WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heaven Hill Distilleries, Inc. v. Nguyen TNCOFFEE
Case No. D2017-0359
1. The Parties
The Complainant is Heaven Hill Distilleries, Inc. of Bardstown, Kentucky, United States of America ("United States"), represented by Wyatt, Tarrant & Combs, United States.
The Respondent is Nguyen TNCOFFEE of Kon Tum, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <evanwilliamswhiskey.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, 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 March 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 28, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 3, 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 is engaged in the alcoholic drinks industry. The Complainant is the registered proprietor of a number of trademarks around the world comprising the terms "Evan Williams", including United States trademark No. 695029 EVAN WILLIAMS registered on March 22, 1960 in respect of International class 33 (for whiskey), which has been in continuous use in commerce since July 1955.
The Complainant also has registered a number of domain names comprising "evanwilliams" including <evanwilliams.com> registered on December 25, 1997 and operated a website using that domain name since at least March 2011.
The Respondent registered the disputed domain name on October 11, 2016. The disputed domain name does not resolve to an active page.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its EVAN WILLIAMS trademark, as it is composed of EVAN WILLIAMS trademark, wholly incorporated, with only the addition of the generic term "whiskey", for the goods the Complainant uses its trademark in connection with.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not being used for a bona fide offering of goods and services. Instead, the Respondent is simply diverting Internet traffic intended for the Complainant by using a domain name that is confusingly similar to the Complainant's trademark. The Respondent is also using a domain name that was selected by its trademark value, rather than its generic meaning. The use of EVAN WILLIAMS to create a domain name indicates that Respondent sought to create an impression of association with the Complainant. The Respondent is not commonly known by the name EVAN WILLIAMS. Finally the Respondent is not engage in any legitimate fair use of the disputed domain name.
The Complainant states that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent registration of the disputed domain name was in bad faith because the Respondent knew of Complainant's trademark. The Respondent should have done a trademark search or factual search when selecting a domain name. The Respondent was fully aware of the Complainant trademark when it registered the disputed domain name. It defies comprehension to believe that the Respondent simply decided to use a well-known trademark such as EVAN WIILLIAMS and to combine that trademark with the generic term for goods Complainants sells under the trademark without knowledge of the mark. There could be only one logical purpose for such an act — to trade on the goodwill of the Complainant's well known trademark. The Respondent continued use of the disputed domain name demonstrates that the disputed domain name is being used in bad faith. Bad faith use is evidenced, as in this case, when the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, or other online location by creating a likelihood of confusion with the Complainant's trademark.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name the Complainant must prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark EVAN WILLIAMS.
The disputed domain name <evanwilliamswhiskey.com> is confusingly similar to the Complainant's trademark. The disputed domain name features the Complainant's trademark in its entirety and the descriptive word "whiskey" that the Panel finds not to be distinguishing. The generic Top-Level Domain ("gTLD") designation ".com" may be disregarded.
Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark in the disputed domain name. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademark right for the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the burden of production on the second element shifts to Respondent.
The Respondent has not replied and the disputed domain name is not currently in use so there is nothing from the record to conclude that Respondent may have rights or legitimate interest in the disputed domain name. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to succeed under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was both registered by the Respondent in bad faith and has been used in bad faith.
A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. They are as follows:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purposes of selling, renting or otherwise transferring the 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 your documented out-of-pocket costs directly to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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."
Key to the question of bad faith is whether, at the time of registration of the disputed domain name, the Respondent knew of the Complainant's reputation and interest in the EVAN WILLIAMS mark.
The Panel is of the view that the very selection of the disputed domain name combining the mark EVAN WILLIAMS with the term "whiskey", which is descriptive of the products sold by the Complainant, suggests that the Respondent was clearly aware of the Complainant's mark and likely sought to benefit in some way from the possible confusion or association of the disputed domain name with the Complainant and its trademark.
As to the use of the disputed domain name, the Panel notes that the disputed domain name does not resolve to an active page. Such passive holding of the disputed domain name does not prevent a bad faith finding in this case.
In accordance with the evidence provided by the Complainant in the present proceeding, the Panel does not envisage any use of the disputed domain name, confusingly similar to the Complainant's mark, that would not be illegitimate, as Internet users could likely believe that the disputed domain name and corresponding website are operated by, or affiliated with, the Complainant. As stated, amongst others, in Missoni S.p.A. v. William Song, WIPO Case No. D2012-0208 (where the domain name at issue resolved to a landing page), "[the] passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith" (see also the leading case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <evanwilliamswhiskey.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: April 17, 2017