Centro de Arbitraje y Mediación de la OMPI
ADMINISTRATIVE PANEL DECISION
The Macallan Distillers Limited v. Andrei Costin
Case No. D2016-2119
1. The Parties
1.1 The Complainant is The Macallan Distillers Limited of Aberlour, Banffshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
1.2 The Respondent is Andrei Costin of London, United Kingdom, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <macallanwhisky.com> (the “Domain Name”) is registered with LCN.COM Ltd. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016. The Response was filed with the Center on November 17, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 24, 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
4.1 The Complainant is a company incorporated in Scotland and operates a distillery located in Craigellachie, Moray, Scotland. It is involved in the distillation, maturation and sale of malt whisky under the name “The Macallan”. It is the successor in business to a business that adopted that brand in 1824. The Complainant’s whisky stills feature on the reverse of Scottish GBP 10 notes.
4.2 The Complainant is the owner of the following registered trade marks for the word mark MACALLAN:
(i) United Kingdom Registered trade mark no 180430 registered on June 2, 1894 in class 33 in respect of inter alia whisky; and
(ii) European Registered trade mark no 22228 registered on November 9, 1998 in class 33 in respect of inter alia whisky.
4.3 The Complainant operates a website promoting “The Macallan” single malt whisky from the domain name <themacallan.com>.
4.4 The Respondent would appear to be an individual located in London.
4.5 The Domain Name was initially registered on November 1, 2011.
4.6 The Domain Name has been used by the Respondent for a website that offers and promotes the sale of The Macallan whisky. The home page for that website comprises a picture of bottles of that whisky upon which has been superimposed in large text “Macallan Whisky” and underneath in smaller text is to be found the words “The Macallan Whisky Experts”. When a cursor is hovered on these words a menu then appears with various links. If those links are clicked upon, various Macallan Whisky’s are offered for sale. If the user then decides to click on a button adding that product to the browser’s “basket”, he or she is then redirected to another website operating under the name “The Whisky Barrel”.
4.7 There appears to be no link or page on the website operating from the Domain Name identifying who the website operator is.
4.8 On March 29, 2016, the Complainant’s representatives wrote to the Respondent demanding that the Respondent explain why he registered the Domain Name and agree to transfer the Domain Name to the Complainant.
4.9 The Respondent responded by email to this letter on April 4, 2016, in which the Respondent stated as follows:
“I will start by saying that I am big fan and lover of the Macallan whisky and based on this I decided to buy the domain name macallanwhisky.com. At first, I wanted to create a blog where I could share my opinion about the Macallan whiskies I’ve tried.
Because of lack of time and confidence in my creative writing skills, I decided that a different way to help the brand I love is to increase their sales by making a website where I would list some of the Macallan Top products and link them to online shops (such as The Whisky Barrel) that sell their products. At the moment of writing this letter, this is what the domain name macallanwhisky.com is all about.
I feel disappointed that the brand I love have decided they want my domain name, as my intentions were just to help and by no means to harm the Macallan Whisky brand.
But if this is the case I feel I should be compensated for the time I invested in building the website (including the cost of hosting and the yearly domain fees) trying to help the brand, without getting any financial gain.”
4.10 In subsequent correspondence the Respondent claimed that his costs and time amounted to GBP 3,045. He also stated:
“I wouldn’t mind getting a selection case of The Macallan sherry oak bottles, my favourite and a The Macallan 1982, which is my birth year, for my collection.”
4.11 The Complainant offered to pay GBP 150 to cover the Respondent’s out-of-pocket expenses in relation to the registration and renewal of the Domain Name.
5. Parties’ Contentions
5.1 The Complainant provides details of its business and marks, the way in which the Domain Name has been used and sets out the history of its correspondence with the Respondent. So far as use of the Domain Name is concerned, it contends that when users of the website operating from the Domain Name click on products offered for sale in such a way as to be taken to another website operating under the name “The Whisky Barrel”, the product is listed as “out of stock” and Internet users are redirected to offers of whisky produced by the Complainant’s competitors.
5.2 The Complainant contends that the Domain Name is confusingly similar to its registered trade marks. It further claims that the Respondent does not have a right or legitimate interest in the Domain Name. In this respect it suggests that the Respondent is “in effect, an unauthorized reseller of the Complainant’s products”. It also cites paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”). In this respect it refers the discussion in this paragraph of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and contends that the Respondent’s website does not satisfy the requirements that (i) the domain name must be used only to sell the trade marked goods; and (iii) the website operating from the domain name must accurately disclose the registrants relationship with the trade mark owner.
5.3 The Complainant further contends that the Domain Name was registered and has been used in bad faith.
5.4 In this respect, the Complainant claims that the Domain Name was registered for the purpose of sale to the Complainant and relies upon the fact that not only does the GBP 3,405 sought exceed the Respondent’s out-of-pockets costs, but that the value of “The Macallan 1982” whisky referred to by the Respondent in correspondence is in the region of GBP 4,000.
5.5 The Complainant also contends that the Domain Name has been used to attract Internet user to the Respondent’s website in a manner that falls within the scope of paragraph 4(b)(iv) of the Policy
5.6 In his Response the Respondent essentially repeats the assertions contained within his email of April 4, 2016. He claims that his use of the Domain Name is “non-profit” and that he has “not gained a penny” from running the website operating from the Domain Name. He does not appear to deny that at times the specific products he features have been out of stock on the “The Whisky Barrel” website, but contends that there are other The Macallan whiskies available for sale on that site.
5.7 The Respondent further complains that the Complainant has mischaracterised his discussions with the Complainant’s representatives in relation to what he sought in return for the transfer of the Domain Name.
5.8 The Respondent also denies the Complainant’s characterisation of him as a “reseller”. He contends that he sells whisky and instead contends that he merely provides links to third party resellers of The Macallan product.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn.
A. Identical or Confusingly Similar
6.3 The Panel accepts that the only sensible reading of the Domain Name is as the words “Macallan” and “Whisky” in combination with the generic Top-Level Domain (“gTLD”) “.com”. Further the Complainant is the owner of two registered trade marks for the word “Macallan” in relation to, inter alia, whisky. In the circumstances, the Domain Name is clearly confusingly similar to a trade mark in which the Complainant has rights. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.4 It is not disputed that the Domain Name has been used for a website that offers the Complainant’s products for sale, but when an attempt is made to purchase those products, the Internet user is redirected to a third party website. The Respondent contends that he has not financially benefited from such activity. Nevertheless regardless of whether this is correct, the character of the website is still undoubtedly commercial.
6.5 The Complainant has characterised the Respondent’s activities as akin to those of a reseller and compared the operation of the website with the conditions laid down for reseller use in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data” case) and refers to the wording of paragraph 2.3 of the WIPO Overview 2.0 in this respect. This states, inter alia, as follows:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. … Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]”
6.6 The Respondent objects to being characterised as a reseller, because he does not actually sell the Complainant’s products. He may be right that his activities are more analogous to someone who redirects Internet users to another’s site than the activities of a reseller. However, the Panel also suspects that the Respondent does not appreciate that this stance undermines rather than helps his case. It fails to appreciate that the Oki Data analysis provides an exception for resellers to a more general rule; i.e., that adopting the trade mark of another to draw Internet users to a website for either the website owner’s or a third party’s commercial benefit, will not normally constitute a bona fide offering of goods or services providing a right or legitimate interest under the Policy.
6.7 Nevertheless, even if the Respondent were able to argue that his activities were analogous to those of a reseller, the Panel agrees with the Complainant that the Respondent cannot successfully rely on Oki Data analysis in this case. In this respect, the Panel accepts the Complainant’s contention that the website operating from the Domain Name does not accurately and prominently disclose the registrant’s relationship with the trade mark holder. Indeed, as far as the Panel can tell the website does not identify any person or entity said to be responsible for the website.
6.8 However, there is an even more fundamental issue in this case. Where a domain name intentionally comprises the trade mark of the Complainant alone or is combined with a term that does not signal that the domain name may be owned and operated by a third party, then this becomes a case of impermissible impersonation by reason of the domain name alone. If that is so, then there is no need to embark upon an Oki Data analysis. This Panel set out the reasons for this in some detail in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031. In particular, after quoting the relevant passage in the WIPO Overview 2.0 the Panel went on to state (starting at paragraph 7.9) as follows:
“Last but by no means least, even were the Respondent to satisfy the Oki Data Data requirements, the Complainant considers this to be a case of impersonation by means of the Domain Name alone. In the relevant section of the WIPO Overview 2.0 quoted above this is expressed as a situation where a respondent has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). However, in the opinion of the Panel, the Complainant’s contention expresses the position referenced in the WIPO Overview 2.0 too narrowly.
The issue was explored by this Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, a case involving the domain name <unofficialblackberry.com> and one of the cases cited by the WIPO Overview 2.0 in this respect. In that decision the Panel stated (starting at paragraph 6.18) as follows:
‘This Panel believes that in a case where the domain name used by a distributor is essentially identical to a trade mark (or a domain name that incorporates a trade mark without some distinguishing feature) then it is strongly arguable that there are no rights or legitimate interests (and there is also bad faith) even if the Oki Data requirements might be satisfied.’
‘There is a clear analogy here with the position in ‘criticism’ site cases. Recently there are a number of cases under the Policy that have held that there can be no rights or legitimate interests in the use of a domain name that comprises another’s trade mark even if the registrant intends to use the domain name for the purposes of a noncommercial site that is critical of the trade mark owner (see, for example this Panel’s decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and the cases referred to therein). The rationale for this approach is that the intentional adoption of a domain name that is essentially identical to or does not distinguish itself from another’s trade mark will involve an impermissible impersonation of the trade mark owner.’
“It is fair to say that this is approach in criticism cases is not universally accepted and this is an area where there is still an ongoing debate amongst panelists. But if this is the right approach in criticism cases (and the Panel still believes that it is), then it is difficult to see why a commercial use by a legitimate reseller of goods of a domain name that is identical to the trade mark for the goods should be treated differently.”
Therefore, the Panel considers impermissible impersonation is not just limited to cases where the Domain Name takes the form “<trademark.tld>“. It may also occur where there is a domain name that incorporates a trade mark with some descriptive feature. In this case, the addition of the Turkish word for “Turkey” is such a descriptive feature. Indeed, the most natural reading of the Domain Name is that it relates to the trade mark owner’s own activities in that particular territory.”
6.9 In the same way as “Turkey” was an insufficiently distinguishing feature in the Johnson & Johnson case, supra, “Whisky” is insufficiently distinguishing so far as the Domain Name is concerned. It merely describes the Complainant’s product. See also Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698.
6.10 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The way that the Domain Name has been used falls within the scope of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) gives as an example of circumstances indication bad faith use:
“you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
6.12 First, the Domain Name alone by unfairly impersonating the Complainant involves an intentional attempt to attract, for commercial gain, Internet users to the Complainant’s websites by creating a likelihood of confusion with the Complainant’s mark. That is sufficient. Second, it would not at all be clear to any person reaching the website that the website is unconnected with the Complainant. In these respects, it does not matter for the purposes of paragraph 4(b)(iv) if the Respondent is correct when he states that he has not personally gained from some activity. It is sufficient that there is an intention that a third party, such as the operators of the website to whom potential purchasers of product are redirected, will commercially gain (see, for example, Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181). The Panel therefore accepts that the Domain Name has been used in bad faith.
6.13 It does not automatically follow from the fact that a domain name has been used in bad faith that it was registered in bad faith. However, subsequent use is frequently compelling evidence of a registrant’s motives for registration and therefore bad faith registration can often be inferred from bad faith use.
6.14 In the present case the Respondent contends that the Domain Name was registered not with its present use in mind. He claims that he is a fan of the Complainant’s products and therefore intended to create a blog, presumably associated with these products. No evidence is provided in this respect as it would appear that this intended blog was never realised. It is, therefore, far from clear what form the alleged blog would take and whether it was intended to be commercial in nature (a fact that would be relevant to any bad faith analysis – as to which see paragraph 2.5 of the WIPO Overview 2.0).
6.15 Nevertheless, even if the Panel were to accept that the Respondent’s initial reason for registering the Domain Name was to use it for a blog, and even if the Panel were to assume that this blog was intended to be noncommercial, the Panel still concludes that the Domain Name was registered in bad faith. The reason is that in the Panel’s opinion the registration of a domain name that impersonates a trade mark owner, is likely to constitute registration in bad faith even if it is intended that the domain name would be used for a noncommercial fan site (See, for example, Dr. lng. h.c. F. Porsche AG v. Gaurav Khanna, Carnity, WIPO Case No. D2014-1618).
6.16 In the circumstances, the Panel concludes that the Domain Name has been both registered and used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.17 In light of the Panel’s findings there is no need to consider the parties competing contentions on the question of whether the Domain Name was registered with the intention of sale to the Complainant and the significance of otherwise of the Respondents statements in correspondence regarding the sums he would accept in return for transferring the Domain Name to the Complainant.
7.1 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 <macallanwhisky.com> be transferred to the Complainant.
Matthew S. Harris
Date: November 30, 2016