WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patrón Spirits International AG v. Domains By Proxy, LLC / Compton Duke
Case No. D2017-1395
1. The Parties
The Complainant is Patrón Spirits International AG of Schaffhausen, Switzerland, represented by Jones Day, United States of America ("United States" or "US").
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Compton Duke of Brooklyn, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <patronfest.com> (the "Disputed Domain Name") 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 July 19, 2017. On July 20, 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 disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 27, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on July 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 18, 2017.
The Center appointed John Swinson as the sole panelist in this matter on August 25, 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 the maker and distributor of Patrón tequila, which is an internationally recognized brand with products distributed in more than 100 countries worldwide.
The Complainant has rights to the US trade mark registration number 1,809,473 for PATRON, registered since December 7, 1993, and has rights to 18 other US trade marks that incorporate the PATRON mark (together the "Trade Mark") registered over subsequent years.
The Complainant also owns numerous domain names which incorporate the Trade Mark which it uses to advertise and promote its tequila including <patrontequila.com>, <patronspirits.com> and <patronsocialclub.com>.
The Disputed Domain Name was registered on January 25, 2016. The Complainant became aware of the Disputed Domain Name in late 2016 when the then owner of the Disputed Domain Name (identified by the Complainant to be City Elite Group) was using the website associated with the Disputed Domain Name to promote unauthorized events called "Patron Fest" (and later called "Tron Fest") which were marketed as being "The Nation's Ultimate Party Experience for Patron Lovers".
The Respondent is Compton Duke, an individual of the United States. The Respondent did not file a Response and consequently little information is known about the Respondent. However, based on information in the Complaint, the Respondent appears to be affiliated with City Elite Group, the company promoting the events.
On November 30, 2016, the Complainant sent the Respondent a cease-and-desist letter objecting to its registration of the Disputed Domain Name and use of the Trade Mark on the associated website, promotional materials and social media pages. On December 1, 2016, a representative from the Respondent phoned the Complainant and agreed to remove the Trade Mark from the website associated with the Disputed Domain Name and to change the name of its events. At that point, the event changed from "Patron Fest" to "Tron Fest", however the Respondent failed to transfer the Disputed Domain Name and continues to link the Disputed Domain Name to websites promoting its events.
At the time the Complaint was filed, the Disputed Domain Name redirected to an Eventbrite webpage for an event known as "Tron Fest" which the Complainant submits is intended to refer to the name "Patrón". The Complainant argues that this intended association with the Complainant's tequila is evidenced through the Respondent's use of statements such as "America's ultimate tequila lover party" and the inclusion of photographs of tequila bottles.
5. Parties' Contentions
Identical or confusingly similar:
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Complainant's Trade Mark. The only differences between the Disputed Domain Name and the Trade Mark is the inclusion of the word "fest" and the addition of the suffix ".com".
Rights or legitimate interests:
The Complainant submits that the Respondent lacks rights or legitimate interests in the Disputed Domain Name because the Respondent is not known by the Disputed Domain Name, is not a licensee of, or otherwise affiliated with, the Complainant and has not been authorized by the Complainant to use the name "Patrón" or the registered Trade Mark. In addition the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for any genuine noncommercial purpose.
Rather, the Complainant argues that the Respondent has registered and is using the Disputed Domain Name to confuse and divert Internet users from the Complainant's official websites and sponsored events to the Respondent's own websites and social media pages for the primary purpose of commercial gain. The Complainant submits that events such as "Patron Fest", as promoted on the website associated with the Disputed Domain Name, compete directly with official events organized by the Complainant such as the Patrón Secret Dining Society and Patrón's Perfectionist Cocktail Competition.
Registration and use in bad faith:
The Complainant submits that the Respondent registered, used and is holding the Disputed Domain Name willfully, in bad faith and in disregard of the Complainant's Trade Mark rights.
The Complainant submits that the Respondent was aware of the Patrón product, brand and Trade Mark at the time it registered the Disputed Domain Name and that the Respondent registered the Disputed Domain Name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion.
The Complainant provides evidence of correspondence between the Complainant and the Respondent whereby the Respondent is clearly informed about the Complainant's Trade Mark and corresponding rights. The Respondent indicated that it would stop infringing activities but has failed to comply with the Complainant's reasonable requests. The Complainant submits that this is a further demonstration of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Irrespective of the fact the Respondent has not filed a Response, the onus of proving these elements remains on the Complainant. The Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel accepts that the Complainant has rights to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark for the following reasons.
The addition of the descriptive abbreviation "fest" does not detract from the identical or confusingly similar nature of the Disputed Domain Name. The Trade Mark is the dominant and distinctive element of the Disputed Domain Name. The addition of the generic suffix ".com" is to be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Network, Inc. v. Emil Boc, WIPO Case No. D2009-1535.
For the above mentioned reasons, the Complainant is successful on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This finding has been reached after consideration of the following facts:
- There is no evidence to suggest that the Respondent has ever been known by the Disputed Domain Name.
- The Respondent changed the website associated with the Disputed Domain Name following receipt of a cease-and-desist letter from the Complainant.
- The Panel accepts that the Respondent's use of the Disputed Domain Name is unauthorized and without permission from the Complainant.
- The Panel finds it highly probable that the Respondent registered and used the Disputed Domain Name for the primary purpose of capitalizing on the Complainant's fame and goodwill for commercial gain.
- The Respondent, despite having the opportunity to present a defence, chose not to submit a Response. Consequently, the Respondent has not rebutted the Complainant's prima facie case.
The Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source of the website and affiliation with the Complainant. This is evidence of registration and use in bad faith under paragraph 4(a)(iii) of the Policy. There is little doubt that the Respondent was knowingly using the Trade Mark, along with images of tequila bottles and references to the Complainant's product, to create an illusion that the event being promoted by the Respondent was associated with or sponsored by the Complainant.
The Panel considers the fact that the Respondent failed to stop using the Disputed Domain Name and displaying material pertaining to the Complainant following correspondence with the Complainant to be a further demonstration of bad faith. In addition, the Respondent's use of a privacy service when registering the Disputed Domain Name, in these circumstances, supports the Panel's conclusion regarding bad faith.
For the reasons listed above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <patronfest.com> be transferred to the Complainant.
Date: September 8, 2017