This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

Complainant submitted its complaint in this proceeding on November 29, 2000. Respondent submitted its Response on January 4, 2001.

WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as panelist on January 22, 2001. In accordance with the Rules, the Panel requested and received additional evidence from Respondent relating to his planned use of the Domain Name.

4. Factual Background

Complainant is a distiller of Scotch whiskies that are sold and distributed in the United States and throughout the world under the marks GELNFIDDICH, WILLIAM GRANT'S and BALVENIE. Complainant has used the BALVENIE mark in the United States since at least 1968. The brand has enjoyed substantial sales and has been the subject of substantial advertising in the United States.

Complainant has registered the BALVENIE mark in various countries, including the United States, where the mark is the subject of an incontestable federal registration issued on March 24, 1970.

BALVENIE is a geographic place name for the location in Scotland where Complainant's BALVENIE whisky originates. The BALVENIE castle in Dufftown, Scotland dates back to the 13^th Century and now serves as a tourist destination.

Respondent is a successful investment analyst who has worked in the investment industry since the late 1970s. In 1998, Respondent took time off from the investment world to pursue literary interests, included the writing of a novel titled Two Hearts and a project he characterizes as a "web soap opera." As explained by Respondent, "the basic premise of Web Soap Opera is to host a web of web sites where I – and other authors – could post stories on an ongoing, daily sequential basis (not unlike a TV soap opera)." In connection with this project, Respondent registered a number of domain names having autobiographical significance.

Among the domain names that Respondent registered for use in connection with the Web Soap Opera was the Domain Name at issue. According to an affidavit of Respondent's mother, when Respondent was 8 years old, his family intended to take a trip to the British Isles. One of the planned highlights of the trip was a visit to Balvenie Castle. Unfortunately, Respondent's father died beforehand and the trip was cancelled. The anticipation about visiting a real castle and the related death of his father apparently became a very significant event in Respondent's life. Respondent planned to publish his recollections of this event as part of the web soap opera.

According to the affidavit of Bruce Berman, a professional colleague, Respondent made known his plan for the web soap opera in the Fall of 1998, when he prepared outlines and discussed the project with other writers.

On May 16, 1999, Complainant wrote Respondent asserting that his adoption of the Domain Name infringed Complainant's rights. On May 24, 1999, Respondent's counsel replied, requesting proof of Complainant's rights. After Complainant provided copies of federal registrations, Respondent replied on July 1, 1999, that his ownership and use of the Domain Name was not an infringement and that he would only surrender rights in the Domain Name if paid adequate and fair consideration. On July 14, 1999, Complainant wrote that it was open to acquiring the Domain Name for a reasonable amount. On July 15, 1999, Respondent offered to sell the Domain Name for $100,000.

On October 6, 1999, Respondent sent a follow up letter to determine Complainant's interest in acquiring the Domain Name. The letter states: "Mr. Scotto, who acquired the name in connection with an auto-biographical, web-based book he was planning on writing, is considering other alternatives with regards to the domain name." This appears to be the first time Complainant was apprised of Respondent's alleged literary intentions for use of the Domain Name. On October 25, 1999, Complainant stated that it continued to have an interest in acquiring the domain name and asked if Respondent's counsel had determined if a lower amount "such as $75,000" would be acceptable.

Eleven months then passed without contact. On September 14, 2000, Complainant sent Respondent a demand for transfer of the domain name for $8000 or his documented out of pocket expenses. Respondent replied on September 18, 2000, rejecting Complainant's demand and offering to transfer the Domain Name for $24,000.

5. Parties’ Contentions

Complainant contends that the Domain Name is identical and confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.

Respondent contends that it selected the Domain Name for a legitimate purpose without any intent to trade on the Complainant's mark.

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interest in the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Confusing Similarity

The Domain Name is identical to a mark in which the Complainant has prior rights by virtue of registration and use. Therefore, Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by a showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, Respondent's affidavit states the he made demonstrable preparations to use the domain name in connection with a literary project before any notice of this dispute. His testimony as to his general literary plans is supported by the Affidavit of Bruce Berman, who states he was aware of Respondent's plan for a web soap opera in the Fall of 1998, and by an article published in the Institutional Investor, August 1998, indicating that Respondent was taking time off from the investment world to write a novel. Nevertheless, their statements do not specifically mention any plans to use "Balvenie," and Respondent has not submitted adequate evidence of a demonstrable plan to use the <balvenie.com> domain name for a bona fide offering of goods or services. The mere fact that Respondent desired to use the domain name for a biographical reason is insufficient to create a right or legitimate interest in the name.

C. Bad Faith Registration and Use

Respondent claims that it registered the domain name for use as a geographical place name in his autobiographical Web Soap Opera. That claim is supported by the record and is not contradicted by Complainant's submission. As noted above, Respondent's plan to pursue literary projects is a matter of public record. Respondent's registration of various domain names appears consistent with his alleged plans for the Web Soap Opera. In many cases, the domain names correspond to the names of friends and colleagues of Respondent. One of the domain names registered is <websoapopera.com>. Others seem descriptive of his life in the investment world: <sitrade.org>, <takingcredit.com> <greenandclean.com>. Notably absent from the list are domain names that are inconsistent with Respondent's life history.

As for the Domain Name at issue, Respondent's interest in Balvenie as an autobiographical event is supported by the affidavit of his mother. Thus, registration of the Domain Name is consistent with Respondent's plan to develop the web soap opera based on events in his life.

I do not find any evidence in the record to contradict Respondent's claimed reasons for selecting the Domain Name.

One of the indications of bad faith is registration of the Domain Name with the intent to profit from sale to the owner of a corresponding trademark. In this regard, Complainant contends that Respondent offered to sell the domain name for far more than his out of pocket costs, and thus asks for a finding of bad faith use and registration. This requires further consideration.

It appears from the record that Complainant was the initiator of contact between the parties. However, Respondent seems to have been the first to raise the issue of payment, seeking in the first instance $100,000. These circumstances viewed in isolation are indeed suspicious. Certainly, bad faith is appropriately found when a registrant initiates contact with an owner of rights in a corresponding mark seeking to profit from the sale of a domain name in which the registrant has no right or legitimate interest. Bad faith can also be found when the registrant lacks any legitimate interest and waits passively for contact from the rights holder before demanding a premium for sale of the domain name.

However, the mere fact that a party offers to sell a Domain Name for a premium is not conclusive proof of bad faith. The specific circumstances of the offer must be considered.

In this case there is nothing to indicate that it was Respondent's intention to squat on the name of another in hopes that he could extract an offer for payment. There is also nothing to indicate that his explanation for selecting the Domain Name is a sham. His registration of other domain names has been adequately explained. Given that Respondent demonstrated a bona fide intent to use the Domain Name for a non-infringing purpose, I find that his offer to surrender his rights in the domain name for a premium does not establish bad faith use and registration.

Respondent accuses Complainant of reverse domain name hijacking. I do not find that Complainant acted unreasonably in pursuing its legal rights in this matter. As noted above, Respondent's initial responses to Complainant were suspicious. Complainant was not apprised of facts supporting Respondent's legitimate reasons for selecting the Domain Name.

7. Conclusion

I conclude that Complainant has failed to prove that Respondent registered and used the Domain Name in bad faith. Therefore, I find in favor of Respondent and deny Complainant's request for transfer of the <balvenie.com> Domain Name. I also deny Respondent's request for a finding of reverse domain name hijacking.

Mark V B Partridge
Sole Panelist

Dated: March 18, 2001