Complainant is William Grant & Sons Limited, The Glenfiddich Distillery of Dufftown, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
Respondent is Cameron David Jackson of Kingston, New South Wales, Australia.
The disputed domain names <drambuie.click>, <drambuie.xyz> and <houseofdrambuie.com> are registered with Instra Corporation Pty Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. On February 16, 2016, Respondent filed email communications with the Center requesting a hard copy of the Complaint. On February 17, 2016, the Center replied that, in accordance with paragraph 2 of the Rules, the Complaint (including any annexes) is only forwarded to the Respondent in electronic form. Respondent did not submit any formal response. Accordingly, the Center notified Respondent of the commencement of the panel appointment process on March 8, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 11, 2016. 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 manufactures “Drambuie”, a well-known Scotch whisky liqueur. Its origins ostensibly date to Bonnie Prince Charlie in 1746. The DRAMBUIE mark is an anglicized version of the Scots Gaelic “dram buidheach”, meaning the “drink that satisfies”. Alternatively, the Scots Gaelic “dram buidhe” means “golden or pleasant drink”. The mark has no generic meaning in either English or Scots Gaelic.
The earliest trademark registration for DRAMBUIE was recorded in 1893. The Australian trademark was registered in 1934.
Complainant registered <drambuie.co.uk> prior to August 1996.
Respondent registered the disputed domain names <drambuie.click> on February 9, 2015; <drambuie.xyz> on January 21, 2016; and <houseofdrambuie.com> on February 11, 2016. <drambuie.click> resolves to “www.youtube.com” and shows a page featuring the song “King of Wishful Thinking” by the band Go West. <drambuie.xyz> resolves to a parking page set up by the Registrar. <houseofdrambuie.com> resolves to a website at “www.nostrings.com”, which is a dating service advertising “discreet affairs”.
Complainant sent a cease and desist letter concerning <drambuie.click> on January 11, 2016. Respondent replied on January 21, 2016, in which he offered to transfer this disputed domain name “for a reasonable fee”, which later was revealed to be GBP 300. Respondent sent a further email that day at 12:47, indicating that he also owned <drambuie.xyz>, and offered to transfer that disputed domain name as well. Interestingly, Complainant found that <drambuie.xyz> had been registered just three minutes earlier, at 12:44. The next day, January 22, 2016, Respondent offered to transfer both of these disputed domain name for GBP 600. Complainant offered to pay Respondent his out-of-pocket costs for registering these two domain names, for a total of GPB 6.30. Complainant also asked for copies of invoices to support Respondent’s alleged expenses, and Respondent replied that it was GBP 300, with no justification. On February 11, 2016, Respondent contacted Complainant again and claimed that he also owned <houseofdrambuie.com>, and offered to transfer it to Complainant. Complainant notes that this particular disputed domain name was registered just two minutes before Respondent emailed Complainant. It appears that there was no further correspondence.
Complainant notes that Respondent also registered other domain names that incorporate well-known trademarks in which Respondent had no apparent rights, including:
<loreal.click>
<lorealadvancedhaircare.com>
<maplin.click>
<nascar.click>
<pfizerinjectable.com>
<porscheag.click>
<pricewaterhousecoopers.click>
<saab.click>
<siemens.click>
Complainant asserts that it has rights in the DRAMBUIE trademark. It contends that the disputed domain names are confusingly similar to Complainant’s mark because they consist of Complainant’s DRAMBUIE mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain names are the generic Top-Level Domain suffixes and the addition of the generic words “house of” in the <houseofdrambuie.com>. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that he registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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 is being used in bad faith.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various trademark registrations for the DRAMBUIE mark. The disputed domain names are confusingly similar to Complainant’s DRAMBUIE mark. All three disputed domain names contain Complainant’s DRAMBUIE mark in its entirety. The only difference between Complainant’s mark and the third disputed domain name is the addition of the common words “house of”. Numerous previous UDRP decisions have held that the addition of common words does not distinguish a disputed domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the DRAMBUIE mark and that all three disputed domain names are confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the DRAMBUIE mark and has not authorized Respondent to register and use the disputed domain names <drambuie.click>, <drambuie.xyz>, or <houseofdrambuie.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the DRAMBUIE mark. Respondent is not known under the mark. Respondent has made no showing that he has any legitimate interest in using the disputed domain names for a bona fide offering of goods or services. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names.
Respondent did not reply to Complainant’s contentions, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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.”
Factors 4(b)(iii) and (iv) of the Policy have been omitted as they are not relevant here.
It is abundantly clear that Respondent registered the disputed domain names in bad faith. First, the DRAMBUIE mark was first used as early as 1746, and first registered in 1893. DRAMBUIE is a well-known mark, of which Respondent assuredly had knowledge. Second, with respect to <drambuie.xyz> and <houseofdrambuie.com>, Respondent registered these after having received Complainant’s cease and desist letter, so Respondent had actual notice before registration. Third, Respondent registered these two domain names just minutes before sending Complainant further correspondence offering to transfer them to Complainant. Such actions leave no doubt that Respondent registered all three disputed domains in bad faith.
Respondent has used the three disputed domain names in bad faith. Under paragraph 4(b)(i), Respondent registered and used the disputed domain names for the purpose of “transferring the domain names to the complainant who is the owner of the trademark […], for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain names”. Respondent claimed GPB 600 for the first two disputed domain names, and would not produce invoices documenting these alleged expenses. Complainant estimated that Respondent’s real expenses were GBP 6.30. See, e.g., The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO Case No. D2000-0124.
Under paragraph 4(b)(ii) of the Policy, Complainant found that Respondent registered at least nine domain names that contain trademarks in their entirety that belong to other trademark holders. This, in addition to the disputed domain names, constitutes a pattern of conduct. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby, WIPO Case No. D2000-1741).
Respondent has used all three disputed domain names in bad faith under paragraphs 4(b)(i) and (ii) 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 names <drambuie.click>, <drambuie.xyz> and <houseofdrambuie.com> be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: March 24, 2016