WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heaven Hill Distilleries, Inc. v. Contact Privacy Inc. Customer 0155835691 / Gretchen Overweser, heavenhilll
Case No. D2020-1196
1. The Parties
The Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States” or “U.S.”), represented by Wyatt, Tarrant & Combs, LLP, United States.
The Respondent is Contact Privacy, Inc., Customer 0155835691, Canada / Gretchen Overweser, heavenhilll, United States.
2. The Domain Name and Registrar
The disputed domain name <heavenhilll.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 19, 2020.
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 of the Complaint, and the proceedings commenced on May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on June 22, 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
The Complainant, established in 1935 and based in Kentucky, is a well-known distiller of whiskeys, bourbon, spirits, and other alcoholic beverages. The Complainant is the holder of the following United States trademark registrations:
OLD HEAVEN HILL, U.S. Registration No. 355451, registered on March 15, 1938;
HEAVEN HILL, U.S. Registration No. 693986, registered on March 1, 1960;
HEAVEN HILL DISTILLERY EST 1935 (figurative), U.S. Registration No. 5242398, registered on July 11, 2017;
HEAVEN HILL SELECT STOCK (figurative), U.S. Registration No. 4495860, registered on March 11, 2014;
HEAVEN HILL BRANDS (figurative), U.S. Registration No. 4770439, registered on July 7, 2015; and
HEAVEN HILL DISTILLERY (figurative), U.S. Registration No. 5934138, registered on December 10, 2019.
The Complainant also has registered its HEAVEN HILL mark in the European Union, Japan, Mexico, New Zealand, and several other jurisdictions. The Complainant registered the domain names <heaven-hill.com> and <heavenhill.com> in October 1999 and December 2001, respectively, and also has registered additional domain names reflecting the Complainant’s HEAVEN HILL mark.
The Respondent registered the disputed domain name <heavenhilll.com> on September 30, 2019. The disputed domain name does not appear to resolve to any active website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <heavenhilll.com> is confusingly similar to the Complainant’s HEAVEN HILL mark, which the Complainant describes as “world famous”. The Complainant maintains that the disputed domain name wholly incorporates the Complainant’s HEAVEN HILL mark, and contends that the disputed domain name is virtually identical in sight, sound and meaning when compared to the Complainant’s mark. The Complainant maintains that the Respondent has engaged in typosquatting by adding a “virtually unnoticeable” third lowercase letter “I” to the disputed domain name in order to confuse Internet users.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and has not been licensed or otherwise permitted to register the disputed domain name. Rather, the Complainant submits that the Respondent instead has engaged in a typosquatting scheme, passing itself off as the Complainant in order to profit from Internet users seeking the Complainant’s products or services.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits it is beyond dispute that the Respondent is typosquatting, as the disputed domain name is a one-letter misspelling of the Complainant’s HEAVEN HILL mark. The Complainant observes that previous WIPO panels consistently have held that mere act of typosquatting itself is presumptive evidence of the bad faith registration and use within the contemplation of paragraph 4(a)(iii) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <heavenhilll.com> is confusingly similar to the Complainant’s HEAVEN HILL mark, in which the Complainant has established rights through registration and long use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s HEAVEN HILL mark is clearly recognizable in the disputed domain name.2 The additional letter “l” in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and as such also reflects typosquatting.3 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. Nevertheless, the Respondent registered the disputed domain name, appropriating the Complainant’s HEAVEN HILL mark and engaging in typosquatting. Insofar as the record reflects the disputed domain name does not resolve to an active website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra case”). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel finds that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s HEAVEN HILL mark in mind when registering the disputed domain name. Absent any explanation from the Respondent, the Panel concludes that the Respondent has engaged in the bad faith practice of typosquatting, seeking to capitalize on the Complainant’s rights by creating a likelihood of confusion with the Complainant’s HEAVEN HILL mark.
That the Respondent appears to have made no active use of the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. As set forth in the Telstra case, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
Considerations that supported a finding of bad faith in the Telstra caseare present in this case as well. The Complainant’s HEAVEN HILL mark is distinctive and well known, and continuously used by the Complainant for over 60 years. As previously noted, it is clear beyond cavil that the Respondent was aware of the Complainant’s HEAVEN HILL mark and deliberately resorted to typosquatting when registering the disputed domain name. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent. The Respondent’s conduct smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 disputed domain name <heavenhilll.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 6, 2020
1 See WIPO Overview 3.0 , section 1.7 .
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 Typosquatting is characterized by a domain name consisting of a common, obvious, or intentional misspelling of a trademark, and is generally held to be confusingly similar for purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.9, and relevant decisions.
4 See WIPO Overview 3.0, section 1.8.
5 See WIPO Overview 3.0 , sections 1.11 , and relevant decisions.