WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Benriach Distillery Company Limited v. Hyun-Ok Song
Case No. D2020-0971
1. The Parties
Complainant is The Benriach Distillery Company Limited, United Kingdom, represented by Demys Limited, United Kingdom.
Respondent is Hyun-Ok Song, Republic of Korea (hereinafter “South Korea”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <glendronach.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 April 21, 2020. On April 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2020, 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 April 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2020. On May 8 and 12, 2020, the Center received eight email communications from Respondent, requesting an extension of the Response due date. On May 12, 2020, the Center received two email communications from Complainant. On May 13, 2020, the Center extended the Response due date to May 23, 2020. That same day, the Center sent an email communication to the Parties, inviting them to explore settlement negotiations. On May 13, 2020, Complainant confirmed it would not suspend the proceeding to settle the dispute. The Response was filed with the Center on May 23, 2020. On May 26, 2020, Complainant submitted a supplemental filing. On June 4, 2020, Respondent submitted a supplemental filing.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 10, 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, The Benriach Distillery Company Limited, is a producer of Scotch single malt whiskey. Complainant is owned by Browne-Forman Corporation, one of the largest American-owned manufacturers of spirits and wine.
Complainant owns and operates the GlenDronach Distillery, one of the oldest distilleries in Scotland, which was founded in 1826. Complainant acquired the GlenDronach Distillery in 2008. Complainant, through the GlenDronach Distillery, produces several Scotch single malt whiskies under the name and mark GLENDRONACH. Complainant owns a number of trademark registrations for the GLENDRONACH mark in the United Kingdom (Registration No. 61884), the United States of America (Registration No. 1602690) and the European Union (registration No. 3646767) in connection with its products, the earliest of which issued to registration in 1887. Complainant also owns a trademark registration for the GLENDRONACH mark in South Korea (registration No. 4012631840000), which issued to registration on June 23, 2017). In addition, Complainant owns and uses the domain name <glendronachdistillery.com> to provide information regarding the GlenDronach Distillery and its GLENDRONACH single malt whiskies.
Respondent is an individual with an address in South Korea. Respondent refers to himself as a “domainer” and has for the past 20 years registered a number of domain names. Respondent registered the disputed domain name on April 2, 2005. Respondent has at various times, and is currently using, the disputed domain name with a pay-per-click website. Respondent has also offered the disputed domain name for sale at various times as indicated on the website at the disputed domain name.
5. Parties’ Contentions
Complainant asserts that the GLENDRONACH mark and name is a well-known brand of Scotch whiskey and that Complainant has developed strong rights in the GLENDRONACH name and mark on account of its use since the early 1800s.
Complainant contends that the disputed domain name is identical to Complainant’s GLENDRONACH mark as it fully and solely consists of the GLENDRONACH mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the disputed domain name, and (ii) has only used the disputed domain since it was registered in 2005 with a pay-per-click advertising page.
Lastly, Complainant argues that Respondent has registered and used the disputed domain name in bad faith given the fame of Complainant’s GLENDRONACH mark and the high likelihood that consumers will associate the disputed domain name with Complainant and its Scotch whiskey products. Complainant also argues that because the disputed domain name is identical to Complainant’s famous GLENDRONACH mark, consumers are likely to associate the disputed domain name with Complainant and be misdirected to Respondent’s website. In that regard, Complainant maintains that while GLENDRONACH is derived from an old Scots Gaelic origin, the GLENDRONACH mark is primarily associated with Complainant Scotch whiskies. Consequently, it is more likely than not that Respondent targeted Complainant and its goodwill in the GLENDRONACH mark when Respondent registered the disputed domain name. Complainant also contends that Respondent has sought to profit from the disputed domain name by using it with a pay-per-click advertising page and/or by trying to sell the disputed domain name for a likely profit.
Respondent rejects Complainant’s contentions. Respondent maintains that he is a domainer who has in the past 20 years registered “many dictionary word domains, brandable short names and various geographic domain names.” Respondent asserts that he registered the disputed domain name in 2005 because Glendronach is a geographic location in Scotland, and because “GlenDronach” is a combination of old Scottish Gaelic words that mean “Valley of Drone” or “Valley of Punishment.” Respondent also contends that his use of the disputed domain name with a pay-per-click advertising page is legitimate given that the disputed domain name consists of actual dictionary words or names and the links on the page are of a generic nature and do not trade off of Complainant’s alleged trademark. Respondent further contends that his attempts to sell the disputed domain name is legitimate in light of the generic nature of the disputed domain name.
Respondent argues that Complainant has no real interest in the disputed domain name as Complainant did not register the disputed domain name when it was available for registration and did not use the domain name <glendronach.co.uk> for many years and only started to do so more recently. Respondent further argues that Complainant “slept on its rights” for 15 years and that for at least 7 years Complainant did not contest Respondent’s ownership and use of the disputed domain name. Respondent also notes that Complainant’s South Korean registration for GLENDRONACH issued to registration some eleven years after Respondent, who is based in South Korea, registered the disputed domain name. Respondent maintains that he was not aware of Complainant or its claimed trademark in 2005 when he registered the disputed domain name, particularly as there is no evidence that the GLENDRONACH brand was well known internationally, and in particular in South Korea, at the time Respondent registered the disputed domain name.
Lastly, Respondent asserts that there is no evidence that Respondent intended to target Complainant given that (i) the disputed domain name relates to an actual geographic location, (ii) Respondent has registered many domain names based on dictionary words and on the names of small villages and towns around the world, (iii) Complainant did not contact Respondent regarding the disputed domain name for 15 years, and (iv) Complainant’s GLENDRONACH brand was unknown in South Korea or internationally in 2005 when Respondent registered the disputed domain name. Respondent reiterates that he did not register the disputed domain name to take advantage of rights Complainant claims in GLENDRONACH, but as a part of a legitimate business purpose for “investment, development and Pay-Per-Click earnings.”
C. The Parties’ Supplemental Filings
In this proceeding, the Parties have submitted supplemental filings. Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, the Panel is only willing to accept those portions of the Parties’ supplemental submissions as they relate to Respondent’s assertion that “Glendronach” is a geographic location or a combination of common terms. As for the rest of the Parties’ supplemental filings, the Panel does not believe there are exceptional circumstances that warrant the acceptance of the remaining portions of the supplemental filings and has disregarded such in reaching a decision. These remaining portions appear to be mostly argument and concern contentions regarding whether the Response was timely filed, and the possibility of settling the case for a price. The Panel has reviewed the record and believes that the Response was timely filed and disregards those portions of the supplemental filings.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this proceeding, Respondent does not contest that the disputed domain name is identical to Complainant’s claimed GLENDRONACH mark. Consequently, there is no issue regarding the first element, and the Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s GLENDRONACH mark and in showing that the disputed domain name is identical to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in the disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In this proceeding, Respondent maintains that he was unaware of Complainant or the GLENDRONACH mark at the time he registered the disputed domain name, particularly as the GLENDRONACH mark was unknown in 2005 in South Korea, where Respondent is located. Respondent also maintains that his actions are legitimate as he registered the disputed domain name in 2005 because it is based on an actual geographic location in Scotland and consists of two older Scottish Gaelic words. Respondent contends that because the disputed domain name is based on a generic reference his use of such with a pay-per-click advertising website is legitimate, as are his efforts to sell the disputed domain name.
Complainant contends that Respondent’s actions are not legitimate as the disputed domain name is based on Complainant’s well-known GLENDRONACH mark and has been offered for sale and used with pay-per-click advertising that included a primary link to “Single Malt Scotch Whiskey,” the very product associated with the GLENDRONACH mark. Complainant argues that while its GLENDRONACH name and mark has an old Scots Gaelic origin, the GLENDRONACH name and mark is known on account of its association with Complainant’s Scotch whiskey. Complainant also contends in its supplemental filing that there is no geographic location called “Glen Dronach” in Scotland and that the original location was called “Dronac.” According to Complainant, the addition of “glen” and the letter “h” to “Dronac” was done by Complainant’s predecessor to make the Scotch whiskey brand sound more Scottish. Based on such contentions, Complainant argues that the geographic term followed the brand and that “it would be impossible to have identified any alleged geographic term without also knowing about the Complainant’s brand.”
Respondent counters in its Response and supplemental filing that “Glendronach” has an actual Scots Gaelic meaning and that Complainant itself has represented as much in prior statements that the “GlenDronach Distillery draws its name from the Scots Gaelic meaning ‘valley of the brambles’.” Respondent also notes that (i) “Glendronach” is the name of a major oil field off the coast of Scotland, (ii) that there are real estate listings for Glendronach, and (iii) that there are uses of “Glen Dronach” as possibly a location going back to the 1800s.
Given the Parties’ conflicting contentions, the questions that are before the Panel are (i) whether “Glendronach” is in fact an actual geographic location, and (ii) if “Glendronach” is in fact a geographic location, whether the use of the disputed domain name by Respondent with pay-per-click advertising is a legitimate use.
As to whether “Glendronach” is an actual geographic location, the evidence submitted by Respondent does not show an actual village, town, hamlet or region in Scotland by the name of “Glendronach.” Respondent has, however, submitted an article showing that an oilfield off the coast of Scotland in 2018 was named “Glendronach.” Complainant has submitted an article that suggests that the oilfield was actually named after the GLENDRONACH whiskey product. Respondent contests as much and the origins of the article. Notably, regardless of whether or not the oilfield was named on the basis of Complainant’s whiskey product, the point is that the oilfield was discovered and named in 2018, well after Complainant had established rights in the GLENDRONACH name and mark and well after Respondent had registered the disputed domain name.
Given the lack of evidence establishing that “Glendronach” is an actual geographic location, and given Complainant’s assertion that there is no “Glendronach” geographic location, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed a World Atlas and Google Maps to seek clarity on the issue. WIPO Overview 3.0 at paragraph 4.8. The Panel has confirmed that there is no actual geographic location, such as a village, town, hamlet or region, in Scotland by the name of “Glendronach.” The only actual location is Complainant’s “Glendronach Distillery,” which as Respondent notes is located in Forgue, close to the town of Huntly in Scotland. From what the Panel can determine from the evidence available, “Glendronach” refers to Complainant’s distillery. Indeed the real estate listings provided by Respondent simply confirm that there are homes in the vicinity of the Glendronach Distillery near Huntly, Scotland. Simply put, if there is now a location using the name Glendronach, it is actually based on the Glendronach Distillery as a landmark, so to speak.
As to whether Complainant’s GLENDRONACH mark is a combination of two words that mean “Valley of Drone,” “Valley of Punishment,” or “Valley of Brambles” in old Scots Gaelic, the Panel finds it somewhat suspicious that Respondent, a South Korean individual, registered the disputed domain name based on some ancient Scots Gaelic words without knowing about or being aware of Complainant and its GLENDRONACH mark. While it is conceivable that Respondent had some knowledge of old Scots Gaelic in 2005, Respondent has not claimed as much or provided any evidence that would establish that Respondent was registering the disputed domain name based solely on his knowledge of old Scots Gaelic and not on Complainant’s GLENDRONACH trademark or distillery. At best, Respondent’s contentions ring hollow and appear to be an after-the-fact justification.
The fact that after registering the disputed domain name Respondent offered it for sale for several years and then used it with a pay-per-click advertising page that has included a prominent link to “Single Malt Scotch Whiskey,” the very product associated with Complainant, further suggests that Respondent registered the disputed domain name not on the basis of some obscure old Scots Gaelic word combination, but on account of its potential value based on the GLENDRONACH name and mark. Simply put, Respondent has sought to profit from the disputed domain name based on Complainant’s GLENDRONACH trademark and continues to do so. Such actions are opportunistic and do not constitute a legitimate interest or bona fide use.
Given that Complainant has established with sufficient evidence that it owns rights in the GLENDRONACH mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given that Respondent registered the disputed domain name that fully incorporates Complainant’s GLENDRONACH mark and has used such for Respondent’s profit, it appears more likely than not that Respondent registered and has used the disputed domain name in bad faith. Given that Respondent has registered many domain names based on English dictionary words and places, as well as other English language terms, the Panel finds it difficult to believe Respondent’s claim that he was completely unaware of the GLENDRONACH mark, that has been around since at least 1887 (if not earlier), when he registered the disputed domain name in 2005, and did so solely on the basis of some old Scots Gaelic words or on a claimed geographic location that is tied to and only exists on account of Complainant’s Glendronach Distillery. In a word, Respondent’s assertions are not believable based on the evidence before the Panel. Accordingly, the Panel finds that Complainant succeeds under this 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 <glendronach.com> be transferred to Complainant.
Date: June 26, 2020