WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heaven Hill Distilleries, Inc. v. Nexperian Holding Limited / Shi Lei
Case No. D2018-0002
1. The Parties
The Complainant is Heaven Hill Distilleries, Inc. of Bardstown, Kentucky, United States of America (“United States”), represented by Wyatt, Tarrant & Combs, LLP, United States.
The Respondent is Nexperian Holding Limited / Shi Lei of Hangzhou, Zhejiang, China.
2. The Domain Names and Registrars
The disputed domain names <evanwiliamsdugout.com>, <evanwillamsdugout.com>, <evanwilliamdugout.com>, <evanwilliamsdugot.com>, and <evanwilliamsdugou.com> are registered with HiChina Zhicheng Technology Ltd. The disputed domain names <evanwiliamsdugout.xyz>, <evanwillamsdugout.xyz>, <evanwilliamdugout.xyz>, <evanwilliamsdugot.xyz>, and <evanwilliamsdugou.xyz> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2018. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese regarding the language of the proceeding to the Parties. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on January 20, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on March 7, 2018. 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 an American distillery that markets a bourbon under the brand EVAN WILLIAMS. This marketing includes promotion on a website <evanwilliamsdugout.com> that features promotions around major league baseball. The Complainant has worldwide registrations for EVAN WILLIAMS as a trademark including International Trademark Registration No. 957740, registered on March 11, 2008, designating China.
The disputed domain names were registered on October 8, 2017.
The Respondent is an individual based in China. The disputed domain names under the gTLD “.com” resolve to pay-per-click pages. The “.xyz” pages do not resolve to any active sites.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain names are confusingly similar to the trademark EVAN WILLIAMS because they incorporate the whole of the Complainant’s trademark and the word “dugout” or words very similar to EVAN WILLIAMS or “dugout” but with minor typographical errors.
No Rights or Legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for EVAN WILLIAMS. The Respondent, therefore, has no rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
Before acquiring the disputed domain names, it is highly likely the Respondent knew of the Complainant’s rights in the marks EVAN WILLIAMS and acquired the disputed domain names to disrupt the business of the Complainant and/or divert business to the Respondent’s websites to generate revenue.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issues
Language of Proceedings
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be English on the grounds that the disputed domain names incorporated the English word “dugout”, the pay-per-click websites to which the “.com” disputed domain names resolve are all in English, and if the Complainant has to translate the documents in Chinese, the Complainant would incur unnecessary expense and the proceeding may be delayed.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. The Respondent did not respond to the Center’s preliminary determination regarding the language or proceeds. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or confusingly similar
The disputed domain names are confusingly similar to the Complainant’s trademark EVAN WILLIAMS. They either (1) incorporate the Complainant’s EVAN WILLIAMS trademark in full with the addition in the word “dugout” or (2) incorporate words that are very similar the differences being insignificant typographical errors.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. No rights or legitimate interests
Section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were all registered in bad faith and are being used in bad faith. The Respondent clearly knew of the Complainant when it registered the disputed domain names. The multiple registrations of domain names incorporating EVAN WILLIAMS and dugout (or similar words) cannot be by chance and must be to ride off the fame of the Complainant.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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 website or location or of a product or service on your website or location.”
The Panel notes that some of the disputed domain names resolve to websites containing the trademark EVAN WILLIAMS and providing links to websites selling liquor, which the Panel finds is capitalizing on the reputation and goodwill of the Complainant’s mark. The fact that some of the disputed domain names resolve to a page with no content does not preclude a finding that they have been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0 section 3.3). The Complainant’s website <evanwilliamsdugout.com> is a specifically directed form of marketing and the registration and intended use of the disputed domain names can only be to divert business from consumers looking for the Complainant or otherwise suggest some kind of affiliation.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
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 names, <evanwiliamsdugout.com>, <evanwiliamsdugout.xyz>, <evanwillamsdugout.com>, <evanwillamsdugout.xyz>, <evanwilliamdugout.com>, <evanwilliamdugout.xyz>,
<evanwilliamsdugot.com>, <evanwilliamsdugot.xyz>, <evanwilliamsdugou.com>, and <evanwilliamsdugou.xyz> be transferred to the Complainant.
Date: March 19, 2018