Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States” or “U.S.”), represented by Wyatt, Tarrant & Combs, United States.
Respondent is Contact Privacy Inc. Customer 12410197688, Canada / Rich Seeley, 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 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed amended Complaints on August 31, 2021 and September 12, 2021.
The Center verified that the Complaint together with the amended Complaints 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on October 8, 2021.
The Center appointed Brian J. Winterfeldt 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.
Complainant was founded in 1935 as a bourbon distiller and distributor and is now one of the largest spirits suppliers in the United States. Complainant has been offering bourbon under the HEAVEN HILL trademark since 1937. Complainant’s legal name is Heaven Hill Distilleries, Inc., as demonstrated by a Certificate of Existence issued by the Kentucky Secretary of State in the United States. Complainant owns numerous registrations in the United States and other jurisdictions for the HEAVEN HILL word mark and for stylized and design marks containing the HEAVEN HILL word element, as follows:
- HEAVEN HILL BRANDS & Design (U.S. Reg. No. 4770439), registered on July 7, 2015 in Class 33;
- HH HEAVEN HILL DISTILLERY & Design (U.S. Reg. No. 5934138), registered on December 10, 2019 in Class 33;
- HEAVEN HILL DISTILLERY EST 1935 & Design (U.S. Reg. No. 5242398), registered on July 11, 2017 in Classes 33, 35, and 41;
- HEAVEN HILL SELECT STOCK & Design (U.S. Reg. No. 4495860), registered on March 11, 2014 in Class 33;
- HEAVEN HILL DISTILLERIES INC. AMERICAN WHISKEY COLLECTION & Design (U.S. Reg. No. 3875902), registered on November 16, 2010 in Class 33;
- HEAVEN HILL (U.S. Reg. No. 0693986), registered on March 1, 1960 in Class 33;
- OLD HEAVEN HILL (stylized) (U.S. Reg. No. 0355451), registered on March 3, 1938 in Class 33;
- HEAVEN HILL (European Union Trade Mark Reg. No. 001871235), registered on December 12, 2001 in Classes 32 and 33;
- HEAVEN HILL (Japan Reg. No. 2413989), registered on May 29, 1992 in Class 33;
- HEAVEN HILL (Mexico Reg. No. 433779), registered on April 30, 1993 in Class 33;
- HEAVEN HILL (New Zealand Reg. No. 295011), registered on December 22, 1998 in Class 33;
- HEAVEN HILL (Romania Reg. No. R054193), registered on February 10, 2003 in Class 33;
- HEAVEN HILL (Russian Federation Reg. No. 482041), registered on March 5, 2013 in Class 33;
- HEAVEN HILL (Taiwan Province of China Reg. No. 651434), registered on August 16, 1994 in Class 33.
Complainant has also owned registrations for the
The disputed domain name was registered on May 13, 2021. At the time the Complaint was filed and currently, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is essentially identical to Complainant’s HEAVEN HILL trademarks, in which Complainant has rights as demonstrated through its cited registrations. In addition, Complainant states that the disputed domain name is identical to Complainant’s formal business name. Complainant contends that thus, the disputed domain name is confusingly similar to Complainant’s trademarks.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that the disputed domain name does not currently resolve to an active website, and thus there is no bona fide offering of goods or services associated with the disputed domain name. Complainant asserts that there is no evidence that Respondent is commonly known by the disputed domain name and that there is no evidence that Respondent has made a legitimate noncommercial or fair use of the disputed domain name. Complainant states that MX records indicate that Respondent has configured the disputed domain name for use with the Google email service, but that Respondent would have no legitimate reason for doing so that would be considered bona fide.
Complainant states that the disputed domain name is identical to Complainant’s business name, aside from internal spaces and punctuation, and asserts that this is evidence that Respondent has deliberately targeted Complainant and has thus registered the disputed domain name in bad faith. Complainant also asserts that Respondent is passively holding the disputed domain name and cites prior UDRP panels that have found that non-use, under the doctrine of passive holding, does not prevent a finding of bad faith. Complainant also notes that Respondent has configured the disputed domain name for email use, and contends that this is an indication that Complainant intends to use the disputed domain name for purposes such as phishing. Thus, Complainant contends that the disputed domain name has been registered and used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns numerous registrations in the United States and international jurisdictions for the HEAVEN HILL mark and for stylized and design marks containing the term HEAVEN HILL, as referenced above. Therefore, Complainant has established that it has rights in the HEAVEN HILL mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element 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, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the HEAVEN HILL trademark in its entirety, with the addition of the terms “distilleries” and “inc” after the term “heavenhill”. Prior UDRP panels have generally found that the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Covanta Energy Corporation v. Domains By Proxy, LLC / Peter Allen, Covantaholdingcorporation,WIPO Case No. D2018-0285. That the disputed domain name is also identical to Complainant’s legal name, while containing Complainant’s HEAVEN HILL trademark in its entirety, affirms a finding of confusing similarity.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its HEAVEN HILL mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has alleged 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 contention that Respondent is not commonly known by the disputed domain name. As the disputed domain name does not resolve to an active website, Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name, and, particularly in the absence of a response that might detail any rights or legitimate interests, Respondent’s use of the disputed domain name also cannot be considered a bona fide offering of goods or services.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIn this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the HEAVEN HILL trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the HEAVEN HILL trademark when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. That Respondent registered a domain name identical to Respondent’s legal name further indicates that Respondent was likely aware of Complainant and its HEAVE HILL trademarks.
Respondent is currently holding the disputed domain name passively. From the inception of the UDRP, panelists have found that the non-use of a domain name, including use under which the domain name does not resolve to an active website, would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the concealment of the respondent’s identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. The passive holding doctrine applies in this case because Complainant’s mark is highly distinctive, Respondent failed to come forward with any evidence of a conceivable good faith use for the disputed domain name, and it is implausible that Respondent can put the disputed domain name to any conceivable good faith use without infringing upon Complainant’s rights in its HEAVEN HILL mark. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s HEAVEN HILL trademark in its entirety with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users for Respondent’s commercial gain. This conclusion is strengthened by the fact that the disputed domain name was assigned mail exchange (“MX”) records, demonstrating that Respondent has the ability to send from and receive email communications to the disputed domain name. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472; see also bioMérieux v. Registration Private, WIPO Case No. D2020-3499.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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
Brian J. Winterfeldt
Sole Panelist
Date: October 27, 2021