Complainant is Beam Suntory Inc. of Chicago, Illinois, United States of America (“United States” or “U.S.”), represented by Mayer Brown LLP, United States.
Respondent is Name Redacted. 1 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On December 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2018, the Registrar 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 Complainant on December 18, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 18, 2018.
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 Respondent of the Complaint, and the proceedings commenced on December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. The Center received email communications from a person named as Respondent (but using an email address different to the email address of the registrant of the disputed domain name) claiming identity theft on January 9, 2019. Respondent did not submit any formal response. Accordingly, the Center notified that would proceed to panel appointment on January 11, 2019.
The Center appointed Mark Partridge as the sole panelist in this matter on January 22, 2019. 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.
On February 13, 2019, the Panel issued a Procedural Order, requesting additional responses from the Complainant and Respondent. The Panel granted Complainant’s motion to extend time to respond. Complainant then submitted its responses on March 19, 2019. Respondent did not respond to the Procedural Order. 4. Factual Background
After acquiring Beam Inc. in 2014, Suntory Holdings created Complainant, operating under common ownership and control. Complainant began using, and continues to use, the BEAM mark for distilled spirits in May 1938, and the SUNTORY mark for various goods, including whisky, gin, brand, and rum, in November 1929. Complainant owns a large portfolio of trademark registrations, including, but not limited to: BEAM, U.S. Reg. No. 1883870, registered on March 14, 1995; SUNTORY, U.S. Reg. No. 0305350, registered on August 15, 1933; JIM BEAM, U.S. Reg. No. 0544365, registered on June 26, 1951; BEAM SUNTORY RARE COLLECTION, European Union Trade Mark Reg. No. 014605505, registered on January 11, 2016. Complainant’s website is located at the domain name , which Complainant registered on January 13, 2014.
On July 25, 2018, Respondent registered the disputed domain name . The disputed domain name resolves to a webpage that indicates: “This site is temporarily unavailable.” 5. Parties’ Contentions A. Complainant
In requesting that the disputed domain name be transferred to it, Complainant contends that it has satisfied the three necessary elements under the Policy.
First, Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s trademarks. In addition to the information detailed above, Complainant alleges that it owns trademark registrations in more than 186 countries, covering a variety of alcoholic beverages, such as beers, whiskeys, wines, spirts, and liqueurs. Complainant also contends that through extensive use and promotion, its trademarks have become famous, distinctive, and globally well known, long before Respondent registered the disputed domain name. Complainant claims that Respondent engaged in typosquatting. In response to the Procedural Order, Complainant also asserts that it is well established in UDRP proceedings that domain names are confusingly similar when they are merely a combination of two marks. Further, Complainant argues that, as a mere combination of two widely recognized BEAM and SUNTORY marks, registered as early as 1995 and 1993, respectively, the disputed domain name is confusingly similar.
Second, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has not consented to or otherwise authorized Respondent’s use any of its trademarks. Complainant argues that Respondent has made no bona fide offering of goods or services in connection with the disputed domain name. Complainant alleges that Respondent is using the disputed domain name to impersonate Complainant in emails to Complainant’s affiliates and third-party business customers in an effort to perpetrate fraud. Complainant argues that it established its prima facie case and that Respondent is precluded from relying on any grounds under the Policy, paragraph 4(c).
Third, Complainant argues that the disputed domain name was registered and is being used in bad faith. Among various contentions, Complainant in particular alleges that Respondent registered and used the disputed domain name for purposes of impersonating Complainant and perpetrating fraud. Complainant claims that, based on its marks’ acquired distinctiveness, and Respondent’s impersonation of Complainant in emails, Respondent was aware of Complainant’s marks at the time it registered the disputed domain name. In response to the Panel’s Procedural Order, Complainant submitted evidence of the foregoing. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, and notwithstanding Respondent’s default, Complainant must prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(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.
Even though Respondent is in default, the Panel may choose to accept the reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287 (citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009); Tata Sons Limited v. Domaincar,WIPO Case No. D2006-0285 (noting “[t]his is not a simple ‘rubber stamping’”); Rules, paragraph 14(b) (providing, in other words, that a panel must use its discretion when a respondent is in default). A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark in which complainant has rights. This element has two distinct parts:
(i) complainant’s rights in a trademark; and,
(ii) identical or confusingly similar.
First, the Panel finds that Complainant introduced sufficient evidence establishing its trademark rights for purposes of the Policy. Although Complainant provides a variety of evidence relevant to its trademark rights, the Panel, however, need only discuss two of Complainant’s trademark registrations, BEAM and SUNTORY, to resolve the issue. Complainant submitted evidence of its registrations for BEAM and SUNTORY: “this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”, section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Second, the next inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. For purposes of the first element, the Top-Level Domain (“TLD”) “.com” in the disputed domain name, , is disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918.
Among other theories, Complainant in particular contends that the disputed domain name is confusingly similar to the mere combination of its two widely recognized marks, BEAM and SUNTORY. The Panel agrees. The Panel finds that Complainant’s BEAM mark is wholly incorporated, and clearly recognizable, in the disputed domain name. Moreover, the combination of BEAM and the misspelling of SUNTORY does not preclude a finding of confusing similarity. Indeed, the combination of the two marks “does not eliminate the visual impression that the disputed domain name is associated with” Complainant. Andrey Ternovskiy dba Chatroulette v. Domain Admin ContactID 2420118, FBS INC, Whoisprotection biz / Masallah Avci,WIPO Case No. D2017-1476; see Belmond Limited v. Syed Hussain, IBN7 Media Group,WIPO Case No.
D2019-0120 (finding confusing similarity where disputed domain name consisted of a complainant’s mark and the mark of company that recently bought complainant’s company).
For the foregoing reasons, the Panel concludes that Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests and Registration and Use in Bad Faith
In this case, the Panel finds it appropriate to “assess the second and third UDRP elements together.” WIPO Overview 3.0, section 2.15.
The second and third elements have the following shared feature. It is well established that “the use of a domain name for illegal activity[,] [such as] phishing, […] impersonation/passing off, or other types of fraud[,] can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1; see id. (referencing WIPO Overview 3.0, section 3.1.4). Likewise, in most cases, use of a domain name for such purposes constitutes bad faith registration and use. Id., section 3.4 (referencing section 2.13); see GOLDEN GOOSE S.P.A. v. WhoisGuard Protected / Wei Zhang,WIPO Case No. D2018-2442 (“Impersonation constitutes bad faith use under the Policy” (collecting cases)); L'Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021 (“It can be inferred that the Respondent solely registered the disputed domain name for fraudulent purposes.”); but see ClearBank Limited v. Nick Brown,WIPO Case No. D2018-2482(“No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration ….”). As shown here, a panel’s single finding of fact is capable of satisfying two of the three elements required for a complainant to prevail under the Policy.
In its Complaint, Complainant alleges that Respondent registered the disputed domain name for purposes of impersonating Complainant and perpetrating fraud. Complainant emphasizes the alleged activity for both the second and third elements. Complaint, paragraphs 28(a), 28(c), 28(d), 28(f), 30(c), 30(d), 30(e), and 30(h). Complainant, however, provided only allegations in its Complaint. In light of the seriousness of the allegations, the Panel issued a Procedural Order. The Panel requested, among other matters, relevant information or evidence supporting Complainant’s claim that Respondent is using the disputed domain name “to impersonate the Complainant in emails to Complainant’s affiliates and third-party business customers in an effort to perpetrate a fraud.”
Complainant provides two alternative responses to this particular request.
First, Complainant suggests that, since Respondent is in default, the Panel should accept Complainant’s allegations at face value, making unnecessary the additional submission of proof of Respondent’s alleged illegal activity. The Panel declines the invitation to find allegations, alone, sufficient for the purposes offered under these circumstances. It is well established that “panels are generally not prepared […] to accept merely conclusory or wholly unsupported allegations of illegal activity, […] even when the respondent is in default.” WIPO Overview 3.0, section 2.13.2. Moreover, if mere allegations that a respondent uses a domain name to impersonate a complainant or to perpetrate fraud sufficed, then anyone could provide those allegations in a complaint, reducing the UDRP proceeding to whether a complainant satisfies the first element.
Accordingly, where a respondent uses a domain name to impersonate a complainant or perpetrate fraud through emails, a complainant should provide evidence of such activity, not unsupported allegations or conclusory statements. See id.; see also Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103 (“Providing adequate proof is the duty of Complainant, not the Panel”). This practice is envisioned by the Rules: under the applicable standard of proof in UDRP cases, “a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true.” WIPO Overview 3.0, section 4.2. It is a common practice to provide evidence of such illegal activity in comparable situations. See, e.g., The Swatch Group AG / Swatch AG v. packy phim,WIPO Case No. D2018-0851 (noting “Complainants have provided evidence of emails sent to several of its employees”). Plus, this practice helps resolve the proceeding “as efficient and cost effective a manner as is fairly possible.” B.V. v. Baffoon B.V., Richard Hoedemaker,WIPO Case No. D2017-0083; see WIPO Overview 3.0, section 2.1 (noting that “[t]he UDRP Rules in principle provide only for a single round of pleadings”).
Second, Complainant responds to the Procedural Order by providing evidence of Respondent’s illegal activity, namely, using the disputed domain name to impersonate Complainant in emails to third parties to perpetrate fraud. The Panel finds that such activity, as evidenced in the additional submissions, “can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. The Panel also concludes that Respondent registered and used the disputed domain name in bad faith. Given Respondent’s attempt to impersonate Complainant and in light of Complainant’s long use of the BEAM and SUNTORY marks, it is more than likely that Respondent “solely registered the disputed domain name for fraudulent purposes.” L'Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; see GOLDEN GOOSE S.P.A. v. WhoisGuard Protected / Wei Zhang,WIPO Case No. D2018-2442.
Lastly, the Panel finds it is unnecessary to reach any of Complainant’s remaining arguments and makes no determinations about the merits of such arguments.
For the reasons reviewed here, the Panel concludes that Complainant satisfies the second and third elements 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 Complainant.
Mark Partridge
Sole Panelist
Date: April 3, 2019
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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