The Complainant is William Grant & Sons Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2020, 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 the Complainant on December 1, 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 December 2, 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 12, 2021. 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 proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar. 4. Factual Background Founded by William Grant in 1887, the Complainant distills, markets, and distributes Scotch whisky, vodka, gin and other spirits. Amongst the Complainant’s major brands is GRANT’S, which has been used in commerce since 1898 to identify a blended Scotch whisky that is currently sold in 180 countries. Grant’s whiskies are: Triple Wood, Triple Wood Smoky, Ale Cask Edition, Rum Cask Edition, 8 Year Old Sherry Cask Edition, 12 Year Old, Rare 18 Year, 25 Year Old, and Distillery Edition. The Complainant holds the following trademark registrations for GRANT’S: - European Union Trade Mark (EUTM) No. 000192484, registered as of April 16, 2003, with respect to alcoholic beverages and Scotch whisky; - United States Trademark No. 346426, registered as of May 25, 1937, with respect to blended Scotch whisky; - United Kingdom Trademark No. UK00000542300, registered as of June 15, 1933, with respect to blended Scotch whisky. These trademark registrations are in full force and effect. The disputed domain name was created on May 18, 2020, and has since resolved to a pay-per-click (“PPC”) advertising page containing third-party links related to Scotch whisky. On October 28, 2020, the Complainant requested the Respondent to surrender the disputed domain name, to no avail. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: (i) The Complainant’s registered trademark rights over GRANT’S pre-date registration of the disputed domain name by approximately 87 years; (ii) The disputed domain name is confusingly similar to GRANT’S, a mark in which the Complainant has rights in terms of the Policy; (iii) The disputed domain name only differs from the Complainant’s GRANT’S mark by the addition of the generic dictionary word “whisky” and the deletion of the letter “s”; (iv) As one of the world’s major whisky distillers, the word “whisky” is intrinsically associated with the Complainant and its GRANT’S mark; (v) The deletion of the letter “s” does nothing to distinguish the disputed domain name from the Complainant’s GRANT’S mark, which remains the dominant element of the disputed domain name; (vi) The disputed domain name was intended as a typographical variant of the Complainant’s website located at “www.grantswhisky.com”; (vii) The Complainant has found no evidence that the Respondent is commonly known as GRANTS WHISKY or GRANT WHISKY prior to or after the registration of the disputed domain name; (viii) The Respondent is not a licensee of the Complainant and has not received permission from the Complainant to use the GRANT’S mark; (ix) The Complainant has found no evidence that the Respondent owns any trademarks incorporating the terms GRANTS WHISKY or GRANT WHISKY; (x) The Complainant has found no evidence that the Respondent has ever traded as GRANTS WHISKY or GRANT WHISKY; (xi) To the best of Complainant’s knowledge, the website associated with the disputed domain name has always resolved to PPC advertising; (xii) Considering the fame of the Complainant’s GRANT’S mark and the confusing similarity of the disputed domain name to said mark, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interest upon the Respondent; (xiii) The PPC advertising links on the website associated with the disputed domain name capitalize on the value of the Complainant’s GRANT’S mark; (xiv) The disputed domain name uses the attractive force the Complainant’s well-known marks combined with a generic word that is entirely descriptive of the Complainant’s product (that is, “whisky”) in order to misdirect users to third party advertising; said “bait and switch” use does not and cannot confer any legitimate interest on the Respondent; (xv) Even if the PPC advertising was placed “automatically” on the website associated with the disputed domain name by the Registrar of record or other third party then the Respondent is still responsible and accountable for the website and the advertising thereon; (xvi) Given that the GRANT’s mark is well-known and highly distinctive, especially when combined with the term “whisky”, as in the disputed domain name, it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name; (xvii) It is highly probable that the Respondent acquired and is using the disputed domain name in bad faith for the purpose of disrupting the Complainant’s business in terms of Paragraph 4(b)(iii) of the Policy; (xviii) The disputed domain name is used in bad faith because the corresponding website displays PPC advertising which relates to the Complainant, its business, and its activities; (xix) It is well-established under the Policy that in most circumstances the display of PPC advertising in association with a domain name that is confusingly similar to a complainant’s trademark is sufficient on its own for a finding of registration and use in bad faith, regardless of whether it was directly placed by the Respondent or placed by the registrar of record; (xx) The Respondent has been party to approximately 150 previous disputes under the UDRP, the majority of which found against the Respondent. B. Respondent The Respondent did not reply to the Complaint. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant owns trademark registrations for GRANT’S, the earliest of which dates back to 1933 (see section 4 supra). The Complainant submits that the disputed domain name is confusingly similar to its GRANT’S mark despite the absence of the letter “s” and the addition of the generic term “whisky” to the disputed domain name vis-à-vis the Complainant’s mark. The Panel agrees. The disputed domain name reproduces the Complainant’s GRANT’S mark, except for the apostrophe and the letter “s”. In the Panel’s opinion, the Respondent’s deliberate association of “grant” with the very same product to which the Complainant’s GRANT’S mark applies, namely whisky, shows that the misspelling of the GRANT’s mark in the disputed domain name was intentional. This is sufficient to find confusing similarity under the instant requirement. See section 1.9 of the WIPO Overview 3.0 (a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element). Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. The Complainant has met the standing requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant represents not having authorized the incorporation of its GRANT’S mark in the disputed domain name. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name nor has ever traded under “Grant whisky”. The Panel regards the above factual submissions to be credible in light of the evidence on file, particularly considering that the GRANT’S mark is registered since 1933, and that GRANT’S whisky is distributed worldwide1. At any rate, the Complainant’s assertions are unrefuted by the Respondent. Moreover, the displaying of whisky-related PPC links as the only content of the Respondent’s website cannot be characterized as a bona fide offering of goods, or a fair, legitimate, or noncommercial use of the disputed domain name in the context of the Policy because the said PPC links resolve to third-party websites, some of which operated by the Complainant’s competitors, as corroborated by the Panel.2 See section 2.9 of the WIPO Overview 3.0 (UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users). In sum, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name within the meaning of the Policy. The Complainant has fulfilled the second limb of Policy, paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have registered the 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 you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” The Panel notes that the Complainant’s GRANT’S whisky has been marketed in Scotland since 1898, and is currently exported to 180 countries.3 As a result, the Complainant’s GRANT’S mark has become widely known in the whisky industry, and in the spirits retail market. Against this backdrop, the Panel relies on the Respondent’s typosquatting of a widely known mark as GRANT’S to find that the disputed domain name was registered in bad faith. See section 3.1.4 of the WIPO Overview 3.0 (bad faith is inferred from the mere registration of domain names comprising typos of widely known marks owned by third parties). Moreover, in the Panel’s view, the Respondent has targeted the Complainant’s mark by allowing PPC links related to third-party whisky brands on the website corresponding to the disputed domain name.. See section 3.5 of the WIPO Overview 3.0 (a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name). Last but not least, the Panel takes notice that the Respondent is a repeat cybersquatter, as found by numerous UDRP panels out of more than 150 WIPO UDRP cases filed against the Respondent since 2012. Overall, the Panel finds that the Respondent took unfair advantage of the goodwill and reputation attached to the GRANT’S mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark). For the reasons stated above, the Panel holds that the disputed domain name was registered in bad faith and has been used in bad faith. The Complainant has discharged its burden in relation to 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 Reynaldo Urtiaga Escobar 1 The Complainant’s global sales volume of GRANT’S whisky in 2019 was reportedly of 4.2 million 9-liter cases. See https://www.statista.com/statistics/308826/william-grant-s-whiskey-global-sales-volume/ 2 By clicking on one of the PPC links, the Panel was directed to an advertisement of Jack Daniel’s, a brand of whiskey owned by a competitor of the Complainant, leaving the Panel one click away from Jack Daniel’s website at “www.jackdaniels.com”. 3 https://scotchwhisky.com/whiskypedia/2385/grant-s/#/
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Sole Panelist
Date: January 29, 2021
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