1. The Parties The Complainants are Chivas Brothers Limited, Chivas Brothers (Americas) Limited, Chivas Brothers Pernod Ricard Limited, Chivas Brothers (Europe) Limited, Chivas Brothers (Japan) Limited, Chivas Brothers (Americas) Limited of United Kingdom of Great Britain and Northern Ireland (collectively referred to herein as the “Complainant”).
The Respondent is Anyweb Co., Ltd, of Daegu, Republic of Korea.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2006. On November 14, 2006, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On November 15, 2006, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the Complaint in the Korean language on November 23, 2006. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2006.
The Center appointed Thomas P. Pinansky, Antony Gold and Ilhyung Lee as panelists in this matter on January 19, 2007. The Panel finds that it was properly constituted. Each member of 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 The Complainant is the producer of a number of spirits which include among others the Scotch whisky brand CHIVAS REGAL (which incorporates the CHIVAS name into its brand name) and the super premium Scotch whisky brand ROYAL SALUTE (which incorporates the CHIVAS name into its packaging). The two Chivas brothers who originally started the Chivas business commenced trading in 1801. The Complainant began producing CHIVAS REGAL in 1909 and ROYAL SALUTE in 1953.
CHIVAS REGAL and ROYAL SALUTE are sold throughout the Republic of Korea, the country of residence of the Respondent, where during the period July 2005 to June 2006 over 590,000 liters of CHIVAS REGAL were sold and over 39,000 liters of ROYAL SALUTE were sold.
In order to protect the CHIVAS trademark, the Complainant has 32 trademark registrations in respect of CHIVAS covering 34 countries and three pending trademark applications.
In addition to the trademark registrations and applications owned by the Complainant in respect of CHIVAS, the Complainant also owns further 634 trademark registrations and applications which incorporate the CHIVAS mark including 162 trademark registrations for CHIVAS REGAL covering 145 territories.
In an attempt to seek to further protect the CHIVAS name, the Complainant has registered 26 domain names consisting of or comprising the term “chivas”.
5. Parties’ Contentions A. Complainant The Complainant contends the following:
The Complainant has not granted any rights to the Respondent to use the CHIVAS trademarks.
The Respondent has no rights or legitimate interests in the “CHIVAS” name and has never been known by the name “CHIVAS”.
The Respondent is not making any legitimate use of the domain name.
The Complainant has a substantial reputation in the CHIVAS name in connection with Scotch Whisky in the Respondent’s country of residence.
By using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website.
The Respondent’s main reason for purchasing the domain name was to sell it for a profit. If the Respondent has a legitimate use for the domain name it would not have included the invitation to “inquire about this domain” on its homepage.
B. Respondent The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings Language of Proceeding The Complaint was originally filed in the English language and subsequently translated into Korean. There was no response in either language.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent has not objected to English as the language of this proceeding. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
Substantive Elements of the Policy Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “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.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as considered appropriate. (See paragraph 14(b) of the Policy; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000 0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar The Complainant’s marks are registered in many countries to protect the CHIVAS trademark. The domain name wholly incorporates the Complainant’s distinctive mark with the single addition of the gTLD “net” and accordingly is identical to it. The suffix “net” does not contribute to distinguish the disputed domain name from the Complainant’s trademark.
Therefore, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing”. (See Universal City Studios, Inc. v. David Burns and Adam 12 Dot Com, WIPO Case No. D2001 0784; see also International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002 0683).
The Complainant asserted that the Respondent has no relationship with or authorization from the Complainant for using the Complainant’s trademark; that the Respondent had no prior rights or legitimate interests in the domain name; and that the Respondent has not been commonly known by the domain name. The Panel’s view is that facts must be taken as proven provided that they have not been denied by the Respondent. In this case, the Complainant has established a prima facie case showing the the Respodnent lacks rights or legitimate interest and the Respondent has not rebutted this showing.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that a Complainant is required to establish that a domain name has been registered and used in bad faith. Paragraph 4(b) gives examples of bad faith. Among the examples given are (paragraph 4(b)(i)) if the circumstances indicate that a domain name has been acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name and (paragraph 4(b)(iv)) if by using the domain name the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Panel accepts the Complainant's contention that the CHIVAS mark is well-known, and that the Respondent in registering the disputed domain name was in all probability well aware of the Complainant and its rights in the CHIVAS mark. The evidence provided by the Complainant indicates that the disputed domain name has been used to provide access to links to online retail outlets selling alcoholic beverages, including some of the Complainant's products and products of the Complainant's competitors. The fact that the disputed domain name now appears to resolve to an inactive web page is of no consequence in this regard. The uncontested evidence provided by the Complainant is that the Respondent has sought to sell the domain name to the Complainant for an amount of USD25,000. The Panel has little hesitation in the circumstances in concluding that the Respondent registered the domain name with the intention of either selling it to the Complainant for profit, or otherwise using the domain name to benefit from the obvious potential for Internet user confusion with the Complainant's famous mark.
Moreover in past WIPO UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000 1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002 0806) and under the Policy (see Section 2), a well established principle is that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel finds that since the Complainant’s trademark is well known, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s mark. The Panel further notes that the Respondent resides in Korea and that the Complainant’s trademark is associated with one of Korea’s most significant historical events in its modern history, the assassination of President PARK, Chung Hee. It is common knowledge within and without Korea that President Park was drinking CHIVAS REGAL when he met his unfortunate end.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent, paragraph 4(a)(iii) of the Policy.
7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.