WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Grant & Sons Limited v. Dave Chandler
Case No. D2016-0476
1. The Parties
The Complainant is William Grant & Sons Limited of Scotland, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, of United Kingdom.
The Respondent is Dave Chandler of Halifax, Canada.
2. The Domain Name and Registrar
The disputed domain name <glenfiddich.club> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 proceeding commenced on March 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2016. The Respondent did not file a Response. Accordingly, the Center notified the Respondent's default on April 6, 2016.
On April 6, 2016, an email was received from the Respondent indicating that he was willing to transfer the Disputed Domain Name to the Complainant. On the same day, the Center emailed the Complainant to ask whether it would like to suspend the proceeding to explore settlement options. The Complainant informed the Respondent that it would settle the dispute provided that the Respondent transfer the Disputed Domain Name and pay for the Complainant's cost of bringing the proceeding. When the Respondent refused, the Complainant informed the Center to proceed with panel appointment.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 12, 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 Panel has determined that the language of the proceeding is English.
4. Factual Background
The Complainant is an independent, family-owned Scottish company which distills and sells Scotch whisky and other selected categories of spirits. It was established in 1887 by William Grant, and is now run by his descendants. The Complainant is the largest of the Scotch whisky distillers remaining in family ownership and is the third largest producer of Scotch whisky in the world with a 10.4% market share. Among the Complainant's core brands is Glenfiddich, a Speyside single malt whisky with sales in excess of a million cases a year.
The Complainant is the owner of a large global portfolio of registered trademarks for the word mark GLENFIDDICH (the "GLENFIDDICH Mark") in the United Kingdom, the United States of America, Canada and the European Union, with its earliest registration dating back to 1960 in the United Kingdom. The Complainant has operated a website at "www.glenfiddich.com" since August 14, 1995 and operates an online shop at "www.shop.glenfiddich.com" from which it sells a variety of its standard whisky brands as well as special, rare editions and glassware.
The Disputed Domain Name was registered on January 28, 2016, long after the Complainant began to use the GLENFIDDICH Mark. The Disputed Domain Name resolves to a page hosted by the Registrar that contains sponsored third party links, most of which are competitors of the Complainant and operate on a pay-per-click basis. When one clicks on a link, the user is directed to a page of "Related links", that include, among other terms, "Whisky", "Single Malt Whisky", "Highland Park Scotch 12 Year" and "Scotch".
The Complainant has submitted evidence that the Respondent appears to be a domain name speculator as he has registered numerous domain names that are identical or confusingly similar to trademarks in which he does not appear to have rights. Among them are domain names with the generic Top-Level Domain ("gTLD") ".club" that incorporate the trademarks of companies that sell whisky and other spirits that are competitors of the Complainant. These include <theglenlivet.club>, <ballantines.club>, <buchanans.club>, and <williamlawsons.club>, among others.
On February 8, 2016, the Complainant's attorney wrote to the Respondent by electronic and postal mail, informing the Respondent of the Complainant's rights in the GLENFIDDICH Mark and demanding that he cease the use of the Disputed Domain Name. The Complainant's attorney did not receive a response.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the GLENFIDDICH Mark based on its longstanding, continuous use as well as its trademark registrations for the GLENFIDDICH Mark in the United Kingdom and several other countries worldwide. The Disputed Domain Name consists of the GLENFIDDICH Mark in its entirety followed by the gTLD ".club", a recently-introduced gTLD made available to the public in 2014.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Since the addition of a gTLD such as ".club" in a domain name may be technically required, such element may generally be disregarded when assessing whether a domain name is confusingly similar to a trademark and does not serve to distinguish a domain name from a complainant's trademark. Conversely, particularly in this case, the use of the gTLD ".club" may confuse Internet users who assume that the Disputed Domain Name refers to a whisky club sponsored by the Complainant. See BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782 and AXA SA v. Anton V Kirillov, WIPO Case No. D2015-1222.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its GLENFIDDICH Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Further, because the Disputed Domain Name resolves to a web page that contains sponsored pay-per-click third party links, the Panel concludes that the Respondent is not using the Disputed Domain Name for a legitimate or bona fide purpose.1
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's GLENFIDDICH Mark.
Second, the Respondent's action of registering the Disputed Domain Name evidences a clear intent to disrupt the Complainant's business by attracting Internet users to the Disputed Domain Name and website to which it resolves by creating a likelihood of confusion with the Complainant's GLENFIDDICH Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web page. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its GLENFIDDICH Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy"). In particular, the registration and use of the Disputed Domain Name that consists of the gTLD ".club" following the Complainant's GLENFIDDICH Mark could confuse Internet users who assume that the Disputed Domain Name was registered by the Complainant to serve as a whisky club for the Complainant's customers.
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used GLENFIDDICH Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name decades after the Complainant obtained its trademark registrations for the GLENFIDDICH Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its GLENFIDDICH Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Fourth, the Respondent's registration of numerous other domain names incorporating third party trademarks to which the Respondent does not appear to have rights is further evidence of the Respondent's bad faith.
Finally, the Respondent's bad faith may also be inferred from his lack of reply to the cease and desist letter sent by the Complainant's attorney prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <glenfiddich.club> be transferred to the Complainant.
Lynda M. Braun
Date: April 17, 2016
1 While there is nothing per se illegitimate in using a domain name parking service that contains third party links, linking a domain name to such a service with a trademark owner's name in mind in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking page is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments Limited / Mr. Cartwright, WIPO Case No. D2007-0267.