Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States”), represented by Wyatt, Tarrant & Combs, LLP, United States.
Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2019. On August 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2019, 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 August 29, 2019, 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 September 2, 2019.
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 September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 27, 2019.
The Center appointed David Perkins as the sole panelist in this matter on October 1, 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. 4. Factual Background 4.A Complainant
4.A.1 Complainant produces and sells worldwide its EVAN WILLIAMS brand of Kentucky bourbon whiskeys. As will be noted below, first sales in the United States of its EVAN WILLIAMS whiskey date from 1955. The amended Complaint states that Complainant’s EVAN WILLIAMS brand of bourbons has been ranked as one of the world’s best selling whiskeys.
Complainant’s EVAN WILLIAMS trade marks
4.A.2 Annexed to the amended Complaint are particulars of Complainant’s nine registered United States trade marks for the words EVAN WILLIAMS and marks including EVAN WILLIAMS. The registrations for EVAN WILLIAMS simpliciter are:
Territory
Registration No
Mark
Classes of Goods
Dates of application/registration
United States
695,209
EVAN WILLIAMS
33
Filed: November 26, 1958
Registered: March 22, 1960
United States
4,727,131
EVAN WILLIAMS
4; 21; 25; 29; 30; and 33
Filed: September 4, 2014 Registered: April 28, 2015
The U.S. registration 695,209 was first used in commerce in the United States in July 1955. The goods covered by the U.S. Registration 4,727,131 were first used in commerce in the United States at various dates ranging from July 1955 to July 2009.
4.A.3 The other U.S. registered trade marks incorporating EVAN WILLIAMS are:
EVAN WILLIAMS SINGLE BARREL VINTAGE (Class 33) registered July 27, 2010.
EVAN WILLIAMS CINNAMON RESERVE (Class 33) registered August 7, 2012.
EVAN WILLIAMS APPLE ORCHARD (Class 33) registered May 28, 2013
THE EVAN WILLIAMS BOURBON EXPERIENCE (Classes 35 and 41) registered May 13, 2014.
EVAN WILLIAMS BOURBON EXPERIENCE and design (Classes 35 and 41) registered May 27, 2014.
EVAN WILLIAMS FLAVORED RESERVES (Class 33) registered December 24, 2013.
EVAN WILLIAMS KENTUCKY CIDER (Class 33) registered October 27, 2015.
4.A.4 The amended Complaint also exhibits particulars of Complainant’s registrations for its EVAN WILLIAMS trade mark in Australia; China; Singapore; Belarus; Israel; Kazakhstan; Ukraine; Viet Nam; Paraguay; Romania; the Republic of Korea; Taiwan Province of China; Chile; Japan; and Mexico; and refers to other registrations of its EVAN WILLIAMS trade mark in Canada, Colombia, Honduras and the Russian Federation.
Complainant’s EVAN WILLIAMS domain names
4.A.5 Annexed to the amended Complaint are particulars of Complainant’s 24 domain names incorporating its EVAN WILLIAMS mark. The earliest is registered on December 25, 1997. The domain name was registered on May 13, 2006. The other 22 domain names are prefixed with a variety of suffixes and include which was registered on April 4, 2016.
The amended Complaint explains that Complainant contracted with XenoPsi Media company to register on December 12, 2015 the domain name and create the EVAN WILLIAMS Heroes website (referred to below). XenoPsi Media owns and operates that website under a license from Complainant.
Complainant’s ‘EVAN WILLIAMS American-Made Heroes’ website
4.A.6 The amended Complaint states that, prior to creation of the disputed domain name in May 2019, it implemented a program called the American-Made Heroes Program which celebrates military heroes by creating custom EVAN WILLIAMS bottles, each telling the story of one of the heroes. Exhibited to the amended Complaint is a printout of a screenshot of the EVAN WILLIAMS American-Made Heroes website, which resolves from the and domain names and depicts six of the “2019 Heroes”. 4.B Respondent
4.B.1 In the absence of a Response, what is known of Respondent is contained in the amended Complaint and its Annexes.
4.B.2 The disputed domain name was registered on May 29, 2019.
4.B.3 Annexed to the amended Complaint is a printout obtained on August 1, 2019, of example websites to which the disputed domain name resolves. Those depicted advertise automobiles and trucks and a website captioned “ANDROID Rewards Event”. 5. Parties’ Contentions 5.A Complainant Identical or Confusingly Similar
5.A.1 Complainant asserts rights in the EVAN WILLIAMS trade marks, particulars of which are summarised in paragraphs 4.A.2 to 4.A.4 above.
5.A.2 Complainant points to the fact that the disputed domain name incorporates the EVAN WILLIAMS trade mark in its entirety, which mark is the dominant element of the disputed domain name.
5.A.3 Complainant also points to the fact that the disputed domain name is identical to the domain name but for the misspelling “heros” instead of “heroes” as in that domain name. And, as regards Complainant’s domain name, there is the same misspelling and omission of the dash between “evanwilliams“ and “heroes“. This is, Complainant says, a clear case of typosquatting, which has been held in decisions under the Policy as constituting confusing similarity. Rights or Legitimate Interests
5.A.4 Complainant’s case is that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, Respondent is attempting to divert Internet traffic intended for Complainant’s website by typosquatting with a domain name that is not only confusingly similar to the EVAN WILLIAMS mark but also virtually identical to the and domain names. Complainant cites decisions under the Policy where use of a complainant’s trade mark in a disputed domain name in order to create an impression of association with the trade mark owner and so result in user confusion has been held not to give rights or legitimate interests in the disputed domain name. Further, Complainant says, the use being made by Respondent of the disputed domain name (described in paragraph 4.B.3 above) is clearly for commercial gain and, consequently, is not a fair use under paragraph 4 (c) (iii) of the Policy.
5.A.5 Further, Complainant says that it has not licensed or otherwise authorised use of its EVAN WILLIAMS trade mark other than to XenoPsi Media (as explained in paragraphs 4.A.5 and 6 above). Registered and Used in Bad Faith
5.A.6 Complainant’s case is that, given the notoriety of the EVAN WILLIAMS trade mark and the domain name with its associated website, it is clear that Respondent knew or should have known of Complainant’s rights in that mark and created the disputed domain name for the sole purpose of benefitting from Complainant’s goodwill and web traffic.
5.A.7 Complainant cites decisions under the Policy holding that typosquatting is, of itself, evidence of bad faith registration.
5.A.8 Complainant then asserts that the use being made by Respondent of the disputed domain name — see, paragraphs 4.B.3 and 5.A.4 above — is unequivocal evidence of bad faith use. 5.B Respondent
As noted above, no Response was submitted by Respondent. 6. Discussion and Findings.
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed 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 Respondent’s rights or legitimate interests in the disputed 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 Confusingly Similar
6.5 From the particulars of the registered trade marks set out in paragraphs 4.A.2 to 4.A.4 above, clearly Complainant has rights in the EVAN WILLIAMS trade mark.
6.6 As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the disputed domain name incorporates the entirety of a complainant’s trade mark, or where at least a dominant feature of the trade mark is recognisable in the disputed domain name, such domain name will normally be considered to be confusingly similar. Both of those factors are present in this case and, consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s EVAN WILLIAMS trade mark. See section 1.7 of the WIPO Overview 3.0.
6.7 Accordingly, Complainant meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 From Complainant’s case summarised in paragraphs 5.A.4 and 5.A.5 above and Respondent’s default, it is clear that Respondent could not demonstrate any of the circumstances set out in paragraph 4(c) of the Policy as evidencing rights or legitimate interests in the disputed domain name.
6.9 Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.10 Given the nature of the disputed domain name and the use to which it has been put, the Panel finds that Respondent targeted Complainant and registered the disputed domain name in bad faith.
6.11 In the Panel’s opinion, Respondent’s use of the disputed domain name summarised in paragraphs 4.B.3 and 5.A.4 above falls within paragraph 4 (b) (iv) of the Policy.
6.12 Consequently, the Amended Complaint satisfies the requirement 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 disputed domain name be transferred to Complainant.
David Perkins
Sole Panelist
Date: October 9, 2019
Full & Egal Universal Law Academy