WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Grant & Sons Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Kirill Kochetkov

Case No. D2020-0247

1. The Parties

The Complainant is William Grant & Sons Limited, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kirill Kochetkov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain names <glenfiddichav.com> and <glenfiddichwl.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 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 February 5, 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 February 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2020.

The Center appointed Leon Trakman as the sole panelist in this matter on March 9, 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 has operated a website at “www.glenfiddich.com” since August 1995. It has a number of UDRP- relevant registered rights. It has registered several trademarks for GLENFIDDICH in various countries since 1960, including:

- United Kingdom trademark registration No. 00000809941 dated August 26, 1960;
- Russian Federation trademark registration No. 23617 dated August 5, 1968;
- European Union trademark registration No. 000192575 dated October 29, 1998;
- United States trademark registration No. 3980808 dated June 21, 2011.

The Complainant has defended these registered rights in at least four UDRP proceedings, two in 2016, one in 2006 and one in 2003. In all cases, the panels have determined that the disputed domain name be transferred to the Complainant.

The disputed domain names were registered on November 11, 2019.

The website related to the disputed domain name <glenfiddichav.com> features at least three prominent calls to action labelled “заказать” (“To order” in English). When Internet users click these links they are redirected to a website at “winelab.ru”. The website is a transactional website which features the Complainant’s products alongside unrelated third party products.

The website related to the disputed domain name <glenfiddichwl.com> is configured in the same way as the website related to <glenfiddichav.com>. When Internet users click the links found on this website, they are redirected to a website at “www.av.ru”. This website is a transactional website which features the Complainant’s products alongside unrelated third party products.

5. Parties’ Contentions

A. Complainant

The Complainant, William Grant & Sons Limited, is a company incorporated in the United Kingdom and located in Scotland. The Complainant distills, markets and distributes Scotch whisky and other spirits. The Complainant’s core brands of whisky that are sold internationally include, among others, “GLENFIDDICH”, a Speyside single malt whisky with sales exceeding a million cases a year. The Complainant sells GLENFIDDICH whisky through alcohol retailers and also at online shop that offers a range of whisky products, including collectable rare editions, glassware and related merchandise.

The Complainant alleges that the domain names registered by the Respondent, namely, <glenfiddichav.com> and <glenfiddichwl.com> violate the Complainant’s registered trademark. The Complainant acknowledges that the Respondent offers for sale the whisky produced under the Complainant’s trademark, GLENFIDDICH. It also offers for sale whisky and gin produced by other companies. These include “BALVENIE”, both single malt Scotch whiskies; “GRANT’S”, a blended Scotch whisky; “HENDRICK’S” gin; and “TULLAMORE DEW”, an Irish whiskey.

The Complainant alleges that:

1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1);

2. the Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, para. 4(a)(ii));

3. the disputed domain names were registered and are being used in bad faith (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that the disputed domain names are confusingly similar to the Complainant’s name and trademarks in GLENFIDDICH, on three primary grounds.

First, the disputed domain names differ from the Complainant’s registered trademarks only by the addition of the initials “WL” and “AV”. The Panel notes here that the Respondent’s adoption of these initials itself constitutes a bad faith purpose, as is further developed in C below, namely, in redirecting direct web users to the websites intended by the Respondent. “WL” redirects to https://www.winelab.ru “AV” redirects web users to “https://www.av.ru”.

Second, these initialed variations from the Complainant’s registered marks do not materially distinguish the disputed domain names from the Complainant’s GLENFIDDICH registered marks.

Third, the top-level domain “.com”, in respect of which the disputed domain names differ from the Complainant’s trademarks, is required only for technical reasons and is not legally determinative in deciding whether the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Panel determines that the Respondent has no rights or legitimate interests in the disputed domain names for three primary reasons:

First, the Respondent is not commonly known by the names GLENFIDDICHAW, GLENFIDDICHWL or GLENFIDDICH prior to or after the registration of the disputed domain names. The Respondent is not a licensee of the Complainant, nor has the Respondent received the Complainant’s permission or consent to use the Complainant’s names or registered marks, nor is the Respondent an authorized seller or re-seller, authorized by any party acting on behalf of the seller for the purpose of down-selling the Complainant’s products or the products sold by competitors of the Complainant.

Second, there is no evidence on record which demonstrates that the Respondent owns any trademarks, or has any other legal rights, which incorporate the terms “glenfiddichav”, “glenfiddichWL” or “glenfiddich”. Nor is there any evidence on record that the Respondent has ever traded as “glenfiddichav”, “glenfiddichWL” or “glenfiddich”.

Third, and following from the first two reasons above, the only use by the Respondent of the disputed domain names is to redirect users to its chosen websites, and away from the websites of the Complainant. Such redirection by the Respondent affirms that the Respondent does not have any rights or legitimate interests in the disputed domain names. That direction also constitutes bad faith registration and use of those names, as is determined under C below.

C. Registered and Used in Bad Faith

The Panel determines that the Respondent has both registered and used the disputed domain names in bad faith, for several reasons.

The Respondent has registered the disputed domain names in bad faith for three primary reasons.

First, the Respondent has demonstrated bad faith in registering domain names that are confusingly similar to that of the Complainant’s trademarks.

Second, the Respondent has demonstrated bad faith in registering the disputed domain names in circumstances in which it was reasonably aware of the Complainant’s long standing trademark, the international sales of its products, and its use of online shop and through retail distributors.

Third, the Respondent’s bad faith registration is accentuated by the reasonable inference that, in purporting to sell whisky through its two websites, not limited to those of the Complainant which it was not authorized to sell, it was aware of the Complainant’s name, trademark and international reputation.

The Respondent has used the disputed domain names in bad faith for three primary reasons.

First, in redirecting users to its websites in order to sell them the Complainant’s products, among others, the Respondent demonstrates bad faith use, undoubtedly for profit.

Second, the Respondent in no way advises users that it is not authorized to sell the Complainant’s products, that it is acting as an agent in some other legal capacity.

Third, and on the contrary, the Respondent’s use of its websites to attract buyers and sell whisky products including those of the Complainant, implies that it was and is authorized to sell the Complainant’s products. That is clearly not the case, as is evident in determinations a) and b) above.

The only consideration that could, arguably, respond to the determination of bad faith use of the disputed domain name, is that the Respondent also sells the Complainant’s products by redirections on its websites. In effect, the Respondent offers these products, but in addition to those of the Complainant’s competitors. As is determined in A above, this does not render the Respondent’s conduct any less a demonstration of bad faith. The Respondent was not authorized to sell the Complainant’s products. The Respondent has no legal interest in or right to the disputed domain names. Importantly, it is most reasonable to infer that the Respondent’s intention is to sell the Complainant’s products in bad faith, namely, to increase the portfolio of whisky product on its websites. The Respondent also purports to include the whisky produced by the Complainant in its advertised product line, given that the Complainant is the producer of a highly regarded and widely sold brand in the international whisky market.

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 names <glenfiddichav.com> and <glenfiddichwl.com> be transferred to the Complainant.

Leon Trakman
Sole Panelist
Date: March 23, 2020