WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beam Suntory Inc. v. Cimpress Schweiz GmbH, Cimpress Schweiz GmbH

Case No. D2019-1230

1. The Parties

The Complainant is Beam Suntory Inc., United States of America, represented by Mayer Brown LLP, United States of America.

The Respondent is Cimpress Schweiz GmbH, Cimpress Schweiz GmbH, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <beomsuntory.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 29, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2019, 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 5, 2019 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 10, 2019.

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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on July 15, 2019. 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 Beam Suntory Inc. is authorized to file this UDRP Complaint by reference to the common ownership and control of its various registered and acquired trademarks. Suntory Holdings acquired all rights in Beam Inc., including its trademarks, in 2014 and created Beam Suntory, Inc. The Complainant first used the mark BEAM in connection with distilled spirits in 1938 and the mark SUNTORY in connection with various goods, including whisky, gin, brandy, and rum, in 1929. The BEAM, SUNTORY, or BEAM SUNTORY marks are registered in many countries in relation to a variety of alcoholic beverages including, but not limited to beers, whiskeys, wines, spirits and liqueurs; see inter alia BEAM (class 33) - Distilled Spirits US registration no. 1883870 registered on March 14, 1995; SUNTORY (class 33) - Whisky US registration no. 305350 registered on August 15, 1933; SUNTORY (class 33) - Liqueurs US registration no. 1415216 October 28, 1986; SUNTORY (Design) (class 33) - Vodka US registration no. 4700195 March 10, 2015; BEAM SUNTORY (class 33) - Alcoholic Beverages China registration no. 25420915 registered on July 21, 2018; BEAM SUNTORY RARE COLLECTION (class 33) - Alcoholic Beverages European Union registration no. 014605505 registered on September 28, 2015; JIM BEAM (Design) (class 33) - Whiskey US registration no. 544365 registered on June 26, 1951; JIM BEAM (class 33) - Distilled Spirits and Liquors US registration no. 2773356 registered on October 14, 2003; and JIM BEAM BLACK (class 33) - Alcoholic Beverages, namely, Whiskey US registration no. 2824820 registered on March 23, 2004.

The Complainant has operated the “www.beamsuntory.com” website since 2014.

The disputed domain name was registered on April 12, 2019 and has been used for sending fraudulent emails.

5. Parties’ Contentions

A. Complainant

The Complainant says that it is one of the world’s largest premium spirits companies and results from Suntory Holdings’ acquisition of Beam Inc. in 2014. The Complainant’s history dates back to 1795 and it has an extensive whiskey portfolio across five global categories: American, Japanese, Canadian, Scotch and Irish whiskies. Suntory created the first whiskies in Japan in the late 19th nineteenth century and Jim Beam produced its first whisky in the late 18th eighteenth century. Additionally to the registered trademarks referred to above, the Complainant also has extensive common law rights in the BEAM, SUNTORY and BEAM SUNTORY trademarks and trade names. The Complainant asserts that it promotes and disseminates information about its various branded products on the Internet, and material it submits demonstrates the prominent use of the BEAM SUNTORY trademark on the “www.beamsuntory.com” website that Complainant owns and operates. The Complainant asserts that it has benefited from numerous industry accolades; for example, “Beam Suntory” was named the winner of the International Spirits Challenge in 2014 and 2015 in several categories, and was recognized as Tequila Producer of the Year in 2015, having the BEAM SUNTORY trademark prominently displayed on those occasions. The Complainant asserts that the BEAM SUNTORY trademarks enjoyed notoriety since long before the date on which Respondent registered the disputed domain name.

According to the Complainant, the disputed domain name <beomsuntory.com> incorporates the Complainant’s trademarks and is nearly identical to them. The only difference is replacing the “a” character with an “o” character in the BEAM and/or BEAM SUNTORY marks. The Complainant contends that changing this one character does nothing to alter the commercial impression. In fact, “beamsuntory” and “beomsuntory” are said to appear identical to onlookers, and intentionally so. Such adding or removing of a single character to a trademark often constitutes “typosquatting” and is, according to the Complainant, generally insufficient to materially distinguish a disputed domain name from another’s trademark. Further, the Complainant asserts that the disputed domain name is confusingly similar to a mere combination of the two widely recognized BEAM and SUNTORY marks, registered in 1995 and 1933 respectively. According to the Complainant, it is well-established in UDRP proceedings that domain names are confusingly similar when they are merely a combination of two marks, and that related combined marks deserve the same protection as a single mark. The Complainant says that thus the marks BEAM and SUNTORY alone deserve entirely the same protection as a single mark BEAMSUNTORY, and but for one replaced character and Top-Level Domain suffix, the disputed domain name is identical to the registered trademarks.

Further, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent registered it many years after the Complainant’s trademarks were first used and many years after they are said to have become famous worldwide. The Complainant has not consented to or otherwise authorized the Respondent’s use of the trademarks, and upon the information and belief of the Complainant, the Respondent has made no bona fide offering of goods or services in connection with the disputed domain name. The Respondent is said to be using the misleading disputed domain name to impersonate the Complainant in emails to the Complainant’s affiliates and third party business customers in an effort to perpetrate a fraud. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, and there is no justification or apparent need for the Respondent to use “beamsuntory” in the disputed domain name. There is in other words, no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

Further, the Respondent’s use of the disputed domain name constitutes typosquatting and a number of UDRP decisions support the proposition that “typosquatting” is dispositive evidence of bad faith. The use of the disputed domain name in a phishing scheme to perpetrate fraud in itself further warrants transfer. An email received from an email account with the disputed domain name as its address is likely to mislead users into believing that the email address is associated with a partner, affiliate or other authorized party of the Complainant. The Complainant also asserts that the disputed domain name does not reflect or correspond to the Respondent’s name or its company trade name. Due to the wide recognition of the Complainant’s trademarks, it is said to be inconceivable that the Respondent was not aware of them at the time it registered the disputed domain name, particularly since the Respondent was deliberately impersonating the Complainant in its emails.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the trademarks of the Complainant. The only difference with the trademark BEAM of the Complainant, or with its mark BEAM SUNTORY is the substitution of the “a” in BEAM with an “o”. This is hardly noticeable and constitutes an example of typosquatting. The two trademarks or the combined BEAM SUNTORY trademark appear so prominently and are so recognizable as to be indistinguishable from the disputed domain name.

Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

There is nothing before the Panel to indicate that the Respondent has made any legitimate use of the disputed domain name. It has, however, engaged in a phishing exercise, whereby it used an email address incorporating the disputed domain name to impersonate one of the Complainant’s officers. The Respondent is not authorized to use the Complainant’s distinctive trademarks in any way or to incorporate them in a registered domain name. The Respondent has not filed a Response to the Complaint. There is nothing to indicate that the Respondent is known by the disputed domain name or has made any legitimate use of it. The only evidence of what it has done with the disputed domain name is that it has used it in an attempt to defraud unwitting recipients of its communications.

Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The BEAM and SUNTORY trademarks have a long history of use in relation to various alcoholic beverages in numerous jurisdictions. It is inconceivable, also due to the manner in which the disputed domain name is constructed, that the Respondent registered it in ignorance of the rights whether statutory or common law of the Complainant. The Complainant’s marks are very distinctive. On the material before the Panel, it appears that the Respondent has used the disputed domain name in a phishing exercise – sending fraudulent emails impersonating the Complainant’s officers. This is clearly in bad faith.

Therefore the Panel holds that the Respondent registered and is using the disputed 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 disputed domain name <beomsuntory.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: August 2, 2019