Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States”), represented by Wyatt, Tarrant & Combs, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1248788753, Canada / DeShaun Johnson, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 16, 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 Complainant on December 24, 2020 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 24, 2020. The Center received an email communication from Respondent on December 24 and 26, 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2021. The Center notified the commencement of Panel appointment process to the Parties on January 19, 2021. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 28, 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. 4. Factual Background Founded in 1935, Complainant is one of the largest family-owned and operated producers of distilled spirits in the United States. Complainant’s “Evan Williams” bourbon is among the largest bourbon brands in the world. Complainant owns numerous trademark registrations for the word mark HEAVEN HILL including United States Registration No. 0693986, registered on March 1, 1960, and European Union Trade Mark Registration No. 001871235, registered on December 12, 2001. Complainant also owns United States Registration No. 4770439 for HEAVEN HILL BRANDS, plus design (which disclaims the term “brands” apart from the mark as shown). On July 7, 2015, Complainant registered the domain name The Disputed Domain Name was registered on May 15, 2020. When the Complaint was filed, the associated webpage displayed a message that the URL was “unavailable.” 5. Parties’ Contentions A. Complainant Complainant contends that it has trademark rights in the marks HEAVEN HILL and HEAVEN HILL BRANDS, and that Respondent has incorporated the entirety of these marks into the Disputed Domain Name, except for the movement the letter “s” from the end of word “brands” to the end of the word “hill.” Complainant contends this difference is “typosquatting.” Complainant contends that Respondent: (i) has made no bona fide offering of goods and services, (ii) is not commonly known by the Disputed Domain Name, (iii) is not making noncommercial fair use of the Disputed Domain Name, and (iv) has configured the Disputed Doman for email despite not being commonly known by the Disputed Domain Name and having no legitimate rights to the Disputed Domain Name. Complainant contends that Respondent’s typosquatting is evidence of bad faith. Complainant further contends that Respondent’s “passive holding” is bad faith and that Respondent has “configured the Domain name for email use” and, further, that Respondent “has no legitimate rights to the Disputed Domain Name, the only reasonable conclusion is that Respondent intends to use the Disputed Domain Name for untoward purposes, such as a phishing attack.” B. Respondent Respondent sent two email communications to the Center asking information about the proceeding, but Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the mark HEAVEN HILL, as evidenced by its United States and European Union trademark registrations. The Disputed Domain Name incorporates the HEAVEN HILL mark in its entirety and, thereby, renders it confusingly similar. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The addition of the “s” does not avoid a finding of confusing similarity. Neither does the addition of the word “brand”. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent manifestly registered the Disputed Domain Name in bad faith. Its careful mimicking of Complainant’s trademark and domain name admits not only that Respondent was fully aware of Complainant’s rights, but also that it intended to deceive, varying the Disputed Domain Name so minimally that even careful Internet users would likely overlook the difference. This is also evidence of bad faith use. “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview 3.0, section 3.1.4. Importantly, Complainant makes the serious allegation that Respondent has no conceivable legitimate purpose in registering this deceptive variant of Complainant’s trademark and that Respondent intends to pursue “untoward purposes, such as a phishing attack.” Complainant has the burden of proof regarding this allegation, but given the prevalence of cyber fraud, it is not asking too much to expect Respondent to answer these allegations and at least deny their truth. Rule 14(b) provides: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Moreover, “[P]anels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by Respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.” WIPO Overview 3.0, section 4.3. Where a party alleges an intent to facilitate email fraud such as phishing, and there is no other plausible explanation for respondent’s registration of a disputed domain name, it is prudent for the panel to draw adverse inferences against a respondent who ignores the allegation and fails to address complainant’s contentions. Accordingly, the Panel is prepared to draw an adverse inference in view of Respondent’s failure to deny allegations of an intent to facilitate phishing. Even if Respondent’s intention was not to facilitate phishing, the nature of the Disputed Domain Name, and the circumstances of the case, lead to a finding of Respondent’s bad faith, not prevented by the current passive holding of the Disputed Domain Name. Complainant has satisfied 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 Lawrence K. Nodine
Sole Panelist
Date: February 15, 2021
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