Complainant is Age International, Inc. dba Blanton Distilling Company, United States of America (“United States”), represented by Leason Ellis LLP, United States.
Respondent is Michael Chan, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, 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 July 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 22, 2021 (hereinafter, “the Complaint.”)
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 Respondent of the Complaint, and the proceedings commenced on August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. Respondent sent an informal email on August 7, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 13, 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 BackgroundComplainant sells a brand of bourbon whiskey sold as “Blanton’s Bourbon.” Complainant is the registrant of the mark BLANTON’S, which it first registered in the United States on July 7, 1992, and which has been in use in the United States since October 3, 1984. Complaint, Annex 3. Complainant is also the owner of the mark BLANTON, registered in the United States, and in the United Kingdom. The mark in the United Kingdom issued in 1991. Complaint, Annex 3. A list of Complainant’s registered trademarks in jurisdictions around the world is attached to the Complaint as Annex 3.
Complainant is also the owner of the domain names
Respondent registered the disputed domain name on June 9, 2021. Respondent is using the disputed domain name to resolve to a web site in which Complainant’s products are offered for sale at steep discounts, despite the facts that Complainant has never knowingly sold or provided any of its goods to Respondent. Instead, the web site to which the disputed domain name resolves is a copy of Complainant’s retail website, offering Complainant’s products for sale, using Complainant’s famous script BLANTON’s logo, as well as copyrighted photographs, videos and text taken directly from Complainant’s website. Finally, on Respondent’s website, Respondent is offering Complainant’s products at a steep discount. Complaint, Annex 2. The operator of Respondent’s website is Shoplazza, which has repeadtedly received negative reviews for, among other things, being a scam operator. Complaint, Annex 6
5. Parties’ Contentions A. ComplainantComplainant asserts that the disputed domain name is confusingly similar to its BLANTON and BLANTON’s marks. Complainant contends that Respondent has no rights or legitimate interest in respect of the disputed domain name. Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentRespondent did not file a response, but rather sent a letter to the Center indicating it hoped to settle the matter with Complainant. The Center forwarded a copy of the letter to Complainant, and Complainant indicated it had no wish to settle with Respondent.
6. Discussion and FindingsA Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name consists of the of the word “blanton” followed by the word “bourbon.” The word “blanton” is identical to Complainant’s registered trademark BLANTON and confusingly similar to Complainant’s BLANTON’S registered trademark. The word “bourbon” is descriptive of the product Complainant manufactures and which is sold in conjunction with its trademarks. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithRespondent not only registered a domain name that was confusingly similar to Complainant’s registered trademarks used in conjunction with Complainant’s bourbon whiskey, Respondent stole the content of Complainant’s web site and offered Complainant’s products for sale at steeply discounted prices at the website to which the disputed domain name resolved. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
M. Scott Donahey
Sole Panelist
Date: September 24, 2021