WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beam Suntory Inc. v. Ken Robert

Case No. D2019-3027

1. The Parties

Complainant is Beam Suntory Inc., United States of America (“United States”), represented by Mayer Brown LLP, United States.

Respondent is Ken Robert, United States.

2. The Domain Name and Registrar

The disputed domain name <beamsuntorry.com> (the “Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 16, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant declined to file an amendment to the Complaint.

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 December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2020.

The Center appointed John C. McElwaine as the sole panelist in this matter on January 27, 2020. 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

Complainant is a large premium spirits company formed by Suntory Holdings’ acquisition of Beam Inc. in 2014.

Complainant is the owner of trademark registrations for the marks BEAM, SUNTORY, and BEAM SUNTORY, including the following:

BEAM – U.S. Reg. No. 1883870 in Class 33, registered on March 14, 1995;
SUNTORY – U.S. Reg. No. 3053508 in Class 33, registered on August 15, 1993;
SUNTORY – U.S. Reg. No. 1415216 in Class 33, registered on October 28, 1986;
SUNTORY (Design) – U.S. Reg. No. 4700195 in Class 33, registered on March 10, 2015; and
BEAM SUNTORY – Chinese Reg. No. 25420915 in Class 33, registered on July 21, 2018.

On November 7, 2019, Respondent registered the Domain Name with the Registrar.

5. Parties’ Contentions

A. Complainant

In 2014, Complainant was formed from Suntory Holdings’ acquisition of Beam Inc. Complainant asserts that it is the owner of some of the world’s best-known and most widely talked about premium brands of spirits, with a breadth and depth of products spanning the five global whisky categories: American, Japanese, Canadian, Scotch, and Irish whiskies. Complainant further asserts that it is authorized to file this this proceeding under common ownership and control of its various registered and acquired trademarks. Suntory Holdings has acquired all rights in Beam Inc., including its trademarks, and created Beam Suntory, Inc, currently operating under common ownership and control.

Complainant alleges that it began using the BEAM trademark in connection with distilled spirits in 1938 and the SUNTORY trademark in connection with various goods, including whisky, gin, brandy, and rum in 1929. Complainant further contends that it has used and continues to use the BEAM, SUNTORY, or BEAM SUNTORY trademarks and the “Beam Suntory” trade name in connection with various good, including spirits such as whisky, gin, brandy, rum, vodka, and tequila, and related goods. Complainant owns trademark registration for its BEAM, SUNTORY, and BEAM SUNTORY trademark in the United States, European Union, and China. In addition, Complainant alleges to have acquired common law trademark rights through the use of the BEAM SUNTORY trademark to market and promote its various products, including, but not limited to, American, Japanese, Canadian, Scotch, and Irish whiskies, gin, vodka, rum, tequila, and other spirits (collectively, Complainant’s registered and common law trademark rights in the marks BEAM, SUNTORY, and BEAM SUNTORY are referred to herein as the “BEAM SUNTORY Marks”). In addition, Complainant asserts it has owned and operates, since at least 2014, a website at the domain name <beamsuntory.com>. Complainant asserts that at this website, Internet users can find detailed information about the goods offered by Complainant among its many brands, and information about its global offices, all of which uses the BEAM SUNTORY Marks.

The Complaint details significant world-wide recognition of the BEAM SUNTORY Marks and asserts that as a result of the above-described extensive use and promotion, the BEAM SUNTORY Marks have become famous, distinctive, and well-known globally. Complainant points out that the BEAM SUNTORY Marks have enjoyed such distinctiveness and notoriety since long prior to the date on which Respondent registered the Domain Name. Complainant contends that Respondent registered the Domain Name on November 11, 2019, and shortly thereafter began sending emails to perpetrate a fraudulent scheme.

With respect to the first element of the Policy, Complainant asserts that the Domain Name is virtually identical to the BEAM SUNTORY Mark, except that the Domain Name ads an additional “r” to “Suntory”. Complainant claims that the Domain Name consisting of its BEAM trademark and its SUNTORY trademark, with an extra “r”, is confusingly similar to the BEAM SUNTORY Marks. Complainant further points out that the Domain Name is a typographical error in the spelling of Complainant’s BEAM SUNTORY Mark.

Moving on to the second element of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in respect to the Domain Name because Respondent registered the Domain Name for the purpose of impersonating Complainant and perpetrating fraud. Respondent points out that the selection of the Domain Name was not a coincidence as Respondent registered it many years after the BEAM SUNTORY Marks were first used and many years after had become famous worldwide. Complainant claims that there is no evidence to suggest that Respondent has been commonly known by the Domain Name, and there is no justification or apparent need for Respondent to use the Domain Name other than to confuse email recipients. In addition, the Domain Name does not resolve to a functioning website.

Regarding the third element of the Policy, Complainant contends that the Domain Name was registered in bad faith, which is evidenced by Respondent registering the Domain Name after the BEAM SUNTORY Marks had acquired distinctiveness through their extensive use for several years by Complainant in commerce, so that they are immediately recognizable to consumers as being associated with Complainant. Complainant further asserts that due to the recognition of the BEAM SUNTORY Marks, it is inconceivable that Respondent was not aware of Complainant’s BEAM SUNTORY Marks at the time it registered the Domain Name, since Respondent was impersonating Complainant in its emails.

Likewise, with respect to bad faith use of the Domain Name, Complainant asserts that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the BEAM SUNTORY Marks as to the source, sponsorship, affiliation, or endorsement of the email source. Complainant asserts that since the Domain Name was registered and used with MX records to send emails aimed at perpetrating financial fraud, it is clear that the Domain Name was registered and used solely to mislead and confuse users into believing that the Domain Name is associated with Complainant and its BEAM SUNTORY Marks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the domain name in question is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of a United States trademark registration for BEAM and SUNTORY. Moreover, Complainant provided evidence of a Chinese registration for BEAM SUNTORY and extensive common law use and recognition of the combined mark BEAM SUNTORY. Since Complainant is operating under common control with the respective owners of the trademark registrations and Complainant itself possesses common law trademark rights in the BEAM SUNTORY trademark, the Panel finds that Complainant has standing to bring this proceeding. See WIPO Overview 3.0, section 1.4 (“[a] trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.”)

As discussed in the WIPO Overview 3.0, section 1.9, the consensus view is that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Similarly, previous UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) The spelling errors used in typosquatting have been found to produce domain names that are confusingly similar to the marks which they mimic. See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587. Here, the Domain Name is visually similar to the BEAM SUNTORY trademark differing only by the almost imperceptible addition of the letter “r” in “Suntory”. Further, Complainant submitted evidence of a signature line in an email sent from the Domain Name with the correct spelling of the SUNTORY portion of the mark in the logo, in the spoofed email address, and in other content in the email. This serves as strong evidence Respondent intended for the Domain Name to be confused with Complainant’s BEAM SUNTORY Marks.

It is well established, and the Panel agrees, that typosquatting domain names are intended to be confusing and can constitute confusing similarity. See, First American Financial Corporation v. VistaPrint Technologies Ltd, WIPO Case No. DCO2016-0008; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011). Accordingly, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the BEAM SUNTORY Marks in which Complainant has valid subsisting trademark rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant contends there are no rights or legitimate interests in holding a domain name for the purpose of furtherance of a fraud through impersonation. Complainant further contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized, or permitted Respondent to register the Domain Name, and that Respondent has not demonstrated any attempt to make legitimate use of the Domain Name.

Respondent has not denied any of Complainant’s assertions and has not put forth any evidence showing that it has rights or legitimate interests in the Domain Name. The Panel observes that the Domain Name does not resolve to any active webpage, but rather has been used to send emails in an attempt to impersonate an employee of Complainant for fraudulent purposes.

Moreover, the Panel finds that the purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”); see also, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception, and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings, WIPO Case No. D2019-1082.

Accordingly, Complainant made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent’s default as it considers appropriate.

The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, Complainant has established that its BEAM trademark and SUNTORY trademark are well-known and distinctive on a world-wide basis. Likewise, the composite BEAM SUNTORY trademark is distinctive and has received much recognition since 2014. Based on Complainant’s submission, which was not rebutted, Respondent must have known of Complainant’s BEAM SUNTORY Marks when it registered the Domain Name. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) Strongly supporting the inference that Respondent knew of Complainants’ trademark rights, Respondent registered a Domain Name that was a common typographical error of the BEAM SUNTORY trademark and used Complainant’s correctly spelled trademark and contact information in a fraudulent email.

In addition, is well settled that the practice of typosquatting constitutes obvious evidence of the bad faith registration of a domain name. See, Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043 (citing Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 ("Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name"); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 ("[typosquatting] is presumptive of registration in bad faith")). Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”. Insurance Company v. Dyk Dylina/Privacy--Protect.org, WIPO Case No. D2011-0304. The Domain Name here was intentionally registered as a common typographical version or to appear confusingly similar to the BEAM SUNTORY Marks.

The fact that the Domain Name was not used in connection with a competing website does not obviate a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id.

Complainant’s BEAM SUNTORY Marks are distinctive, well-known, and used in many countries. Complainant asserts that Respondent likely registered the Domain Name to send fraudulent email messages, including those that contain phishing attempts. Such activity would constitute a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (Finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) As discussed above, Respondent also used the properly spelled trademarks, logos, and the domain name of Complainant. In light of the actions undertaken by Respondent, it is inconceivable that Respondent coincidentally selected the Domain Name without any knowledge of Complainant. See e.g., Arkema France v. Steve Co., Stave Co Ltd., WIPO Case No. D2017-1632.

Finally, the use of a deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <beamsuntorry.com> be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: February 10, 2020