WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Grant & Sons Limited v. fang yun li

Case No. D2019-2872

1. The Parties

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

The Respondent is fang yun li, China.

2. The Domain Names and Registrar

The disputed domain names <wgrantsons.com> and <wgrantusa.com> (the “Domain Names”) are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2019 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 in English on November 27, 2019.

On November 26, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 27, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2019.

The Center appointed Karen Fong as the sole panelist in this matter on January 21, 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, a British company located in Scotland, distills, markets, and distributes Scotch whisky and other spirits. Founded by William Grant in 1887, the Complainant’s predecessor incorporated under the name William Grant & Sons Limited in 1903. Through a corporate reorganization, the current Complainant adopted its predecessor’s name and was itself incorporated in May 1991. The Complainant’s core brands include “Grant's”, a blended Scotch whisky; “Glenfiddich” and “Balvenie”, both single malt Scotch whiskies; “Hendrick's” gin and “Tullamore DEW”, an Irish whiskey. The Complainant’s corporate website is at “www.williamgrant.com”.

The Complainant is commonly known under the abbreviation of its full corporate name, “Wgrant”. It uses the domain name <wgrant.com> for its corporate communications, including all email services. The domain name was registered on June 22, 1996. The Complainant employs over 1,700 staff in 30 countries worldwide, each of whom use an email address using the <wgrant.com> domain name. The domain name <wgrant.com> is also used for its corporate intranet.

The Complainant is also the owner of the registered trade mark GRANT’S registered in the United Kingdom mark under Trade Mark Registration number 542300, on June 15, 1933 in class 33.

The Domain Names were registered on September 11, 2019 by the Respondent who is based in China. Both Domain Names resolved to the same page, which features an advertisement for a Chinese gambling website apparently located at the URL “www.cqcp1888.com” (the “Websites”). When web users click on the advertisement, they are redirected to a commercial website located at the URL “www.rcxy.com”. This subsequent website welcomes users to the “legendary lottery” and invites them to create a username and account for said lottery.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the unregistered trade mark WGRANT and the registered trade mark GRANT’S, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.

B. Preliminary Procedural Issues – Language of Proceeding

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- The Domain Names consist of words derived from the English language with no other meaning other than that which refers to the Complainant and its activities.
- The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has unregistered rights to the mark WGRANT. Customers, clients and third parties having received emails and other communications from the Complainant with the email address “@wgrant.com” over at least 17 years would have come to associate the WGRANT name with the Complainant. The Panel is also satisfied that the Complainant has registered rights over the trade mark GRANT’S.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case the Domain Names contain the Complainant’s WGRANT unregistered trade mark in its entirety and one with the descriptive word “sons” and the other with the geographical term “usa” as its suffix. Where the comparison is made with the Complainant’s registered mark GRANT’S, which is a possessive noun, the Domain Names contains the main element of the trade mark which is GRANT’S minus the apostrophe and the letter “s”. In any event, apostrophes are not found in domain names in any event. The addition of the letter “w” as a prefix followed by the descriptive term “sons” for one and the geographical term “usa” for the other does not minimize or negate the confusing similarity encouraged by the Respondent’s integration of the trade mark word GRANT’S in the Domain Names. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.

The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant submits that the Respondent is not commonly known by the Domain Names and is not in any way connected or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to make any use of the Complainant’s trade marks. The Respondent cannot assert that it was using or had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The use of a third party’s trade mark in a domain name in connection with gambling related advertising which will cause detriment to the reputation of the Complainant cannot be considered a bona fide offering of goods or services as it is clearly a case where a respondent is seeking to defraud others by relying on the trade mark.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade marks when he/she registered the Domain Names. It is implausible that he/she was unaware of the Complainant when he/she registered the Domain Names given the fact that the WGRANT unregistered trade mark and the GRANT’S registered trade mark have no meaning other than its connection to the Complainant and the fact that in the case of one of the Domain Names, the word “sons” which is part of the Complainant’s corporate name is added.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.

The Panel also concludes that the actual use of the Domain Names are also in bad faith. The use of the Complainant’s trade marks as the dominant part of the Domain Names are intended to capture Internet traffic from Internet users who are looking for the Complainant and its products. The Websites displayed gambling related advertising which was set up for the commercial benefit of the Respondent. It is highly likely that web users when typing the Domain Names into their browser, or finding it through a search engine would have been looking for sites operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant. Such confusion will inevitably result due to the incorporation of the Complainant’s trade marks as the most prominent element of the Domain Names. The Respondent employs the fame of the Complainant’s trade marks to mislead users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Websites are somehow connected, authorised or endorsed by the Complainant.

The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

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 Domain Names <wgrantsons.com> and <wgrantusa.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: February 7, 2020