed domain name is confusingly similar to the Complainant’s mark.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to its DRAMBUIE mark.
B. Rights or Legitimate Interests
The Complainant has established a strong prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent provides little evidence that might support his case of having such rights. The Respondent merely states that he registered the disputed domain name for the purpose of setting up a “specialty supermarket”, and that the availability of the domain name implied that he had rights to register it.
The Respondent provided no evidence to support his assertion of working to set up an online supermarket. But even if this was the Respondent’s genuine intention, it would not, by itself, provide the Respondent a right to register the Complainant’s mark in a domain name. In effect, the Respondent is stating a vague future intention to develop a business that re-sells the Complainant’s products, and other products which have some Scottish association.
As noted above, paragraph 4(a)(ii) of the Policy requires a complainant to establish that the respondent has no rights or legitimate interests. Importantly, it is clear from paragraph 4(a)(ii), and the examples of rights or legitimate interests in paragraph 4(c) of the Policy, that concrete evidence of a respondent’s rights or legitimate interests should be available before the complaint is filed. The requirement on a Complainant to prove its case under paragraph 4(a) of the Policy (if it is to succeed) can only make sense if the Complainant is able to do this by reference to evidence available up to the point the Complaint is filed.
This means that the Respondent’s statement of intention has little weight unless it can be backed up by demonstrable evidence of the Respondent’s work toward that intention, undertaken before the Complaint was filed. Relevantly, paragraph 4(c)(i) of the Policy provides that a respondent can demonstrate rights or legitimate interests by the following evidence: “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
There is no dispute that the Respondent has not used the disputed domain name in connection with an active website. Neither has the Respondent provided evidence of demonstrable preparations to use the disputed domain name, let alone in connection with a bona fide offering. In these circumstances, the Respondent’s vague statement of intention is insufficient to rebut the Complainant’s prima facie case.
There is otherwise no evidence in the case file that would suggest the Respondent has a right or legitimate interest. There is no evidence that the Respondent was “commonly known” by the disputed domain name, or was making a legitimate noncommercial or fair use, as set out in paragraphs 4(c)(ii) and (iii) of the Policy. The Respondent’s suggestion that availability implies such rights is misplaced. It ignores the Complainant’s trademark rights and the protection against abusive domain name registration under the Policy.
For these reasons, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name has been registered in bad faith for the following reasons:
Firstly, the Complainant’s mark is very well-known. The Respondent himself implies that he was motivated to register the mark because of its association with the Complainant’s products, which he says he intended to sell via an online “supermarket”.
Secondly, the Complainant provided evidence that the Respondent registered the disputed domain name almost immediately after the “.scot” gTLD became available for general registration. Having regard to this circumstance, the Respondent is being somewhat disingenuous to claim that he believed the availability of the domain name implied that he was free to register it. It also suggests an element of opportunism in the registration.
Thirdly, as evidenced in the Complaint, the Complainant registered its mark with ICANN’s Trademark Claims Service, and the Registrar was required to provide notice to the Respondent that the disputed domain name matched a record of the Complainant’s mark. Although there was no direct evidence that such notice was provided, given the overall credibility of the Complainant’s case and the lack of substantive Response, the Panel considers it more likely than not that such notice was provided.
Fourthly, the Respondent provides little evidence to rebut the allegations made against him, or to provide contrary evidence to suggest that his registration was not made in bad faith. Beyond a bare assertion of his intention, the Respondent provides no evidence which would indicate that there is some objective connection between his business and the disputed domain name.
In these circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
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, <drambuie.scot>, be transferred to the Complainant.
James A. Barker
Date: March 23, 2015