WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Grant & Sons Limited v. Domain may be for sale, Check afternic.com Domain Admin, Domain Registries Foundation
Case No. D2017-1518
1. The Parties
The Complainant is William Grant & Sons Limited of Dufftown, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, United Kingdom.
The Respondent is Domain may be for sale, Check afternic.com Domain Admin, Domain Registries Foundation of Panama City, Panama, represented by Willenken Wilson Loh & Lieb, LLP, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <balveniescotch.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 August 4, 2017. On August 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. The Response was filed with the Center on August 31, 2017.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 4, 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 established in 1887, and is incorporated in the United Kingdom. It is the third largest producer of Scotch whisky in the world with a 10.4% market share. The Complainant's core brands include the single malt whisky BALVENIE. The Complainant is the owner of a large number of trademarks registered in various jurisdictions. It is for example the owner of European Union registered trade mark BALVENIE, No. 192591 registered on January 7, 1999; and also United Kingdom registered trade mark BALVENIE, No 885731 registered on October 19, 1965.
The disputed domain name was registered on April 20, 2017 and it resolves to a website including
pay-per-click ("PPC") links, some of which resolve to the websites of the Complainant's competitors.
5. Parties' Contentions
According to the Complainant the website to which the disputed domain name resolves has displayed varying content over time. At one moment a malicious malware warning appeared, whereas at another time a conventional list of click-through hyperlinks was displayed. In the latter instance, the links ultimately directed web users to the Complainant's competitors' products, such as the competing brands GLENMORANGIE and MACALLAN.
The Complainant also asserts that the Respondent has been party to at least ten UDRP disputes and that transfer of the disputed domain name was ordered each and every time. According to the Complainant the Respondent is a cybersquatter with a particular modus operandi which involves the Respondent alleging that due to it operating a large scale and automated acquisition scheme, it lacks knowledge of complainants. Such claims relating to each of the ten complainants in the cases cited are not credible, the Complainant asserts. Further, the Respondent's repeated claims in various matters of operating a "well-known dispute resolution policy" are, according to the Complainant, a smokescreen with which it attempts to legitimize its activities. Its accompanying request for an order to transfer disputed domain names without making findings of fact or conclusions was held by a previous panel to be motivated by a desire to avoid a negative track‑record with UDRP disputes, rather than by a genuine intention to avoid wasting panels' resources on undisputed matters. The Respondent is said to have made the same request repeatedly in matters concerning other complainants, while asserting lawful and fair methods used to acquire a high volume of domain names, without however denying specific assertions or a connection with previous cases. One previous panel, as cited in the Complaint, also pointed out that "there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent in this case, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy".
The Complainant points out that the disputed domain name differs from its BALVENIE trade mark only by the addition of the term "Scotch". The Complainant's BALVENIE brand is used in relation to a Scottish whisky, and the Complainant asserts that the term "Scotch" is inherently associated with that product. Its inclusion in the disputed domain name does nothing to distinguish the latter from the Complainant's mark, but instead only increases the potential for confusion.
The Complainant asserts that it has located no evidence that the Respondent has been commonly known by the names "Balvenie" or "Balvenie Scotch" prior to or after the registration of the disputed domain name. The Complainant has not granted the Respondent any consent, license, permission, or acquiesced to the use of its trademark for the registration of the disputed domain name. The Complainant has identified nothing to suggest that the Respondent owns any trademarks that incorporate or are identical to the terms "Balvenie" or "Balvenie Scotch", or has ever traded under those terms. The Complainant further asserts that the disputed domain name has not been used in connection with any legitimate noncommercial or fair use and without intent for commercial gain. The Complainant also contends that the PPC advertising links capitalize on the value of the Complainant's mark, and that the related advertising does not confer any legitimate interests on the Respondent.
The Complainant points out that previous UDRP panels have found that the use of a domain name that capitalizes on the reputation and goodwill of a complainant's mark to host a parked page comprising PPC links does not represent a bona fide offering where such links lead to products that compete with the complainant. That is the case even where links generated by third parties appear automatically on parked pages, and even where a respondent does not directly benefit from this practice. A respondent cannot disclaim responsibility for automatically generated PPC links.
Further according to the Complainant, the Respondent's use of the disputed domain name in association with PPC advertising will inevitably cause confusion amongst web users searching for the Complainant and its BALVENIE trade mark. Web users will be misdirected to unrelated third parties, including some of the Complainant's competitors.
In conclusion, the Complainant asserts that, given that the disputed domain name is confusingly similar to its marks, it could never be used in association with PPC advertising by the Respondent in a manner that would not constitute use in bad faith.
The Respondent asserts that it acquires and holds generic and descriptive domain names in high volume and through lawful and fair methods. It maintains that is has "a well-known dispute resolution policy" which invites Complainants to contact it regarding domain names that correspond to their trademark. It also asserts that is has a "liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, typically irrespective of the legitimacy of the complainant's arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings". The Respondent asserts that it has never heard of the Complainant but nonetheless contacted the Complainant and offered a voluntary transfer of the disputed domain name at issue, an offer rejected by the Complainant. The Respondent reiterates that it is willing to transfer the disputed domain name to the Complainant, and requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a).
The Respondent asserts that in numerous prior UDRP decisions, panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name, and improper to issue any findings of fact in such cases. The Respondent cites a number of such decisions and quotes passages from them in its Response. The Respondent also points out that some UDRP panels have stated that it would be unwise to issue findings of fact or conclusions other than an order transferring the domain name, in case the same issues were to arise in later proceedings.
The Respondent therefore requests that the disputed domain name be transferred to the Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.
6. Discussion and Findings
Transfer without substantive consideration
The Parties in this matter are at odds in relation to the Panel giving reasons. The Respondent requests that the Panel order a transfer without addressing substantive issues, whereas the Complainant requests a motivated decision.
The Respondent indicates that it consents to the transfer and therefore it would constitute a waste of the Panel's time and resources to give reasons for ordering a transfer. The Complainant alleges that for the Respondent this position reflects repeat practice: it has engaged in a pattern of acquiring domain names incorporating other parties' distinctive trade marks, and then conceding transfer when challenged via the UDRP. The Respondent then requests a bare transfer so as to avoid a track record of adverse findings addressing Policy factors which would highlight its ongoing cybersquatting practice. In the meantime however the Respondent would still remain in a position to profit regularly from its practice.
It is apparent from previous UDRP panel decisions that the Respondent has regularly engaged in this practice. However, it is not for the Respondent to acquire domain names containing other parties' distinctive trade marks, then to turn the tables and set up a dispute resolution policy of its own which a Complainant would be obliged to follow (possibly even at the risk of adverse consequences under the UDRP). Furthermore, the Respondent's submission that it comes to acquire domain names like the present one, which incorporate another party's highly distinctive trade mark, automatically in the course of a high volume of acquisitions, is on one level wholly irrelevant and on another level, wholly lacking in credibility.
The interests of the Policy and the URDP are here served by the Panel issuing substantive reasons for the order to transfer the disputed domain name.
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's BALVENIE trademark. However, it contains that distinctive trademark in its entirety and as its initial and most prominent part. The addition of the term "Scotch" does nothing other than to reinforce the suggestion of some connection with the complainant, owner of the BALVENIE registered trademark and the goodwill vested therein. It is in relation to whisky, commonly also known as "Scotch", that the relevant trade mark is used and has acquired a reputation across multiple jurisdictions. The disputed domain name suggests a legitimate connection with the registered trade mark owner, which does not in fact exist.
The Panel holds that the disputed domain name is confusingly similar to the BALVENIE trademark of the Complainant.
B. Rights or Legitimate Interests
The website to which the disputed domain name resolves has at some point been a parking page containing hyperlinks, including some to products of competitors of the Complainant. At other times, and when accessed by the Panel on September 17, 2017, it resolved to a malicious malware warning; obviously no rights or legitimate interests attached in such case. Passive holding of a domain name including a distinctive trade mark to which a Respondent has no other rights does not give rise to rights or legitimate interests. It often amounts to nothing other than an illegitimate attempt to acquire a benefit from the goodwill attaching to a mark that is the exclusive property of another party. In terms of a parking page with hyperlinks that generate a financial benefit, this is not a practice that is of a kind to generate rights or legitimate interests in the Respondent. Rather it is an attempt also to benefit financially from the reputation that attaches to a distinctive trademark belonging to another party, who has in no way given permission for its mark to be used or incorporated in the disputed domain name. There is in this case no evidence of any legitimate reason why the Respondent would be entitled to incorporate the BALVENIE registered mark in the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The registered trade mark of the Complainant, which the Respondent incorporated into the disputed domain name without authority or permission, is highly distinctive. The Respondent indicates that it acquires "generic and descriptive domain names in high volume and through lawful and fair methods". However, the disputed domain name is not generic or descriptive: the secondary meaning attaching to the BALVENIE mark has come about through its use and promotion by the Complainant. Further, it appears unlikely to the Panel that any systematic or high volume acquisition of domain names should lead the Respondent to acquire, coincidentally and innocently, a disputed domain name incorporating a combination of the terms "Balvenie" and "Scotch". Finally, the Respondent has failed to identify what mechanisms or processes it uses to acquire said domain names and in particular how it screens against known marks (also as to use). The Respondent has in fact acquired a domain name containing a distinctive trademark which it has joined to a term that suggests the Respondent knows all about the mark and what it stands for in commerce. Further it has used the disputed domain name for PPC purposes: whoever may benefit from this practice, it is not one that is of good faith as it rides on the coattails of another party's reputation. Finally, where a disputed domain name incorporates a distinctive trade mark with a widespread reputation, even passive holding has consistently been held to constitute bad faith use.
Therefore the Panel holds that the disputed domain name was registered and 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 <balveniescotch.com> be transferred to the Complainant.
William A. Van Caenegem
Date: September 18, 2017