The Complainant is Sazerac Brands, LLC, United States of America (United States), represented by Fieldfisher LLP, United Kingdom.
The Respondent is England Diep, Old Northampton Enterprises Seven Spirits ltd, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2020, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; (c) indicating the Respondent registered the disputed domain name on June 2, 2009; (d) indicating the language of the registration agreement is English; (e) acknowledging the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name. The Center sent an email communication to the Complainant on September 4, 2020, 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 September 8, 2020. 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” 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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 23, 2020. 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 November 17, 2020, due to an apparent issue with the notification of Complaint, the Panel issued a Procedural Order granting the Respondent a five day period in which to indicate whether it wished to participate to this proceeding. No communication was received from the Respondent. 4. Factual Background The Complainant is a subsidiary of Sazerac Company Inc. which was founded in 1869 in Louisiana, United States. The Complainant is a manufacturer of distilled spirits and mixers including whiskey, bourbon, brandy, cognac, rum, vodkas, tequilas, cordials, and liqueurs. Amongst its products are the brands, Southern Comfort, Blanton’s, Sazerac Rye, and Pappy Van Winkle. According to the Complaint, the Complainant’s parent owns a proprietary recipe known as the Sazerac cocktail. This recipe was developed in the “mid-1800s” and is claimed to be America’s first cocktail. The original recipe used Sazerac de Forge et Fils brandy and Peychaud’s Bitters, both of which are also products of the Complainant. The cocktail was first made at Sazerac Coffee House in New Orleans, which was owned by Thomas H. Handy, the founder of the Complainant’s parent. The Complainant’s Thomas H. Handy Sazerac 128.8 Proof whiskey was awarded the “Rye of the Year” by Jim Murray’s Whisky Bible 2020. Amongst other things, the Complainant promotes its products via the website to which The Complainant has provided evidence that its parent company owns numerous registered trademarks for SAZERAC. For present purposes, it is necessary to mention only: (a) United States Registered Trademark No. 602,218, which was registered in respect of alcoholic cocktails on February 15, 1955 claiming first use in commerce in 1895; (b) United States Registered Trademark No. 3,001,691, which was registered in respect of whiskies in International Class 33 on September 27, 2005; (c) People’s Republic of China registered trademark No. 763505, which was registered in International Class 33 on August 28, 1995; (d) European Union Trademark (EUTM) No. 002855401, which was registered in International Classes 32 and 33 on March 1, 2004. The disputed domain name was first registered on June 2, 2009. It resolves to a website promoting the “Sazerac Bar” in Northampton in the United Kingdom, which describes its venue as a “boutique destination cocktail bar” and which the Complainant disparages as a “glorified karaoke bar”. Certainly, the website does promote as one of the services available at the venue a karaoke room as well as a cocktail lounge, corporate functions and cocktail masterclasses. 5. Discussion and Findings No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven its parent corporation owns numerous registered trademarks for SAZERAC. Given the corporate relationship between the Complainant and its parent as the owner of the trademarks, that is sufficient to establish the Complainant’s rights under the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0 , section 1.7 . In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “-bar”. As this requirement under the Policy is essentially a standing requirement, the addition of such an ordinary, descriptive term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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 consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. It is not clear when the bar in Northampton adopted the name, “Sazerac Bar” or “Sazerac”. Given the length of time the Complainant’s parent has been operating and “Sazerac” liquors and cocktails have been in the market, however, it appears highly likely it was adopted long after the Complainant, or its parent, began using the trademark. While it appears the disputed domain name corresponds to the name of the Bar which the Respondent is operating, there is no information about when the name of the Bar was adopted or the circumstances in which that occurred. Moreover, the name of the Bar was obviously adopted with reference to the Complainant’s brand, and therefore, it is plainly not derived independently of the Complainant’s rights. The Complainant contends that the Respondent is impermissibly using the SAZERAC trademark to attract custom to the Respondent’s venue. It is not clear from the record whether the Respondent’s venue sells any of the Complainant’s products. It would also appear highly likely that, being a bar, it sells many products including those which compete with the Complainant’s products. The website to which the disputed domain name resolves also does not disclose the nature of the venue’s relationship, if any, with the Complainant. As a bar selling beverages and providing associated services, its services have a close relationship with the goods for which the trademarks are registered. The use of the trademark in connection with the name of the bar, therefore, conveys or is likely to be taken to convey an association or relationship with the Complainant, its trademark and products. In these circumstances, at least three of the four conditions typically applied under the Policy for a reseller to legitimately hold a domain name based on a supplier’s trademark are not satisfied. In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the panel identified the following four requirements which a reseller must typically comply with to have rights or legitimate interests in a domain name incorporating another’s trademark: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. So far as the record in this administrative proceeding reveals, at least conditions (i) to (iii) do not appear to have been satisfied. The Panel notes the disputed domain name was registered in 2009. Delay in bringing a complaint, however, does not usually give rise to rights or legitimate interests in a domain name. See WIPO Overview 3.0, section 4.17. It is not possible to speculate whether there has been any conduct by the Complainant which would give rise to an estoppel or otherwise mean it is unconscionable for the Complainant to bring the Complaint now. As the Respondent has not filed a Response, nothing of that kind has been advanced. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the complainant must establish that the disputed domain name has been both registered and used in bad faith by the respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. A number of factors lead to the inference that the Respondent was well aware of the trademark when it registered the disputed domain name. First, the trademark appears to be quite distinctive in relation to alcoholic beverages and venues selling them. It is not a descriptive term in the sense of, say, whisky or rum or brandy. Rather, it has significance in relation to alcoholic beverages only through its association with the Complainant and its parent, as it serves to specifically identify and therefore distinguish the goods produced by the Complainant. Secondly, the disputed domain name was registered long after the Complainant and its parent began using the trademark. Thirdly, the nature of the Respondent’s business as a cocktail bar indicates likely familiarity with alcoholic beverages. In these circumstances and in the absence of rights or a legitimate interest in the disputed domain name, the Panel finds the disputed domain name has been registered in bad faith under the Policy. The use of the disputed domain name to support a cocktail bar business without the Complainant’s permission is also use in bad faith under the Policy. Accordingly, the Complainants have established all three requirements under the Policy. 6. 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, Warwick A. Rothnie
Sole Panelist
Date: November 24, 2020
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