The Complainant is Heaven Hill Distilleries, Inc., United States of America (“United States”), represented by Wyatt, Tarrant & Combs, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 the Complainant on October 20, 2021, 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 October 25, 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 the Respondent of the Complaint, and the proceedings commenced on October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 26, 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 BackgroundThe Complainant was founded in 1935 as a bourbon distiller and distributer and is presently one of the largest suppliers of spirits in the United States. The EVAN WILLIAMS trademark has been in use since 1955.
The Complainant is the owner, amongst several others, of the domain name
- United States Trademark Registration No. 695,029 for the word mark EVAN WILLIAMS, registered on March 22, 1960, subsequently renewed;
- United States Trademark Registration No. 4,727,131 for the word mark EVAN WILLIAMS, registered on April 28, 2015, in classes 4, 21, 25, 29, 30, and 33; and
- International Trademark Registration No. 957740 for the word mark EVAN WILLIAMS, registered on March 11, 2008, and subsequently renewed, in class 33.
The disputed domain name
The Complainant asserts that since its foundation it has grown to become the largest family-owned and operated producer of distilled spirits in the United States, with its EVAN WILLIAMS bourbon being the second largest bourbon brand in the world.
In the Complainant’s view, the disputed domain name incorporates its well-known EVAN WILLIAMS trademark entirely, creating consumer confusion, being the addition of the letter “s” between “evan” and “williams” in the disputed domain name likely to cause confusion and to deceive as to the affiliation, connection or association of the Respondent with the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since attempts to visit the disputed domain name are blocked by malware protection services, due to malvertising (understood as “the use of online advertising to distribute malware with little to no user interaction required”);
(ii) the Respondent is not commonly known by the disputed domain name, not having the Complainant authorized any third parties to register the disputed domain name; and
(iii) the Respondent is not making any noncommercial or fair us of the disputed domain name.
The Complainant contends that the disputed domain name was registered and used in bad faith given the Respondent’s evident act of typosquatting in view of the mere one-letter variation misspelling of the Complainant’s well-known trademark and use of the disputed domain name in connection with a webpage that appears to use “online advertising to distribute malware with little to no user interaction” through malvertising or “malicious advertising.”
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainant has established rights in the EVAN WILLIAMS trademark, duly registered.
The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety, being the addition of the letter “s” in the disputed domain name; this does not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “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” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the 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, in spite of not having acquired trademark 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 trademark or service mark at issue.
The Respondent has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainants to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed indicates that it has not authorized any third parties to register the disputed domain name.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or to a webpage relating to the disputed domain, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the use of the disputed domain name in connection with a webpage being used in connection with fraudulent activities.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:
(a) the absence of a formal Response by the Respondent;
(b) the choice to retain a privacy protection service so as to conceal the Respondent’s identity; and
(c) the indication of what appears to be false or incomplete contact details provided in the WhoIs information relating to the disputed domain name, resulting in the Written Notice not being delivered to the Respondent by courier.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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,
Wilson Pinheiro Jabur
Sole Panelist
Date: December 10, 2021