WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Grant & Sons Limited v. Whois Agent, Whois Privacy Protection Service, Inc. / Kosun Admin

Case No. D2018-1201

1. The Parties

The Complainant is William Grant & Sons Limited of Banffshire, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.

The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / KOSUN ADMIN of Taipei City, Taiwan Province of China.

2. The Domain Name and Registrar

The Disputed Domain Name <ballvenie.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 June 6, 2018, 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 June 6, 2018.

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 June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2018.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 19, 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, William Grant & Sons Limited, is a Scottish producer and seller of Scotch whisky and other categories of spirits. The Complainant is among the largest producers of Scotch whisky in the world. The Complainant owns and distributes various whisky brands, including the single malt whisky “Balvenie”.

The Complainant is the holder of a multitude of trademark registrations across various jurisdictions throughout the world for the mark BALVENIE, which it uses in connection with its business of producing and selling Scotch whisky. The Complainant’s trademark portfolio includes the following trademark registrations:

- BALVENIE, word mark registered with the United Kingdom Intellectual Property Office under No. 885731 on October 19, 1965, in class 33.

- BALVENIE, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 0888377 on March 24, 1970, in class 33.

- BALVENIE, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 000192591 on January 7, 1999, in class 33.

According to the information provided by the Registrar, the registrant of the Disputed Domain Name <ballvenie.com> is Kosun Admin. The Disputed Domain Name was registered on March 12, 2018 using a proxy service. The Disputed Domain Name does not resolve to an active webpage.

On April 6, 2018, the Complainant sent a notice to the Respondent via international registered mail and via email, notifying the Respondent of the Complainant’s rights in the BALVENIE mark. In its notice, the Complainant requested an explanation for the registration of the Disputed Domain Name and demanded that the Respondent agree to a transfer of the Disputed Domain Name within 14 days of receipt of the notice. The Respondent did not reply to this notice.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that this constitutes a clear case of typosquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed 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 in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s BALVENIE mark has been registered and used in connection to the Complainant’s business of producing and selling Scotch whisky.

The Disputed Domain Name <ballvenie.com> incorporates the Complainant’s BALVENIE mark in its entirety with the mere addition of the letter “l” between the “l” and the “v”. The addition of a single letter does not significantly affect the appearance or pronunciation of the Disputed Domain Name. This practice is commonly referred to as “typosquatting” and creates virtually an identical and/or confusingly similar domain name to the Complainant’s trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) suffix “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name. The Disputed Domain Name does not seem to be comprised of or refer to a dictionary word or phrase. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive BALVENIE trademark in its entirety with the addition of a single letter. Considering the distinctive character and the established reputation of the Complainant’s trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. Furthermore, the Complainant’s trademark has no generic or descriptive meaning. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well­known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix “voip” suggested knowledge of the complainant’s rights in the trademarks).

The Respondent is not presently using the Disputed Domain Name. The passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate and not interfere with the Complainant’s well­known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent’s concealing its identity or use of false contact details (see section 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In the present case, the Panel is of the opinion that the Complainant’s BALVENIE trademark is distinctive and widely established, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent.

The Panel also notes that the Respondent did not respond to the Complainant’s notice letter, strengthening the inference of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Moreover, the Panel holds that the addition of the letter “l” in the term “balvenie” is a form of typosquatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).

Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 <ballvenie.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: July 23, 2018