WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Grant & Sons Limited v. Spiral Matrix
Case No. D2006-0304
1. The Parties
The Complainant is William Grant & Sons Limited, Dufftown, Banffshire, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 10, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name at issue. On March 10, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�3,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2006.
The Center appointed Ladislav Jakl as the sole panelist in this matter on April 18, 2006. 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 language of the proceeding is English.
4. Factual Background
The Respondent registered the domain name (hereinafter “the Domain Name”) on April 11, 2005.
The Complainant is the holder of the several trademarks in relation to alcoholic beverages, including:
Community Trademark GLENFIDDICH, No. 000192575, filing date 01/04/1996;
United Kingdom Trademark GLENFIDDICH, No. 809941, filing date, 26/08/1960;
United States Trademark GLENFIDDICH, No 0949472, filing date 11/08/1971;
Republic of Kenya Trademark GLENFIDDICH, No. 2953/G (15207), filing date 16/10/1967.
5. Parties’ Contentions
Complainant
Identity and confusing similarity
The Complainant maintains an extensive portfolio of registered trademarks relating to the GLENFIDDICH mark in a large number of territories throughout the world. The Complainant contends that it has extremely strong rights in the GLENFIDDICH mark and submits that the disputed Domain Name is confusingly similar to such mark because the additional word “scotch” is not dominant, being both generic and descriptive, that the additional word “scotch” is an entirely descriptive indicator of the Complainants products; and that the top level domain .com is wholly generic and that it is required only for technical reasons and should be disregarded.
Rights or legitimate interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed Domain Name as the Domain Name is currently used in association with a “pay-per-click” parking page. Web users arriving at this page will see a large number of advertisements which, when clicked, will earn the Respondent a small commission from the advertising provider. Some of these links relate to services which compete with the Complainants business activities.
The Complainant further contends that the Respondent�s use of the disputed Domain Name cannot be qualified as non-commercial and fair in any way, given that Respondent sought, with intent for commercial gain, to misleadingly attract consumers to its website. While the other links that are, or have been, on the Respondent�s website do not relate directly to services offered by the Complainant, they will certainly cause confusion in the minds of the Internet users as to the source or affiliation of any services offered given the prominence of the Complainant�s GLENFIDDICH mark in the disputed Domain Name.
The Complainant avers that this use is not a bona fide offering of goods and services. At no point during the disputed Domain Name registration has the Respondent been commonly known as GLENFIDDICH. The Respondent is not a licensee or affiliated with the Complainant and has not received any permission or consent from the Complainant to use the Complainant�s trademarks. The Respondent is not named or commonly known as GLENFIDDICH and owns no trademarks or service marks incorporating the GLENFIDDICH mark. The Complainant moreover contends that given global fame of their GLENFIDDICH mark there is no conceivable use to which the Disputed Domain Name could be put now, or in the future, that would not infringe upon the Complainant�s trademark. This is due both to the prominence of the GLENFIDDICH mark and the added descriptor “scotch” which directly describes the Complainant�s products.
Bad faith
The Complainant contends that the following factors are highly indicative of the Respondent’s bad faith in registering and using the Domain Name.
The disputed Domain Name was acquired by the Respondent primarily for the purpose of selling this domain name to the Complainant or a competitor. The Respondent�s registration prevents the Complainant from reflecting its mark in a corresponding domain name. In addition the disputed Domain Name disrupts the business of the Complainant through the Respondent�s use of this Domain Name to advertise competitive goods and services. The disputed Domain Name was registered by the Respondent with the intent of intentionally attempting to attract web users to the Respondent�s web site by creating a likelihood of confusion with the Complainant�s mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; 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.
According to Paragraph 15(a) of the Rules a Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and any rules and principles of law that it deems applicable.
According to Paragraph 5(e) of the Rules, if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has filed a list of some of its trademarks and copies of decisions of the corresponding industrial property offices. The Panel finds that all of them consist of the word GLENFIDDICH and that they are registered for goods and services relating to Scotch whisky in Cl.33 of international trademark classification.
The Respondent has registered the Domain Name .
As to confusing similarity, the disputed Domain Name contains the whole of the Complainant�s registered trademarks GLENFIDDICH in its dominant part. Neither the addition of the generic and descriptive word “scotch”, nor the suffix “.com”, detract from the overall impression of the dominant part of the Domain Name at issue. There is no doubt that adding such elements do not change the overall impression of this designation.
Therefore, the Panel finds that requirement of the Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances, in particular but without limitation, which may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests, in the Domain Name at issue, for purpose of Paragraph 4(a)(ii):
“ (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.”
Having received no response from the Respondent within the fixed period of time from the Notification of Complaint, the Panel notes that the Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstance giving rise to a right to or legitimate interests in the Domain Name at issue.
The Panel notes that a complainant has the burden of proof on all three elements of the Policy in order to obtain the requested remedy. However, it is well established that once a complainant demonstrates a prima facie case on respondent’s lack of rights or legitimate interests to a domain name, the burden of proof is shifted to the respondent. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In the present matter the Complainant has contended that it has not given a license or otherwise agreed that the Respondent use the Complainant’s trademark or the disputed domain name. The Respondent is not known by the term “glenfiddichscotch”. Neither is the domain name used for non-commercial purposes in accordance with paragraph 4(c)(iii) of the Policy.
The website with the disputed domain name, which is confusingly similar to the Complainant’s trademark, seems to be used to display sponsored links resulting to websites offering commercial services. Considering the use of the domain name, the fame of the Complainant’s trademark and the addition of the term “scotch”, being the product offered by the Complainant, to the domain name, the Panel infers that the Respondent has registered the domain name to bait Internet users to the Respondent’s website for financial gain. Such use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy.
The second element of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that domain name has been registered or acquired by Respondent 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 the Complainant, for valuable consideration in excess of the Respondent 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 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) the Respondent by using the domain name 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 the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on its website or location.
In light of the fame associated to the Complainant’s marks, it is likely that the Respondent knew or should have known that the Complainant registered trademarks GLENFIDDICH in various countries and used them in connection of Scotch whisky prior to registering the Domain Name at issue in his own name. The Complainant justly contends that Respondent�s use of the Domain Name will have caused confusion in the minds of the Internet users and avers that this use has disrupted the business of the Complainant. Furthermore it is necessary to accept the Complainant�s arguments that Domain Name is extremely likely to confuse Internet users trying to find the Complainant�s products as a result of the incorporation of the GLENFIDDICH mark in the Domain name. This confusion, it seems, was voluntarily caused by the Respondent with a view to profit from the goodwill flowing from Complainant’s trademarks. In the absence of a Response from the Respondent, and considering the fact that, on the date of notification of the Complaint, the Domain Name resolved to a “parked” website, the Panel is lead to hold in favor of the Complainant on the third element.
On this basis, the Panel comes to the conclusion that the Respondent has registered the Domain Name at issue in order to intentionally divert, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks.
Therefore the Panel determines that the Respondent has acted in bad faith within the meaning of Paragraph 4(b) 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 be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: May 2, 2006
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