The Complainant is Bruichladdich Distillery Company Limited of Argyll, United Kingdom of Great Britain and Northern Ireland, represented by Nameshield, France.
The Respondent is Johannes Iga Schneemann of Paris, France and Leipzig, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2014. On February 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 3, 2014. The Response was filed with the Center on March 2, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 17, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a Scottish alcohol manufacturer that produces Scotch whiskies, including a Scotch whisky named OCTOMORE.
The Complainant is registered owner of several trademark registrations for OCTOMORE, including International registration no. 971637 OCTOMORE with protection inter alia in the European Community, registered on July 16, 2008 (the “OCTOMORE Mark”). Furthermore, the Complainant also owns several domain names containing the OCTOMORE Mark, including , registered on August 9, 2002.
The disputed domain name was registered on March 8, 2012.
The Complainant sent a cease and desist letter to the Respondent by email and registered ordinary mail on January 15, 2014. The registered letter sent to the address indicated in the WhoIs was returned, “recipient unknown”.
The Respondent replied to the Complainant’s cease and desist letter on January 29, 2014. In this letter, the Respondent confirmed that the disputed domain name and the OCTOMORE Mark are identical. However, the Respondent denied transfer of the disputed domain name to the Complainant stating that he wanted to use the disputed domain name “to at least bootstrap a hardware business” and therefore had a commercial interest in the disputed domain name, which he had registered on a first-come-first-served basis. Furthermore, the Respondent stated that he had not registered or used the disputed domain name in bad faith. He offered the following to amicably settle the dispute:
“1. I keep the ownership of the domain ; and
2. I for now let the domain point to a ressource of your clients choice; and
3. I notify you/your client at least a month before I plan to host services which I consider to interfere with your clients interests; and
4. I do not charge your client for this as long as the redirection does not exceed my normal operational costs so far.
Despite these four points I would be delighted (but by no means require) to receive one of the excellent whiskies produced by the Bruichladdich Distillery for the redirection. I also pondered about explicitly informing my visitors about the existence of octomore the whisky and the Bruichladdich Distillery Company Ltd. in order to avoid (future) confusion.” 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is identical to the distinctive and widely used OCTOMORE Mark as it incorporates the OCTOMORE Mark in its entirety and as the addition of the top level domain name “.net” is not sufficient to hinder a finding of identity.
(2) The Respondent lacks rights and legitimate interests in the disputed domain name as the Respondent is neither affiliated with the Complainant nor authorized by it or related to its business in any way, as the Respondent is not known under the name OCTOMORE, as the website related to the disputed domain name has been a parking page ever since its registration in 2012, and as the Respondent has not developed any business in relation to the disputed domain name, which has been registered for almost two years.
(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the OCTOMORE Mark is only known in relation to the Complainant, and that it has no meaning whatsoever in English or in any other language, that it is widely known, and that previous panels have confirmed its notoriety. Furthermore, the Complainant contends that the Respondent also confirmed his knowledge of the OCTOMORE Mark in his reply to the cease and desist letter by stating that he “would be delighted (but by no means require) to receive one of the excellent whiskies produced by the Bruichladdich Distillery for the redirection.” The Complainant states that, as a result, the Respondent registered the disputed domain name with full knowledge of the OCTOMORE Mark in order to disrupt the Complainant’s business by blocking the registration of the disputed domain name for several years. With regard to bad faith use, the Complainant contends that the Respondent offered to point the disputed domain name to the Complainant’s business in exchange for financial compensation and that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Complainant further argues that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. Finally, the Complainant states that the Respondent has been retaining the disputed domain name for nearly two years without having attempted to develop any business in this regard and that such fact proves his bad faith and his intention to block the registration of the disputed domain name by the Complainant. B. Respondent
The Respondent denies the Complainant’s contentions with regard to paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
With regard to his rights or legitimate interests in the disputed domain name, the Respondent states that the disputed domain name was registered bona fide to be used in connection with goods and services other than those protected by the OCTOMORE Mark (i.e. electronic goods which he plans to produce and sell). He states that he is a student, that he has not been able to set up his business until today, that he has already tried running different services, that he traveled to China in 2013, where he visited potential contract manufacturers for electronic devices and gave workshops and talks covering current technological trends, electronic hardware and innovation, and that he expects to use the disputed domain name for business purposes in the near future. He states that he is not able to disclose potential manufacturers for business reasons and that – in spite of conflicts with his schedule – he put his plans on hold until the present dispute is resolved. He finally claims that the disputed domain name has not been used in commerce so far, pointing to the default page of the Registrar, and that the website is neither used nor suitable for misleadingly diverting consumers or for tarnishing the trademark of the Complainant.
With regard to bad faith, the Respondent states that before registering the disputed domain name in 2012, he searched several top level domain extensions for his second level domain name “octomore” and found out the existence of the website “www.” which was then owned by a third party and which led the Respondent to believe that the Complainant had no interest in the disputed domain name. He further states that, after having registered the disputed domain name, he neither approached the Complainant nor any competitor with any commercial offer in relation to the disputed domain name and that he offered to redirect the disputed domain name at no charge to the Complainant’s website and therefore did not offer the disputed domain name for rent to the Complainant. Accordingly, he did not ask for any compensation. The Respondent further states that the disputed domain name was not claimed by the Complainant at the time of registration, that the Respondent has not engaged in any pattern of domain name squatting in order to exploit others in an unfair manner, that he did not register the disputed domain name to disrupt the Complainant's business, that the website hosted at the disputed domain name makes no offers to sell (alcoholic) beverages, and that he did not register the disputed domain name to create a likelihood of confusion with the Complainant’s mark. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the 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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s OCTOMORE Mark and is identical to such mark. It is well established that top level domains such as “.com” and “.net” may be disregarded when evaluating the identity or confusing similarity between a complainant’s trademark and a domain name (cf. 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 disputed domain name is identical or confusingly similar to the Complainant’s trademark and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established, shall demonstrate rights 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 disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that because of the inherent difficulty to prove a negative, a complainant has to make only a prima facie case in this regard. One such a prima facie case is made, the burden of coming forward with evidence of rights or legitimate interests in the domain name then shifts to the respondent. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy.
The Respondent denied the Complainant’s assertions and stated that he registered the disputed domain name in order to use it bona fide in connection with goods and services other than those protected by the OCTOMORE Mark. However, the Respondent does not yet offer such goods or services and did not provide any evidence with regard to his allegedly planned use of the disputed domain name, but rather states that he is not able to disclose any details for business reasons. Given that the Respondent has not substantiated with material evidence its allegations under paragraph 4(c)(i) of the Policy regarding its preparation to use the disputed domain name in connection with a bona fide offering of goods or services, and given that the Respondent has not claimed to have rights or legitimate interests pursuant to paragraphs 4(c)(ii) or 4(c)(iii) of the Policy, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Furthermore, based on the evidence before the Panel, there is no additional indication that the Respondent’s use of the disputed domain name meets any of the criteria set out in paragraph 4(c) of the Policy, as the disputed domain name has not been actively used.
Accordingly, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed 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 disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark 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 disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
These examples are merely illustrative and are not meant to be exhaustive. Other circumstances may therefore lead to a finding of bad faith pursuant to paragraph 4(a)(iii) of the Policy.
In the present case, the Complainant claims that the OCTOMORE Mark is widely known and states that previous panels have confirmed its notoriety. However, the only evidence provided by the Complainant in this regard is a previous UDRP decision, which, contrary to the Complainant’s assertions, does not refer to or even imply a high profile of the OCTOMORE Mark. Therefore, on the basis of the facts before it, the Panel cannot proceed from the assumption that the OCTOMORE Mark is widely known.
This being said, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant as the Respondent confirmed that he searched several top level domain extensions for its second level domain name “octomore” before registering the disputed domain name in 2012, and found out the existence of the website “www.” which already referred to the Complainant.
In the Panel’s view, the fact that the Respondent offered to point the disputed domain name to a website of the Complainant’s choice, stating he would be delighted to receive a bottle of the Complainant’s whiskies does not necessarily establish bad faith under paragraph 4(b)(i) of the Policy. The Respondent did not seriously request any compensation and the price of the bottle of whisky would probably not exceed the Respondent’s documented out of pocket costs directly related to the disputed domain name.
The Respondent stated that he registered the disputed domain name in order to use it in connection with electronic goods, which are not covered by the OCTOMORE Mark. However, as indicated before, the Respondent does not yet offer such goods or services and did not provide any evidence with regard to his allegedly planned use of the disputed domain name, but rather states that he is not able to disclose any details for business reasons. The Panel is therefore not in a position to give precedence to the Respondent’s allegations given the lack of supporting evidence in this regard. Moreover, whereas the Respondent has said he would “let the domain point to a resource of [the Complainant’s] choice” and that he would “notify [the Complainant] at least one month before [he]plan[s] to host services which [he] consider[s] to interfere with [the Complainant’s] interests” undermines any credibility the Panel might have otherwise attributed to the Respondent’s alleged business plans.
It has been recognized in several occasions that the lack of active use of a domain name without any active attempt to sell or to contact the trademark holder does not as such prevent a finding of bad faith use under the Policy. Moreover, a panel may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding registration, and vice versa (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2).
On balance, and taking into account all the circumstances of this case, the Panel finds it more likely than not that the Respondent registered and used the disputed domain name in bad faith with the aim to take advantage of the confusion between the disputed domain name and the Complainant’s trademark rights.
Accordingly, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: April 17, 2014
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