WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Grant & Sons Limited v. Tobias Schopf
Case No. D2017-2096
1. The Parties
Complainant is William Grant & Sons Limited of Dufftown, Banffshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
Respondent is Tobias Schopf of Playa Del Rey, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name is <monkeyshoulderus.com> which 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 October 26, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2017.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 15, 2017. This Panel finds that it was properly constituted. This 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
Complainant has rights over the MONKEY SHOULDER trademark for which it holds several trademark registrations, such as registration No. UK00002366898 with the Intellectual Property Office of the United Kingdom, registered on December 10, 2004; No. 4575486 with the European Union Intellectual Property Office, registered on August 21, 2006; and No. 4239097 with the United States Patent and Trademark Office, registered on November 6, 2012; all of them registered in class 33.
Complainant is the registrant of the domain name <monkeyshoulder.com> created on May 27, 2004.
The disputed domain name was created on June 9, 2017. The disputed domain name resolves to a generic parking page.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is a company incorporated in the United Kingdom, established in 1887, which distills Scotch whisky and other spirits. Complainant is the third largest producer of Scotch whisky in the world with a 10.4% market share.
MONKEY SHOULDER is one of Complainant’s core brands and is a blended Scottish whisky. Complainant derived the name of its MONKEY SHOULDER trademark from malt whisky lore which tells of a temporary injury suffered by malt-men when turning the barley needed for the distillation process by hand. This injury was nicknamed “monkey shoulder”.
Complainant is the owner of a large global portfolio of registered trademarks for MONKEY SHOULDER. The oldest of its trademarks pre-dates the registration of the disputed domain name by approximately 13 years. Complainant also operates a website at “www.monkeyshoulder.com”.
The MONKEY SHOULDER whisky was formally launched in the United States in 2012 (some five years before the disputed domain name’s registration) and its popularity was such that it remained in short supply for some time.
A Google Internet search for the term “monkey shoulder” showed that every result relates to Complainant’s MONKEY SHOULDER whisky trademark. Complainant’s MONKEY SHOULDER whisky has received media coverage, such as in The Spirits Business, BBC and Food & Beverage Magazine.
The disputed domain name is confusingly similar to Complainant’s MONKEY SHOULDER trademark. The addition of the initials “us” – presumably an acronym representing “United States” – does nothing to distinguish the disputed domain name from said trademark. Complainant’s well-known and highly distinctive MONKEY SHOULDER trademark is the dominant element of the disputed domain name, thus confusion between the disputed domain name and Complainant’s trademark is inevitable.
Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant has found no evidence that Respondent has been commonly known by the names MONKEY SHOULDER or MONKEY SHOULDER US prior to or after the registration of the disputed domain name, or that Respondent has ever traded under any of those names. Respondent is not a licensee of Complainant and has not received any permission or consent from Complainant to use its trademark. Complainant has found no evidence that Respondent owns any trademark incorporating the terms MONKEY SHOULDER or MONKEY SHOULDER US.
The website associated with the disputed domain name is inactive, being passively held, and therefore the disputed domain name has not been used in connection with bona fide offerings of goods or services. Respondent cannot obtain or derive any rights or legitimate interests through its passive holding of the disputed domain name.
Given the global fame of its trademark, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interest upon Respondent, given the confusing similarity of the disputed domain name to Complainant’s trademark.
Complainant’s agent wrote to Respondent on July 31, 2017, and Respondent did not reply to it. Had Respondent an acceptable explanation for registering the disputed domain name or a reasonable legitimate interest in holding the disputed domain name then it would have been reasonably expected to come forward promptly with such an explanation. That Respondent has not is strongly indicative that it has no such legitimate interests.
The disputed domain name was registered and is being used in bad faith.
Given the fame, widespread use and reputation of Complainant and its MONKEY SHOULDER trademark, it is inconceivable that Respondent could have registered the disputed domain name without Complainant’s trademark in mind and with good-faith intentions. It is inconceivable that Respondent did not have Complainant in mind when it registered the disputed domain name. As such the disputed domain name was registered in bad faith.
Respondent’s passive holding of the disputed domain name constitutes bad faith, pursuant to section 3.3 of the WIPO Overview 3.01 .
Complainant is very well-known around the world and its MONKEY SHOULDER trademark has been used for approximately 13 years prior to the registration of the disputed domain name and is a well-established brand in the United States, where Respondent is located.
Complainant’s agent wrote to Respondent on July 31, 2017, but did not receive a response. Had Respondent any evidence of an actual or genuine contemplated good-faith use then it would have been reasonable to expect Respondent to come forward swiftly with any such evidence, rather than ignore Complainant’s formal notice. Complainant’s agent wrote to Respondent at the address given on the WhoIs but did not receive a reply, therefore it does not know whether the contact details are false or not.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the MONKEY SHOULDER trademark.
The disputed domain name entirely incorporates the MONKEY SHOULDER trademark, adding a suffix (“us”) and the generic Top-Level Domain “.com”. The addition of such suffixes is not enough to avoid the confusing similarity with Complainant’s trademark (see Bollore v. Wuxi Yilian LLC, WIPO Case No. D2017-0442, and BHP Billiton Innovation Pty Ltd v. Victor, WIPO Case No. D2016-2443).
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never authorized Respondent to use the MONKEY SHOULDER trademark, and that Respondent is not commonly known by the disputed domain name. The evidence in the file shows that the MONKEY SHOULDER trademark has been used in commerce for a number of years. Complainant further contends that the disputed domain name points to an inactive website, which cannot be deemed as a bona fide offering of goods or services.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.2 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s registration and use of its MONKEY SHOULDER trademark preceded the creation of the disputed domain name by a number of years (including in the United States, country where Respondent is domiciled pursuant to the WhoIs), the widespread use and reputation of Complainant and its MONKEY SHOULDER trademark, and that Complainant’s trademark is composed of two words which confers to it certain distinctiveness being the trademark entirely reproduced within the disputed domain name with the term “us” added, this Panel is of the view that Respondent should have been aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name.
Complainant supplied a screenshot of the website linked to the disputed domain name, which shows the text “This Web page is parked FREE, courtesy of GoDaddy.com”, which may be deemed as passive holding absent any offer of products or services or any information on any topic.
Several UDRP decisions have held that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.3 It seems to this Panel that there are no bases to conceive a legitimate use of the disputed domain name by Respondent.4 In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Complainant is a well-established company, (ii) Respondent is using Complainant’s trademark at the disputed domain name without Complainant’s authorization, (iii) the particular distinctiveness of Complainant’s trademark which is integrated by two words, (iv) the disputed domain name incorporates Complainant’s trademark in its entirety, coupled with just an irrelevant suffix, (v) the registration and use of Complainant’s trademark preceded the registration of the disputed domain name by a number of years, and (vi) the lack of Response, which is indicative that Respondent either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.
In sum, the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the likely intention to benefit from the reputation and goodwill of Complainant’s trademark, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <monkeyshoulderus.com> be transferred to Complainant.
Date: December 29, 2017
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact”. See also section 2.1 of the WIPO Overview 3.0.
3 See section 3.1 of the WIPO Overview 3.0.
4 See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”.