WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pernod Ricard, SA v. Benny Hill, EastChester
Case No. D2017-0119
1. The Parties
The Complainant is Pernod Ricard, SA of Paris, France, internally-represented.
The Respondent is Benny Hill, EastChester of Bronx, New York, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <pernod-ricardusa.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2017. On January 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 proceedings commenced on January 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 23, 2017. 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 1975 and is one of the world largest companies within the wines and spirits sector. The Complainant is listed on the Paris Exchange Standard and holds several international registrations for the trademark PERNOD RICARD as well as a registration of the mark PERNOD RICARD USA in the US, registered on July 29, 2003. The Complainant is also the owner of several domain names comprising the PERNOD RICARD mark, including <pernod-ricard-usa.com> and <pernodricardusa.com>.
According to publicly available records, the disputed domain name <pernod-ricardusa.com> was registered on December 1, 2016. The disputed domain name resolves to a website that purports to be the website of a company with the name "Ricard Publication", which includes third-party advertisements. According to the Complainant, it is a generic template website but does not function as one.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to the Complainant's registered trademark PERNOD RICARD USA and is confusingly similar to other registered trademarks in which the Complainant has rights.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has thus not been licensed or has received any other authorization from the Complainant to register the disputed domain name, nor has the Respondent any business relations with the Complainant. Further, there is no evidence that the Respondent is using the disputed domain name for a bona fide offering of goods or services, nor that it can possibly have legitimate interests in the disputed domain name.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The disputed domain name is used for a generic template website but does not function as one.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <pernod-ricardusa.com> is identical to the Complainant's registered trademark PERNOD RICARD USA, since the generic Top-Level Domain ".com" is usually disregarded for the purpose of the Policy.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. The disputed domain name has been used for a website that purports to be the website of a company with the name Ricard Publication. Based on the information provided by the Complainant there is however reason to doubt whether this company exists, and even if it did there is no apparent, legitimate reason a business with that name should register and use the disputed domain name. In addition to this there is no immediate and obvious connection between the Respondent and the said company and since the Respondent did not file a response and did thus not explain why it chose the disputed domain name, the Panel believes that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and the evidence on record of the extent of use of the Complainant's trademark, including in the country of the Respondent, and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without the knowledge of the Complainant and the Complainant's mark. This is evident in the Respondent's choice of the disputed domain name, which is identical to the Complainant's mark and which is further nearly identical to the domain name that the Complainant uses for its US website namely "www.pernod-ricard-usa.com". Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As stated above in Section 6.B, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Since the disputed domain names has been used for a website that contains third-party advertisements as well as the following copyright note: "Copyright 2017 pernod-ricardusa.com All rights reserved", the Panel finds that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
Noting that the disputed domain name incorporates a registered and well established trademark, that on the present record there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) are also fulfilled in this case.
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 <pernod-ricardusa.com> be transferred to the Complainant.
Date: March 6, 2017