The Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States”), represented by Wyatt, Tarrant & Combs, United States.
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <heavanhill.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 April 23, 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 April 24, 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 May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2020.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 16, 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.
The Complainant has been a manufacturer of distilled spirits since 1935 and is currently the sixth largest supplier of products such as whiskey, vodka and rum in the United States. The Complainant owns trademarks in the United States and worldwide for HEAVEN HILL either as a word mark or incorporated into designs, of which the following word marks are representative for the purposes of this proceeding:
HEAVEN HILL, United States Patent and Trademark Office, registered March 1, 1960, registration number 0693986, in class 33;
HEAVEN HILL, European Union Trade Mark, registered December 12, 2001, registration number 001871235, in classes 32, 33;
HEAVEN HILL, Intellectual Property Office of New Zealand, registered December 22, 1998, registration number 295011, in class 33.
The Complainant also owns the domain names <heaven-hill.com>, <heavenhill.com>, and 13 others incorporating its trademark, and also three domain names based on its trademark that were acquired by transfer as a result of domain name disputes.
No background information is available about the Respondent, except for such contact details as were provided to the Registrar for the purpose of registration of the disputed domain name, which was registered on December 24, 2018. The disputed domain name does not resolve to an active website but to an almost empty website or to an indication that it is for sale.
The Complainant says it has rights as the owner of the trademark HEAVEN HILL, which is registered in the United States and a number of other jurisdictions, and has annexed copies of relevant trademark registration documents.
The Complainant contends that the disputed domain name is virtually identical in sight, sound and meaning to the Complainant’s trademark because it comprises the Complainant’s trademark with a misspelling. The Complainant is also the owner of the domain names <heaven-hill.com> and <heavenhill.com>.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised anyone to register the disputed domain name. The Respondent does not satisfy any of the conditions of paragraph 4(c) of the Policy. The disputed domain name has been used to redirect visitors to a website that appears to offer downloads of a “Flash” application installer that the Complainant alleges to be fraudulent and to cause the installation of malware. The Respondent is not commonly known by the disputed domain name, for which there is no evidence of use by the Respondent for any legitimate noncommercial or fair purpose.
The Complainant says that the disputed domain name was registered and is being used in bad faith. It is not in use for a legitimate website but redirects users to a different domain name. By changing one letter of the Complainant’s trademark to make the disputed domain name, the Respondent has intentionally attempted to attract Internet users by confusion with the Complainant’s trademark for purposes of commercial gain. The Respondent has engaged in typosquatting, which in itself should be evidence of registration in bad faith.
The Complainant says that the Respondent has engaged in a pattern of similar conduct previously. The same Complainant prevailed in a complaint against the same Respondent under the Policy in 2019: Heaven Hill Distilleries, Inc. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2080. That case concerned the Complainant’s trademark EVAN WILLIAMS and the Respondent’s registration of the then-disputed domain name <evanwilliamsheros.com> (the Complainant held the domain name <evanwilliamsheroes.com>).
The Complainant has cited previous decisions under the Policy that is considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied by the evidence produced that the Complainant is the holder of registered trademarks for HEAVEN HILL as required under paragraph 4(a)(i) of the Policy.
The disputed domain name is <heavanhill.com>, which differs from the Complainant’s trademark insofar as “heaven” is wrongly spelt “heavan”. Confusing similarity is to be established under the Policy by means of an objective, side by side comparison of the disputed domain name with the Complainant’s trademark, or by other criteria including pronunciation and sound. The generic Top-Level Domain (“gTLD”), in this instance “.com”, is a technicality that need not be taken into account. The Panel is satisfied that the misspelt word “heavan” looks superficially similar to, and would almost certainly be pronounced and sound similarly to, the component “heaven” in the Complainant’s trademark, constituting confusing similarity. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
The Complainant has asserted a prima facie case to the effect that the Respondent was not authorised to register the disputed domain name and has no rights in it.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
There has been no Response. A screen capture made by the Complainant of the website to which the disputed domain name resolved on April 8, 2020, showed what looked like an operational placard, headed “Software update”, stating that the version of Flash Player installed on the computer might not have the latest security updates, and offered buttons labelled “Update” and “Download Flash”. Another box marked “RECOMMENDED”, with a download button, urged the viewer to download a purported “latest version of Flash Player in order to continue watching”. The Complainant alleges that this website would have caused the download of a fraudulent Flash installer containing malware, an assertion the Respondent has not contested. A screen capture made on another occasion showed the disputed domain name to be for sale. There is no evidence the disputed domain name has been used in connection with a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or of any legitimate noncommercial or fair usage.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
As discussed above, the disputed domain name has resolved to an apparently unrelated and irrelevant website promoting the download of a Flash player application of uncertain provenance. On another occasion the disputed domain name resolved to an effectively blank parking page provided by the Sedo Domain Parking Program, stating that the disputed domain name was for sale.
The lack of any substantive use of the disputed domain name by the Respondent for a website or for bona fide email purposes does not preclude a finding that it has been registered and “used” in bad faith. The criteria embraced by paragraphs 4(b)(i)-(iv) of the Policy are without limitation. The Panel has assembled an overview of the Respondent’s activities, and notes with respect to the disputed domain name, that: (a) it comprises the Complainant’s registered and at least 60-year old trademark except for an easily anticipated typographical error; (b) any intended use of it for other than typosquatting purposes would be, on the balance of probabilities, implausible; (c) its use in a typosquatting scenario would be likely to attract a proportion of Internet users who seek the Complainant’s Internet presence but who make the typographical error anticipated by the Respondent, leading to at least initial interest confusion; (d) it has been offered for sale; (e) it is not in any effective use; (f) it is not reasonably possible to contemplate any legitimate use that would not conflict with the Complainant’s rights; (g) on the evidence, the Respondent’s formulation of and investment in the disputed domain name is not reasonably likely to have been made for any other purpose than commercial gain.
On the totality of the evidence and on the balance of probabilities the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) 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 <heavanhill.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 30, 2020
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