The Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States”), represented by Wyatt, Tarrant & Combs, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Cyan Yo, China. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 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 amended Complaint on September 15, 2020, and submitted a clarification to the amended Complaint on September 24, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2020. The Center appointed Tony Willoughby as the sole panelist in this matter on December 7, 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. The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent. The clarification submitted on September 24, 2020 related to the Complainant’s choice of Mutual Jurisdiction. 4. Factual Background The Complainant is a Kentucky, United States corporation engaged in the distillation and sale of Kentucky bourbon whiskey, which it markets under the ELIJAH CRAIG brand. The Complainant is the registered proprietor of several trade mark registrations of or including the ELIJAH CRAIG brand, including United States Trademark Registration No. 1,425,056 registered on January 13, 1987 in class 33 for Kentucky Straight Bourbon Whiskey, featuring a first use claim of April 24, 1986. The Complainant operates a website connected to its domain name, On February 5, 2020, the Complainant filed a trade mark application (application No. 88/786,375) with the United States Patent and Trademark Office for registration of the mark ELIJAH CRAIG TOASTED BARREL in class 33 for Bourbon; Whiskey. The Domain Name was created on February 8, 2020 and was registered in the name of the Respondent on February 18, 2020. The Domain Name redirects to a webpage at “dan.com” stating that the Domain Name is for sale at a price of USD 990. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its ELIJAH CRAIG registered trade mark and identical to its ELIJAH CRAIG TOASTED BARREL trade mark, the subject of the pending trade mark application referred to in section 4 above. The Complainant points to the fact that the Domain Name was created three days after the Complainant’s ELIJAH CRAIG TOASTED BARREL trade mark application, details of which were then in the public domain. The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s ELIJAH CRAIG TOASTED BARREL trade mark application and for the purpose of selling it to the Complainant at a profit. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and contends that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(a(iii) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar The Domain Name comprises the Complainant’s registered trade mark ELIJAH CRAIG (absent the space) the word “toasted”, the word “barrel” and the generic “.com” Top Level Domain identifier. In combination the substance of the Domain Name replicates precisely the subject matter of the Complainant’s trade mark application described in section 4 above. However, for the purposes of this element of the Policy, a trade mark application cannot by itself support the existence of the requisite trade mark rights. The key here is the Complainant’s ELIJAH CRAIG registered trade mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s ELIJAH CRAIG trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable. The Complainant contends that it was the publication of the Complainant’s February 5, 2020 ELIJAH CRAIG TOASTED BARREL trade mark application, which prompted the creation of the Domain Name three days later. The Complainant contends that the Domain Name was registered for the purpose for which it is being used, namely to sell it to the Complainant for a profit, and contends that such a use cannot constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. Self evidently, the Respondent is not commonly known by the Domain Name, rendering paragraph 4(c)(ii) of the Policy inapplicable. Finally, the Complainant contends that the use being made of the Domain Name is a commercial use, is not fair and is not covered by paragraph 4(c)(iii) of the Policy. The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. The Respondent has not answered the Complainant’s contentions. The Panel agrees with the Complainant that it is highly likely that it was the Complainant’s trade mark application for ELIJAH CRAIG TOASTED BARREL on February 5, 2020, which led to the creation of the Domain Name on February 8, 2020. Whether or not it was the Respondent who was behind the registration is not known. All that is known is that the Respondent acquired the Domain Name on February 18, 2020 and connected it to a website offering it for sale at a price of USD 990. The Panel is satisfied that that is not the action of someone having any relevant rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith The Panel has found that the Domain Name, a complex combination of words featuring the Complainant’s ELIJAH CRAIG trade mark and replicating in its entirety the name under which one of the Complainant’s products, Elijah Craig Toasted Barrel, is marketed, is confusingly similar to the Complainant’s ELIJAH CRAIG trade mark and is identical to the mark the subject of the Complainant’s trade mark application referred to above, which was published three days before the Domain Name was created. The Respondent has no rights or legitimate interests in respect of the Domain Name and has put it up for sale for USD 990. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which, if found by the Panel to be present, “shall be evidence of the registration and use of a domain name in bad faith.” Paragraph 4(b)(i) identifies one of those sets of circumstances as follows: “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. In the absence of any challenge to the evidence filed and in the absence of any explanation from the Respondent the Panel concludes on the balance of probabilities that the Respondent acquired the Domain Name for the purpose for which it is being used, namely for sale at a profit. The Domain Name is of such a unique nature that it can only refer to the Complainant’s product of that name. As the Respondent must know, the only party likely to make any offer for the Domain Name is the Complainant or a third party targeting the Complainant. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 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 Domain Name, Tony Willoughby
Sole Panelist
Date: December 9, 2020
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