WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited v. BWI Domains/Whois Protection
Case No. D2008-0722
1. The Parties
The Complainant is Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited, of Refrewshire, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is BWI Domains/Whois Protection, West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2008. On May 8, 2008, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On May 9, 2008, R Services Corp. 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 May 15, 2008 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 amendment to the Complaint on May 15, 2008. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2008.
The Center appointed David Perkins, Ian Blackshaw and Anthony R. Connerty as panelists in this matter on July 7, 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 the Rules, paragraph 7.
4. Factual Background
4.A The Complainant
4.A.1 The Complainant, Chivas Brothers Limited, is a member of the Pernod Ricard Group of companies and produces a number of spirits, including the Scotch whisky brand CLAN CAMPBELL. That brand incorporates a range comprising “Clan Campbell the Noble Scotch Whisky”; “Clan Campbell Pure Malt 10 Year Old Scotch Whisky” and “Clan Campbell ‘Legendary’ 18 Year Old Scotch Whisky”.
4.A.2 The CLAN CAMPBELL brand was launched in France and the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) in 1987. Examples of advertisements of CLAN CAMPBELL in the publications “Drinks International” (April 1987) and “Revue Vinicole Internationale” (April 1987) are exhibited to the Complaint. During the year 2007 CLAN CAMPBELL was sold in 22 countries. It is a particularly popular brand in France where over 11.3 million litres were sold in 2007, and an additional 2.3 million litres were sold throughout the rest of Europe.
The CLAN CAMPBELL Trademark
4.A.3 The Complainant through its associated companies, Chivas Brothers Pernod Ricard Limited and Muir Mackenzie & Company Limited, is the proprietor of registrations for the CLAN CAMPBELL trademark in 47 countries. The earliest was registered in Argentina in March 1971. The United Kingdom trademark was registered in November 1986.
4.A.4 Chivas Brothers Pernod Ricard Ltd and Muir Mackenzie & Company Ltd are the proprietors of 11 additional trademark registrations for variously CLAN CAMPBELL (in Chinese characters); CLAN CAMPBELL HIGHLANDER; the CLAN CAMPBELL label, the CLAN CAMPBELL night bottle; CLAN CAMPBELL oval label with crest; and CLAN CAMPBELL THE NOBLE SCOTCH WHISKY label. These are variously registered in the European Economic Community (CTM); the African Intellectual Property Organisation (OAPI); Australia: China: Denmark: France; and the United Kingdom, the earliest dated June 1984.
The CLAN CAMPBELL domain name
4.A.5 The Complainant is also the registrant of the following 8 domain names which incorporate the CLAN CAMPBELL mark. They are:
4.B. The Respondent
4.B.1 According to the Complainant, the disputed domain name was registered in 1997 by an employee of Pernod Ricard and over the years was managed by various companies within the Pernod Ricard Group. However, recently the Complainant says that it discovered that the disputed domain name is now registered by a third party outside the Pernod Ricard Group.
4.B.2 On February 5, 2008, counsel for the Complainant emailed the Registrar of the disputed domain name requesting disclosure of the name of the registrant, the WhoIs record merely providing the name of the Respondent, Whois Protection of the Cayman Islands. The Registrar was not able to assist in that respect and, consequently, on February 22, 2008 the Complainant emailed the Respondent with the same request. No reply was received but on May 15, 2008 the Center advised the Complainant that the Registrant of the disputed domain name was no longer Whois Protection of West Bay, Cayman Islands but had been identified in the Registrar’s response to the Center’s Request for Registrar Verification as BWI Domains, also of West Bay, Grand Cayman. It appears that the change in registrant took place on May 9, 2008 the day following the date when the Complaint was notified to the Center and to Whois Protection. As noted in paragraph 3 above, the Complaint was amended on May 15, 2008 to include BWI Domains as the Respondent.
4.B.3 In the absence of a Response nothing further is known of either Respondent. However, the Complaint exhibits 6 Complaints brought against Whois Protection under the Policy, in each of which no Response was filed and an Order for transfer was made against the Respondent. Those cases are:WIPO Case No. D2007-1605 :WIPO Case No. D2007-1271 ;WIPO Case No. D2007-1225 :WIPO Case No. D2007-1142 :WIPO Case No. D2007-1130 andWIPO Case No. D2007-0884 .
5. Parties’ Contentions
5.A Complainant
5.A.1 Identical or Confusingly Similar
The disputed domain name, but for the addition of the gTLD “.com”, is identical to the CLAN CAMPBELL trademark in which the Complainant has rights.
5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant has not licensed or otherwise authorized use by the Respondents of the CLAN CAMPBELL trademarks or the disputed domain name.
5.A.2.2 Given the well-known status of the CLAN CAMPBELL trademark, the Complainant asserts that the Respondent, whatever its true identity must have known that it could not acquire any rights to or legitimate interest in the disputed domain name.
5.A.2.3 For the same reason, the Complainant asserts that no use by the Respondents of the disputed domain name can be bona fide.
5.A.2.4 Certainly, says the Complainant, the use to which the Respondents have put the disputed domain name has not been bona fide, legitimate or fair. On the contrary, the disputed domain name links to other websites offering Scotch Whisky products, many of which compete with the Complainant’s CLAN CAMPBELL brand.
5.A.2.5 Consequently, the Complainant says that the evidence points against the Respondents having any right to or legitimate interests in the disputed domain name. There is no evidence that the Respondents can establish that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case and the burden is on the Respondents to disprove this.
5.A.3 Registered and used in Bad Faith
5.A.3.1 Here, the Complainant points to the fact that the disputed domain name links to websites which offer both completely unrelated goods for example, contact lenses, property finder services, the provision of Home Information Packs, word games, online shopping sites etc and competing Scotch Whisky products as well as the Complainant’s own CLAN CAMPBELL whiskies. This, the Complainant says, indicates the Respondents’ knowledge of the CLAN CAMPBELL brand and a clear intention to profit from that well-known brand by deriving click-through revenue from these various links. The Complainant cites various cases decided under the Policy where this practice has been held to constitute registration and use in bad faith.
5.A.4 Accordingly, the Complainant asserts that the circumstances set out in paragraph 4(b)(iv) of the Policy are present in this case. Additionally, the Complainant points to a pattern of conduct by the Respondents, Whois Protection, of wrongly registering domain names incorporating well-known third party trademarks; see, the cases brought under the Policy which are identified in paragraph 4.B.3 above. This, the Complainant says, is another indication of bad faith registration and use.
5.B. Respondents
As stated, no Response has been filed by either Whois Protection or by BWI Domains.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusing Similar
6.5 The Complainant has established that it has extensive rights in the trademark CLAN CAMPBELL
6.6 The disputed domain name is identical to that trademark.
6.7 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 No evidence has been submitted by the Respondents to indicate any rights to or legitimate interests in the disputed domain name. In the absence of such evidence, there is nothing to challenge the forceful case made by the Complainant. The Complainant’s CLAN CAMPBELL mark is clearly widely known and the unauthorised use to which the disputed domain name is being used – namely, as a link to other websites, some connected to the Complainant’s CLAN CAMPBELL Scotch Whisky and others not connected – is equally clearly of the type which falls within paragraph 4(c)(iii) of the Policy.
6.9 In the circumstances, the Panel has no hesitation in finding that the Complaint also satisfies the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in bad Faith
6.10 Again, there is no evidence of good faith registration and use. The evidence is overwhelmingly to the contrary. The Respondent Whois Protection has a record of undefended decisions made against it under the Policy where the disputed domain names have been identical to or confusingly similar to other widely known third party trademarks. These have included the HALIFAX trademark of HBOS plc, the AEROPOSTALE trademark of Aerospostale West Inc., the BMW trademark of Bayerische Motoren Werk A.G. etc. This is, in itself, an indication of bad faith. Additionally, failure to file a Response is another.
6.11 Given the extensive registered trademark coverage of the CLAN CAMPBELL brand, coupled with the previous management of that mark by companies within the Pernod Ricard Group, it is clear that the subsequent unauthorized registration by the Respondents, or either of them, cannot have been in good faith.
6.12 As to use in bad faith, facts establishing the circumstances set out in paragraph 4(b)(iv) of the Policy have been equally clearly made out; see, paragraphs 5.A.2.4 and 5.A.3.1 above.
6.13 In the circumstances, the Complaint meets the twin 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, be transferred to the Complainant.
David Perkins
Presiding Panelist
Ian Blackshaw
Panelist
Anthony R. Connerty
Panelist
Dated: July 22, 2008
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