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 August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 August 12, 2021, 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 August 13, 2021.
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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on October 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 states in its Complaint (as amended) and provides evidence in the respective annexes sufficient to support that Complainant, Age International, Inc. dba Blanton Distilling Company, is a producer and distributor of bourbon whiskey products under the trademarks BLANTON’S and BLANTON (collectively, the “BLANTON’S Mark”), operating from a distillery facility located in Kentucky, United States dating back to the late 1800s as shown on Complainant’s official website at “www.blantonsbourbonshop.com” (“Official Website”). Since 1984 Complainant has produced a “super premium” category of bourbon known as “single barrel” that has received recognition as exceptional, winning numerous awards listed on the Official Website. Complainant’s evidence submitted in the Annexes to the Complaint supports its claim that the BLANTON’S Mark is well known, showing third party recognition of Complainant’s products identified by the BLANTON’S Mark through a list of awards from 1997 through 2019.
Complainant owns a number of trademark registrations worldwide, including the United States, for marks that consist of or contain BLANTON’S or BLANTON including but not limited to, the following:
United States Trademark Registration No. 1,699,319, BLANTON’S, registered on July 7, 1992, for alcoholic beverages; namely, bourbon whiskey, in international class 33, and claiming a first use date of October 3, 1984.
United Kingdom Trademark Registration No. UK00001400403, BLANTON, for bourbon whiskey in international class 33, registered on March 15, 1991.
Japan Trademark Registration No. 2685443, BLANTON, for bourbon whiskey in international class 33, registered on July 29, 1994.
Complainant is the registrant of and uses the domain names
The disputed domain name was registered on June 9, 2021, and resolves to a copycat website where Respondent displays text copied verbatim from Complainant’s Official Website under the heading “Our History”, as shown in screenshots of Respondent’s website accessed through the disputed domain name submitted as evidence in the Annexes attached to the Complaint.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied all three elements required under the Policy for a transfer of the disputed domain name, namely, that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsThere are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint, as amended to replace the originally named Respondent, “Privacy Redacted”, with the newly disclosed underlying registrant, “Michael Chan”, as Respondent, notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly SimilarOwnership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and subsisting trademark registrations for its BLANTON’S Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657.
With Complainant’s rights in the BLANTON’S Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s BLANTON’S Mark. It is well accepted that the first element of the Policy functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, sections 1.11.1 and 1.7. The Top-Level Domain (“TLD”), in this case “.com”, is disregarded for this comparison because it is functionally necessary for the disputed domain name to be registered. See Research in Motion Limited v Thamer Ahmed Alfarshooti,WIPO Case No. D2012-1146 (.TLD irrelevant for confusing similarity determination); WIPO Overview 3.0, section 1.11 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; see also Société Nationale des Chemins v. Miller,WIPO Case No. D2009‐0891.
The disputed domain name incorporates Complainant’s BLANTON’S Mark in its entirety, omitting the apostrophe before the letter “s”, while adding the term “shop”, which copies the exact term used at the end of Complainant’s domain name
Prior UDRP panels have found typographic differences, such as the inclusion or omission of hyphens and apostrophes, are inadequate to avoid a finding of confusing similarity. See, e.g., L’Oreal v. Tracey Johnson,WIPO Case No. D2008-1721. Based on the above, this Panel finds that the added term “shop” and omitted apostrophe do not prevent a finding of confusing similarity between the disputed domain name and Complainant’s BLANTON’S Mark.
Complainant’s BLANTON’S Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the BLANTON’S Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent is not and has never been a representative or licensee of Complainant nor is Respondent authorized by Complainant to register or use the BLANTON’S Mark in any manner in a domain name or otherwise. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272; see also Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding no rights or legitimate interests where domain name incorporated complainant’s registered mark and respondent was not a licensee of complainant).
Complainant has also shown that Respondent is not commonly known by the disputed domain name. The original Respondent submitted with the initial Complaint could only be identified as “Privacy Redacted” because the registrant for the disputed domain name was wholly redacted in the WhoIs record submitted in the Annex to the Complaint. The Registrar disclosed the underlying registrant, “Michael Chan”, which Complainant amended its Complaint to name as Respondent. Respondent bears no resemblance to the disputed domain name whatsoever. These facts combined with the well-known status of the BLANTON’S Mark and the lack of evidence in the record to suggest otherwise allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name resolves to a website where Respondent is attempting to pass itself off as Complainant. The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows Respondent’s website prominently features the use of text copied verbatim from Complainant’s Official Website under the heading “Our History” and displayed under the same heading using the same stylized font style on Respondent’s website accessed through the disputed domain name. Respondent, therefore, is using the disputed domain name to suggest an affiliation with or sponsorship by Complainant. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”,WIPO Case No. D2012-2525.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant first contends that Respondent registered the disputed domain name in bad faith because Respondent has created a domain name that is confusingly similar to Complainant’s famous BLANTON’S Mark, as found in section 6A above. Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a widely known or famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.
A prior UDRP panel recently found the BLANTON’S Mark well known and known specifically to this Respondent. See Age International, Inc. dba Blanton Distilling Company v. Michael Chan,WIPO Case No. D2021-2292.
Given the record shows that the BLANTON’S Mark is protected by trademark registrations around the world, the oldest of which was registered decades ago, as well as the disputed domain name’s striking similarity to Complainant’s own domain name
Prior UDRP panels have held that a respondent’s actual knowledge of a complainant’s mark may serve as a basis for finding bad faith registration. See OSRAM GmbH v. Azarenko Vladimir Alexeevich, Azarenko Group Ltd,WIPO Case No. D2016-1384 (finding bad faith where “Respondent must have been aware of the Complainant and its said trademark when it registered the disputed domain name” and “the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s long-established trademark rights”). Accordingly, the Panel finds that Respondent had actual knowledge of the BLANTON’S Mark when it registered the disputed domain name, and such a showing is sufficient to establish bad faith registration of the disputed domain name.
Further, as discussed in detail in section 6C and shown in Complainant’s Annex evidence, Respondent’s website accessed at the disputed domain name includes text under the heading, “”Our Story” – the same text which Complainant uses on its Official Website under the same heading. In the circumstances of this case, where Respondent registered the disputed domain name to engage in per se illegitimate activity, the Panel finds such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4 (the use of a domain name for per se illegitimate activity is behavior to be manifestly considered evidence of bad faith).
Bad faith use is also clear because Respondent’s website accessed through the disputed domain name has been created for the purposes of perpetrating fraud to confuse consumers to visit Respondent’s copycat site believing it to be affiliated with Complainant. The Panel finds bad faith use, therefore, because the substantial evidence in the record shows Respondent has been and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s BLANTON’S Mark as to the source, sponsorship, affiliation, or endorsement of its misleading website in violation of paragraph 4(b)(iv) of the Policy.
Finally, the Panel notes that another UDRP panel has recently decided in favor of Complainant against this same Respondent, based on similar fraudulent impersonation of Complainant using the BLANTON’S Mark to sell products at a steep discount, which may be sufficient to show evidence of serial cybersquatting. See Age International, Inc. dba Blanton Distilling Company v. Michael Chan,WIPO Case No. D2021-2292. Complainant has submitted evidence of correspondence with Respondent in negotiation of possible settlement over the domain name at issue in that proceeding
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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
Scott R. Austin
Sole Panelist
Date: October 27, 2021