Complainant is Beam Suntory Inc. and its affiliates, United States of America (the “United States”), represented by Mayer Brown LLP, United States.
Respondent is Contact Privacy Inc. Customer 1244582145, Canada / Kendra, Yale Brewing, United States.
The disputed domain name <baemsnutory.com> is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 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 Complainant on September 3, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 7, 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 Respondent of the Complaint, and the proceedings commenced on September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. A third party sent an email communication on September 24, 2019. The Center notified the Commencement of Panel Appointment Process on October 3, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 7, 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.
Complainant, Beam Suntory, Inc., is an international premium spirits company. Complainant was formed in 2014 when Suntory Holdings acquired all rights in Beam, Inc. Complainant has since 2014 continued the operations of both Suntory Holdings and Beam, Inc. under the common ownership and control of Complainant.
Complainant has used the trademark BEAM for distilled spirits since May 1938 and the mark SUNTORY with various goods, including whisky, gin, brandy and rum, since November 1929. Complainant owns a number trademark registrations for its BEAM and SUNTORY marks, including, but not limited to the following:
- BEAM in the United States (Registration No. 1883870, which issued to registration on 3/14/1995);
- SUNTORY in the United States (Registration No. 305350, which issued to registration on 8/15/1933);
- BEAM SUNTORY RARE COLLECTION in the European Union (Registration No. 014605505, which issued to registration on 1/11/2016); and
- BEAM SUNTORY in China (Registration No. 25420915, which issued to registration on 7/21/2018).
Complainant also owns and uses the domain name <beamsuntory.com> to provide information about Complainant and its various products. Complainant registered the <beamsuntory.com> domain name on January 13, 2014.
Respondent registered the disputed domain name on May 29, 2019. The disputed domain name has not been used with an active website or web page and currently does not resolve to an active web page. The disputed domain name appears to have been used by Respondent for email purposes.
Complainant asserts that it is one of the world’s largest and most well-known premium spirits companies and that it owns all rights in the BEAM, SUNTORY, and BEAM SUNTORY marks in connection with various distilled spirits and alcoholic beverage products.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s BEAM, SUNTORY, and BEAM SUNTORY marks as it fully consists of misspelled versions of Complainant’s BEAM and SUNTORY marks, and fully incorporates a typo version of the BEAM SUNTORY mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name years after Complainant acquired rights in the BEAM, SUNTORY and BEAM SUNTORY marks and developed widespread recognition of such marks, (ii) is not commonly known by the disputed domain name, and (iii) has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate purpose, but has instead used the disputed domain name to impersonate Complainant in emails in order to perpetrate a financial fraud.
Lastly, Complainant argues that Respondent has registered and used the disputed domain name in bad faith as Respondent is engaged in typosquatting and has used the disputed domain name to impersonate Complainant for purposes of a financial fraud. Complainant also maintains that Respondent’s bad faith is established by the fact the disputed domain name does not reflect or correspond to Respondent’s name or alleged company name. Finally, Complainant argues that given the notoriety of Complainant and its BEAM and SUNTORY marks, it is inconceivable that Respondent was not aware of Complainant when it registered the disputed domain name based on a typo version of Complainant’s trademarks.
Respondent did not reply to Complainant’s contentions.
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 are being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See paragraph 4.33 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for the BEAM, SUNTORY, and BEAM SUNTORY marks in connection with its goods and services. Complainant has also submitted evidence that it owns and has used the domain name <beamsuntory.com> in connection with a website branded as BEAM SUNTORY well before Respondent registered the disputed domain name.
With Complainant’s rights in the BEAM, SUNTORY, and BEAM SUNTORY marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s BEAM, SUNTORY, and BEAM SUNTORY marks as it consists of typo versions of the BEAM and SUNTORY marks to create a misspelled version of the BEAM SUNTORY mark. 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 BEAM, SUNTORY, and BEAM SUNTORY marks and in showing that the disputed domain name is identical or confusingly similar to those trademarks.
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 a 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.
Based on the evidence submitted in this proceeding, it appears that Respondent has registered a typo version of the BEAM, SANTORY, and BEAM SANTORY marks for purposes of impersonating Complainant and perpetuating a financial fraud. Complainant has provided evidence that Respondent has used the disputed domain name for emails that appear to originate from Complainant but which, in fact, are based on the disputed domain name, which is a typo version of the BEAM SANTORY mark. Simply put, Respondent’s use of the disputed domain name to impersonate another for a deceitful purpose cannot in any sense of the word be seen as being legitimate or evidencing a bona fide right or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the BEAM, SUNTORY, and BEAM SUNTORY marks, and given Respondent’s above noted actions and failure to appear in this proceeding, 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.
Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s use of the disputed domain name, which consists of Complainant’s BEAM, SUNTORY, and BEAM SUNTORY marks as part of an apparent fraudulent financial scheme has been done in bad faith. Given that Complainant had established rights in the BEAM, SUNTORY, and BEAM SUNTORY marks prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered the disputed domain name for purposes of perpetuating a fraud at the expense of Complainant.
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 <baemsnutory.com> be transferred to Complainant.
Date: October 21, 2019
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