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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Grant & Sons Limited v. Ageesen Sri, Locksbit Corp. / WhoisGuard Protected, WhoisGuard, Inc.

Case No. D2016-1049

1. The Parties

Complainant is William Grant & Sons Limited of Dufftown, Banffshire, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Demys Limited, United Kingdom.

Respondent is Ageesen Sri, Locksbit Corp. of Toronto, Ontario, Canada / WhoisGuard Protected, WhoisGuard, Inc. of Panama.

2. The Domain Names and Registrar

The disputed domain names <balvenie.xyz> and <glenfiddich.xyz> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 31, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 2, 2016.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2016.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on July 6, 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.

4. Factual Background

Complainant is a distiller of Scotch whiskey and other spirits, including the Glenfiddich and Balvenie brands of single malt Scotch whiskey. Complainant has registered trademarks for both brands in several countries. Complainant’s UK trademarks for the brands date back to the 1960s.

Respondent registered the disputed domain names on April 27, 2016. Screenshots of the websites associated with the disputed domain names are attached to the Complaint and both display pay-per-click advertisements, including links to competing brands of whisky.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain names are identical to Complainant’s GLENFIDDICH and BALVENIE marks. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names because there is no evidence that Respondent has been commonly known by either of the disputed domain names, Respondent is not licensed to use Complainant’s marks, Respondent does not have trademarks that correspond to the disputed domain names, Respondent has not done business under the names GLENFIDDICH or BALVENIE, Respondent has not used the disputed domain names for a legitimate noncommercial or fair use (and Complainant asserts that no legitimate or fair use would be possible), Respondent did not respond to Complainant’s letter regarding the disputed domain names and attempt to justify the registration of the disputed domain names, and Respondent is using the disputed domain names for pay-per-click advertising and did not remove such advertising upon receiving Complainant’s letter. Complainant asserts that Respondent registered the disputed domain names and is using them in bad faith because the pay-per-click websites associated with the disputed domain names are designed to attract users for commercial gain by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement of Respondent’s websites.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s trademark registrations attached to the Complaint demonstrate that Complainant has rights in the GLENFIDDICH and BALVENIE marks.

The disputed domain names consist of the GLENFIDDICH and BALVENIE marks plus the “.xyz” generic Top-Level Domain (“gTLD”). The addition of the “.xyz” gTLD does not distinguish the disputed domain names from Complainant’s marks. Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd., WIPO Case No. D2015-0827 (“The only difference between the two is the addition of the ‘.social’ TLD to that mark to form each one of the disputed domain names, with that addition being irrelevant in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus typically ignored.”); WRc plc v. W&R Corp., WIPO Case No. D2007-1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark”).

Accordingly, the Panel finds that the disputed domain names are identical to trademarks in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, or that Respondent has been commonly known by <balvenie.xyz> or <glenfiddich.xyz>. Rather, Complainant asserts that Respondent is not licensed or otherwise permitted to use Complainant’s marks and that Respondent has no trademarks that incorporate the BALVENIE or GLENFIDDICH marks and has not traded as BALVENIE or GLENFIDDICH. These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <telstra> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).

Complainant also attached to the Complaint screenshots of the websites associated with the disputed domain names, which websites display pay-per-click advertisements including links to competing brands of whisky. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” See MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009. See also The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (“The use of a domain name incorporating the Complainant’s AAA mark to attract Internet users to a pay-per-click website containing links to other providers of competing products and services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6 (where pay-per-click “links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion”).

Complainant also argues that “no use of any domain name identical to a complainant’s mark could be considered a fair or legitimate use given the inevitability of confusion to Internet users.” Because there are other bases for a finding of “no rights or legitimate interests”, the Panel need not rely on this rationale to rule in Complainant’s favor. Without commenting on any particular case relating to criticism sites or fan sites, the Panel notes that paragraphs 2.4 and 2.5 of the WIPO Overview 2.0 contain cases where other Panels have reached conclusions contrary to this argument by Complainant, and paragraph 2.6 of the WIPO Overview 2.0, which Complainant quotes in its Complaint two paragraphs after making this argument, states that “where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value”.

Based on the findings set forth above, the Panel holds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Complainant asserts that Respondent has engaged in bad faith registration and use under paragraph 4(b)(iv) above through Respondent’s use of the disputed domain names as pay-per-click sites. “The unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.” Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344. See also The American Automobile Association, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2010-0565 (“the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith”).

In addition, Respondent’s registration of the disputed domain names over 50 years after Complainant’s adoption and use of the BALVENIE and GLENFIDDICH marks, and Respondent’s use of the disputed domain names in connection with competing brands of whiskey (all of which suggests that Respondent is aware of Complainant’s marks and is attempting to trade on their goodwill), also is evidence of bad faith. See American Automobile Association, Inc. v. Nevis Domains LLC, supra.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and are being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

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 names, <balvenie.xyz> and <glenfiddich.xyz>, be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: July 14, 2016

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