WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chivas Brothers Limited et al. v. Demand Domains, Inc.
Case No. D2007-1789
1. The Parties
The Complainants are Chivas Brothers Limited, Chivas Brothers (Americas) Limited, Chivas Brothers Pernot Ricard Limited, Chivas Brothers (Europe) Limited, and Chivas Brothers (Japan) Limited, all of Refrewshire, Scotland, United Kingdom of Great Britain and Northern Ireland, and Chivas Brothers (Holding) Limited of London, England, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Demand Domains, Inc., of Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chivas-regal.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2007. The Respondent named in the Complaint was Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America. On December 6, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 7, 2007, eNom transmitted by email to the Center its verification response stating that Demand Domains, Inc. is listed as the registrant and providing the contact details. The Center sent a notice of change in registrant information to the Complainant on December 11, 2007, providing the registrant and contact information confirmed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 12, 2007, naming also Demand Domains, Inc. as the Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 13, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 2, 2008. The Response was filed with the Center on that day.
On January 8, 2008, the Complainants filed an email with the Center asking the Panel to allow a supplemental submission in reply to the Response.
The Center appointed Brigitte Joppich, Antony Gold and M. Scott Donahey as panelists in this matter on January 22, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainants in this proceeding are the producers and distributors of a number of spirits including the Scotch whisky brand “Chivas Regal”, established as early as 1909. In 2006, the Complainants sold their whisky Chivas Regal in over 90 countries. From December 2001 to December 2007 over 225,000,000 liters of Chivas Regal were sold worldwide. As a result of an extensive and long use, the name Chivas Regal has become widely-known worldwide and represents a goodwill and reputation of tremendous value to the Complainants.
The Complainants own 162 trademark registrations in respect of “CHIVAS REGAL”, covering 141 countries, including UK registration no. 544152 CHIVAS REGAL as of August 29, 1933 and US registration no. 0325152 CHIVAS REGAL as of October 24, 1933 (the “CHIVAS REGAL Marks“).
The Respondent in this administrative proceeding is Demand Domains, Inc., a company having its seat in Bellevue, Washington, United States of America. The identity of the Respondent was originally protected by Whois Privacy Protection Service, Inc., a so-called privacy shield provided by the Registrar of the disputed domain name, eNom. Having been informed of the Complaint by the Center, the Registrar identified Demand Domains, Inc. as the underlying registrant of the disputed domain name. Demand Domains, Inc. itself confirmed ownership of the disputed domain name in its Response. Therefore, the Panel is satisfied that Demand Domains, Inc. is behind the registration and the use of the disputed domain name, that Demand Domains, Inc. is the owner, and will treat Demand Domains, Inc. as the sole Respondent in this administrative proceeding.
The Respondent has previously been involved in at least six domain cases where the transfer of domain names to the respective complainant was ordered (Peek & Cloppenburg KG v. Whois Privacy Protection Service, Inc./Demand Domains, WIPO Case No. D2007-0019; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc., WIPO Case No. D2007-0917; Maverick Multimedia, Inc. v. Demand Domains, Inc., NAF Case No. FA 1112068; Ami James v. Demand Domains, NAF Case No. FA 1106240; Vein Clinics of America, Inc. v. Demand Domains, Inc., NAF Case No. FA 1094605; The Association of Policy Market Makers v. Demand Domains Inc, Nominet Case No. DRS 04269).
The disputed domain name was first registered on November 28, 2004 and is being used in connection with a website providing links for third parties’ products including products directly competing with those of the Complainants.
5. Parties’ Contentions
A. Complainants
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name <chivas-regal.com> is identical to the CHIVAS REGAL Marks as it uses the CHIVAS REGAL Marks with the single addition of the hyphen between the two words and the gTLD “.com”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not been granted any rights by the Complainants to use the CHIVAS REGAL Marks and as it is not reasonably possible for the Respondent to demonstrate any bona fide legitimate interests in a domain name that includes the Complainants’ trademarks.
(3) The Complainants finally contend that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainants contend that, given the fame and high reputation of the CHIVAS REGAL Marks, it is inconceivable that the Respondent was unaware of the Complainants and their well-known CHIVAS REGAL Marks at the time it registered the domain name. With regard to bad faith use, the Complainants contend that the Respondent’s intent is to misleadingly divert customers to its website, causing confusion amongst them by creating the impression of economic relation with or sponsorship or endorsement of the Respondent by the Complainants for commercial gain. Furthermore, as Chivas Regal is not a common name, the choice of the domain name can only have been made in order to create the false impression of an association with the Complainants.
B. Respondent
The Respondent contends that it has acted with the utmost good faith throughout this dispute, responding promptly upon receipt of the Complaint and offering immediate transfer of the domain name to the Complainants. The Respondent also claims that it was unaware of the Complainants’ purported rights in the domain name at the time it assumed ownership thereof and that it has a policy against holding domains in derogation of legitimate rights holders.
The Respondent requests the Panel to refrain from making any formal finding that the Respondent acted in bad faith but rather to endorse the Respondent’s offer to transfer <chivas-regal.com> to the Complainants.
6. Discussion and Findings
The first point to be dealt with is the admissibility of a supplemental submission of the Complainants. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.
One of the grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).
However, the Panel is able to decide this case on the facts submitted in the Complaint and the Response. Therefore, the Panel elects not to allow any supplemental submissions. While noting the Respondent’s stated agreement to the transfer of the disputed domain name, the Panel believes this is a case in which it is appropriate to record its findings on the substantive merits.
Under paragraph 4(a) of the Policy, the Complainants must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainants’ trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainants’ highly distinctive CHIVAS REGAL Marks in which the Complainants have exclusive rights.
It is well established that the specific top level domain, in this case “.com”, is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among Panelists that the Complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will shift to the Respondent.
The Complainants have asserted that the Respondent has neither been granted a license nor any other permission to use the Complainants’ CHIVAS REGAL Marks and that the Respondent cannot have any legitimate interests in the domain name. The Complainants have therefore fulfilled their obligations under paragraph 4(a)(ii) of the Policy. The Respondent did not deny these assertions in its Response in any way.
Accordingly, the Panel finds that the Complainants have proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.,
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not (as noted) exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, the Complainants are widely-known internationally and have been doing business throughout the world since 1909. Given the high distinctiveness of the CHIVAS REGAL Marks and the high profile of the Complainants and their marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainants’ rights in the CHIVAS REGAL Marks. This finding is supported by the fact that the Respondent uses the disputed domain name to provide links to third parties’ websites including direct competitors of the Complainants. As the name “Chivas Regal” is in itself not descriptive of the Complainants’ products, the Respondent would not have placed ads of the Complainants’ competitors on the website without knowledge of the Complainants and their trademarks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainants’ marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the CHIVAS REGAL Marks into the domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainants, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainants’ website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainants’ website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least six earlier proceedings where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chivas-regal.com> be transferred to the Complainants.
Brigitte Joppich
Presiding Panelist
Antony Gold
Panelist
M. Scott Donahey
Panelist
Dated: February 5, 2008