DECISION

 

Jack Daniel's Properties, Inc. v. Domain Admin / Whois Privacy Corp.

Claim Number: FA1712001762300

 

PARTIES

Complainant is Jack Daniel's Properties, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jackdaniel.com>, registered with Internet Domain Service BS Corp.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 18, 2017.

 

On Dec 12, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <jackdaniel.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name.  Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jackdaniel.com.  Also on December 18, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the world-famous JACK DANIEL’S and JACK DANIEL trademarks for whiskey, prepared alcoholic cocktails, and a wide variety of other goods (collectively, the “JACK DANIEL’S Marks”). Complainant licenses the use of its JACK DANIEL’S Marks on these goods to various companies that produce the actual branded products. JACK DANIEL’S whiskey was first sold in the United States over 140 years ago and has been sold continuously in the United States since then, except during the periods of United States National Prohibition and prohibition in the State of Tennessee, making JACK DANIEL’S whiskey one of the longest-selling consumer products in United States history.  Sales of licensed goods bearing the JACK DANIEL’S Marks have expanded beyond the United States and these products are now available around the globe.

 

“Jack Daniel” is also the name of the man who created JACK DANIEL’S whiskey.  Mr. Daniel named the whiskey after himself and began using the JACK DANIEL’S Marks at least as early as the year 1875 in connection with the production and sale of whiskey.

 

Sales of JACK DANIEL’S whiskey (measured in gross sales to distributors) have been extensive.  Since 1998 alone, sales of JACK DANIEL’S whiskey in the United States have exceeded US$9 billion and JACK DANIEL’S whiskey is currently the best-selling whiskey in the United States.  Global sales since 1995 have exceeded US$20 billion and JACK DANIEL’S whiskey is currently the second-best selling whiskey worldwide.

 

JACK DANIEL’S whiskey has also been extensively promoted.  A print advertising campaign for JACK DANIEL’S whiskey has run continuously in the United States since 1955, making the campaign one of the longest-running advertising campaigns for any consumer product in United States history.  Since 1995 alone, United States expenditures on advertising for JACK DANIEL’S whiskey have exceeded US $1 billion, and worldwide advertising expenditures since 1996 have exceeded US$2 billion.  The brand is also promoted through social media platforms; sports, music, and other event sponsorships; placement in global-release movies; and through the charitable and community service work done by both Complainant and its parent company, Brown-Forman Corporation.

 

Complainant has used the JACK DANIEL’S Marks in its primary website addresses www.JackDaniels.com and www.jackdanielsgoods.com for many years prior to Respondent’s registration of the <JackDaniel.com> domain name.  By accessing the websites to which these domain names resolve, persons interested in information about JACK DANIEL’S whiskey can learn about the various products offered and hundreds of thousands of people do so every month.

 

Complainant and its predecessors-in-interest have also licensed the JACK DANIEL’S Marks extensively for use in connection with a wide variety of collateral and gift merchandise, including bar products, clothing, lighters, clocks, flasks, key rings, coasters, spectacle and business card cases, leather gift sets, mirrors, tins, and flags, among many such products.  Such goods have been sold and distributed in many countries around the world.

 

As a result of Complainant’s extensive efforts, the JACK DANIEL’S Marks has become nearly universally recognized around the globe.  The value of the JACK DANIEL’S brand is currently over US$4.6 billion, and it has consistently been ranked in the top 100 global brands across all product/service categories by Interbrand magazine.  Further, Google searches for this famous brand show results that exclusively refer to Complainant.  Many unsolicited news articles have been written about the brand over the years, various previously-owned collateral items bearing the JACK DANIEL’S Marks are regularly bought and sold as collectibles through online platforms such as eBay, and customer fan clubs have even been formed independent of Complainant’s own promotional efforts. 

 

Finally, Complainant owns many registrations of the JACK DANIEL’S Marks for whiskey and related merchandise in numerous countries throughout the world.  Complainant’s predecessors-in-interest first registered this mark in the United States in 1932 and additional registrations have since been obtained including the following examples:

 

A.           The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(Policy, Paragraph 4(a)(i);  Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

 

Apart from its use of the .com TLD, Respondent’s <JackDaniel.com> domain is identical, on its face, to Complainant’s registered JACK DANIEL Mark and the name of its founder, Mr. Jack Daniel. 

 

Further, its removal of the letter “s” makes it confusingly similar to the JACK DANIEL’S Mark. It has been held, in decisions too numerous to mention, that a minor misspelling of a complainant’s trademark creates a confusingly similar domain name. See W.W. Grainger, Inc. v. Private Registration (auc), Claim No. FA 1281960 (Forum 2009) (<gainger.com> held confusingly similar to GRAINGER trademark).  In DIRECTV, Inc v. Digi Real Estate Foundation, Claim No. FA 914942 (Forum 2007) the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, and <dorecttv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, December 12, 2007), the respondent used a minor misspelling of the complainant’s trademark in the domain brwonells.com leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.”  Id.

 

As in the above-cited decisions, Respondent in the present dispute creates confusion by using an identical copy of Complainant’s JACK DANIEL Mark and a very minor misspelling of Complainant’s JACK DANIEL’S Mark thereby seeking to make those who view the <JackDaniel.com> domain wrongly believe that it is the legitimate <JackDaniels.com> domain of the Complainant.  See Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address”).  As reasoned in Athanasios, even if those who encounter the <JackDaniel.com> domain discover it is not owned by Complainant, they may nevertheless be led to believe that Complainant endorsed, sponsored or affiliated itself with activities carried out using the domain.

Further, the addition of the .com gTLD does nothing to alleviate confusion between the JACK DANIEL’S Marks and the <JackDaniel.com> domain. See Focus Do It All Group v. Athanasios Sermbizis, supra (“Indeed, it is well-settled that the mere addition of a TLD to a famous trademark does not avoid confusing similarity”);  Tinder, Inc. v. Giovanni Laporta / Yoyo.Email, FA 1610656 (Forum 2015) (“The disputed domain name [tinder.email] is identical to Complainant’s registered [TINDER] trademark, but for the addition of the ‘.email’ top-level domain, which is irrelevant for purposes of paragraph 4(a)(i) of the Policy.”)

In light of the above, and given the accepted view that Policy ¶4(a)(i) is a mere threshold test for proceeding with a UDRP case, Complainant has clearly proven that the <JackDaniel.com> domain is identical to the JACK DANIEL Mark and confusingly similar to the JACK DANIEL’S Marks.

B.        Respondent has no rights or legitimate interest in respect of the domain name;

(Policy, Paragraph 4(a)(ii);  Rules, Paragraph 3(b)(ix)(2))

Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <JackDaniel.com> domain.  None of these circumstances apply to Respondent in the present dispute.

 

Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i).  The <JackDaniel.com> domain uses what is known as the fast flux DNS (FFDNS) technique^[1] through which users are automatically redirected through a rotating series of other websites, some of which attempt to install malware on the computers of unsuspecting users. In the present case, the final redirected page from the <JackDaniel.com> domain name displays a false “your current Adobe Flash Player version is out of date” message and encourages users to click on an “Update” button.^[2].  If this button is clicked, the malware download begins. Furthermore, the FFDNS technique attempts to throw investigators off the trail by redirecting users to different final websites on subsequent attempts at browsing to the same domain name. When the <JackDaniel.com> domain is input into the same browser a second time it resolves to a classic pay-per-click page showing links to both Complainant and its competitors. This sort of activity is on the rise and has been found not to provide a domain owner with any rights or legitimate interest in a disputed domain name.  See, e.g., Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., Claim No. FA 1749276 (Forum October 18, 2017) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.” Citing MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum November 28, 2016); CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, Case No. D2017-0144 (WIPO, March 17, 2017) (“Respondent is not using the disputed domain names in a bona fide manner” where “[t]he Respondent’s websites are alleged to redirect visitors to a rotating number of websites that either contain PPC links, advertisements for the Complainant or a competitor of the Complainant, or sites allegedly designed for phishing or distribution of malware.”; WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum November 9, 2015) (“Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name” where “Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer.”)

As for the <JackDaniel.com> domain resolving to a classic pay-per-click page, this displays links that divert visitors - likely Complainant’s customers and potential customers - to other websites that are not associated with Complainant and, in some instances, are owned by its competitors in the alcoholic beverage industry. UDRP Panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Health Level Seven International, Inc. v. McCarragher, FA 1723981  (Forum 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶4(c)(i) or (iii).”); Homer, TLC Inc. v. Lorna Kang, Claim No. FA573872 (Forum 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”)

With respect to Policy ¶4(c)(ii), the Whois records for the <JackDaniel.com> domain lists Respondent as “Domain Admin / Whois Privacy Corp.” Upon information and belief, Respondent is not commonly known by the <JackDaniel.com> domain or the term “Jack Daniel”, nor does Respondent operate a business or other organization under the JACK DANIEL’S Marks or this domain name and it does not own any trademark or service mark rights in the “JACK DANIEL’S” name. See Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”); Montres Breguet S.A. v. Domain Administrator / PortMedia, FA 1417906 (Forum 2012) (“Based upon the WHOIS information and the lack of contradicting evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii)”).  In fact, Respondent’s use of a privacy service to hide its identity indicates that it specifically did not want to reveal the name by which it is commonly known. This has been held indicative of no rights or legitimate interests accruing to a Respondent under ¶4(c)(ii). See, e.g. L'Oréal SA v. PrivacyProtect.org/ WangShanShan, Case No. D2014-0295 (WIPO, 2014) (“there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name.”)

Next, Respondent is not making a legitimate noncommercial or fair use of the <JackDaniel.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii).  The fact that the term “Jack Daniel” corresponds precisely to the name of Complainant’s founder combined with the resolution of the <JackDaniel.com> domain, at certain times, to a pay-per-click website that makes many references to Complainant, leads to the only reasonable conclusion that the domain is derived from Complainant’s JACK DANIEL’S Marks.  As such, the <JackDaniel.com> domain is not being used for any generic or descriptive meaning. Google searches of the terms “JACK DANIEL’S” all relate to Complainant. Thus, Respondent uses the domain to confuse and misleadingly divert consumers, or to tarnish the well-known JACK DANIEL’S Marks.  Such use cannot be considered fair and it also does not fit into any accepted category of fair use such as news reporting, commentary, political speech, etc. Rather, based upon the overwhelming fame of the JACK DANIEL’S Marks, those who see the <JackDaniel.com> domain and the resulting pay-per-click links will immediately perceive the domain to refer to Complainant and for the Respondent to claim otherwise would be disingenuous and highly suspect. See, e.g. DD IP Holder LLC v Manpreet Badhwar, Claim No. FA 1562029 (Forum 2015) (Respondent’s claim that its <Dunkin.menu> domain would be used to promote its basketball classes – i.e., “dunkin” the ball – held not credible and provided it with no rights or legitimate interests in the domain); Target Brands, Inc. v. Nathan Lytlepinhey, Claim No. FA 1657101 (Forum 2016) (“Respondent’s only assertion of a good faith use (that the domain Names [cvstargetrx.com and cvspharmacytarget.com] were for use in connection with the “Central Valley Stars” – an unsupported allegation) is, in the context of the facts of this case, unbelievable.”)

 

Finally, Respondent’s use has tarnished and diluted Complainant’s Marks.  As a result of its using the <JackDaniel.com> domain name in association with websites that offer either malware or goods and services not provided by the Complainant, Respondent has diminished the public’s capacity to associate the famous JACK DANIEL’S Marks with the quality products offered by Complainant.  Respondent’s use creates the very real risk that Complainant’s trademark is not only being associated with the negative image of malware, but also to products and services over which Complainant has no quality control.

C.        The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b);  Rules, paragraph 3(b)(ix)(3))

The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.  See Policy ¶4(b)(iv).

Respondent intentionally uses the JACK DANIEL’S Marks without consent from Complainant.  Respondent was on actual notice of Complainant’s rights in its Marks as a result of Complainant’s extensive use of the Marks and the overwhelming global fame that it has achieved, all of which long predates the date on which Respondent acquired the <JackDaniel.com> domain.  Furthermore, as the domain is identical to the JACK DANIEL Mark and confusingly similar to the JACK DANIEL’S Mark, it is a certainty that Respondent created the <JackDaniel.com> domain upon its knowledge of Complainant’s Marks. Therefore, Respondent intentionally used the domain with knowledge of, and in violation of Complainant’s trademark rights. See, e.g., Amazon Technologies, Inc. v. thejeswar reddy, FA 1721564 (Forum 2017) (registration and use of amazoncloths.com domain found to be in bad faith where “Respondent is using a domain name that incorporates Complainant's well-known trademark to promote a competing business, under circumstances strongly supporting an inference that Respondent's conduct is targeted directly at Complainant or its mark.”); Google Inc. v. Ahmed Humood, FA 1591796 (Forum 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”)

 

Even after Complainant sent a demand letter to Respondent on July 28, 2017 and follow-up letters on August 8, 2017 and August 15, 2017, at the email address listed in the Whois record for the <JackDaniel.com> domain, Respondent has remained silent and continues to use the offending domain.

 

That Respondent both registered and is using the <JackDaniel.com> domain name in bad faith is clearly seen from its use of the FFDNS technique to resolve the domain to third-party websites, some of which seek to deposit malware on a user’s computer for the purposes of hacking, phishing, identity theft, etc., any of which could provide commercial benefit to Respondent or those promoting the use of malware (e.g., for identity theft, hacking, etc.). See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., supra, (bad faith found where “Respondent’s <harywinston.com> uses a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”); and DD IP Holder LLC v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1748952 (Forum October 23, 2017) (redirecting users, through a technique known as fast flux DNS (“FFDNS”), “to distribute malware to the computers of unsuspecting Internet users, under Policy ¶4(b)(iv) that too demonstrates Respondent’s bad faith in registering and using the domain names to distribute malware to the computers of unsuspecting Internet users, under Policy ¶4(b)(iv).”)

 

Further, Respondent is seeking commercial gain as seen in the pay-per-click resolution of the <JackDaniel.com> domain. When a visitor to this website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site.  Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <JackDaniel.com> website.  See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).

 

In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark.  The domain name led to a search directory website with links to third party vendors, including competitors of Complainant.  Id.  The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv).  Id.

 

Similarly, in Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed.  Id.  The respondent’s website offered pay-per-click links to hunting equipment and related items.  Id.  The Panel found that such listing of links were provided purely for respondent’s commercial gain.  Id.

 

Here, Respondent’s generation of click-through fees from its <JackDaniel.com> domain results from pay-per-click links and alone constitutes commercial gain.  Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the <JackDaniel.com> domain and its websites results in a commercial gain for others by forwarding visitors to third parties.  Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who are forwarded from the links at the <JackDaniel.com> domain.  There is no other rational explanation for Respondent having registered and maintained the <JackDaniel.com> domain and, in some cases, resolving it to a pay-per-click site with commercial links that relate directly to Complainant’s alcoholic beverage business. Respondent’s use of the <JackDaniel.com> domain is commercial because the various companies forwarded from the website benefit from the subsequent interest and purchases of those who visit the site.  UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial.  See Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000)  (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).

 

Of course, as the owner of the <JackDaniel.com> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain.  See Disney Enterprises, Inc. v. ll, FA 1336979 (Forum 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); Transamerica Corporation v. Domain Administrator / Sandesa, Inc., FA 1704763 (Forum 2017) (Respondent is responsible for the use made of the domain name. Knowingly registering a domain containing another’s mark and parking it without limiting the ability of the parking service to improperly use it is sufficient evidence of bad faith registration and use.”)

Finally, Respondent is using a Whois privacy service and its true identity may only become known if its Registrar discloses this information after Complainant submits the present Complaint. Respondent’s hiding of its identity behind a privacy service is further evidence of its bad faith registration and use.  As was held in Compagnie Générale des Etablissements Michelin v. Balticsea LLC, Case No. D2017-0308 (WIPO, April 10, 2017), “Respondent used Contact Privacy Inc., a privacy service provider, to register the disputed domain name, which may constitute a factor indicating bad faith.”

Thus, all of the facts here strongly demonstrate that Respondent has registered and used the <JackDaniel.com> domain in bad faith under Policy ¶4(a)(iii).

 

D.        Burden of proof.

 

As UDRP proceedings are administrative, the standard of proof is the balance of probabilities (i.e., more likely than not). See, e.g., Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, Case No. D2014-2227 (WIPO, 2014); Citigroup Inc. v. Philip Morrish, FA 1600832 (Forum 2015).  Further, it is sufficient for the Complainant to make a prima facie showing that the Respondent has violated the terms of Policy ¶4(a) in order to place the burden of rebuttal on the Respondent.  Champion Innovations, Ltd. v. Udo Dussling (45FHH), Case No. D2005-1094 (WIPO, 2005); WordPress Foundation v. Pham Dinh Nhut, FA 1603156 (Forum 2015).  Finally, to the extent not disputed by a Respondent, “asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant”.  Imax Corporation v. Imaxcinemas.com c/o Nameview Inc. v. Whois Identity Shield/ “Imax Corporation”, Case No. D2010-0182 (WIPO, 2010).

 

In the present case, Complainant has more than met its burden of proof and has made more than the minimum prima facie showing that the Respondent has violated all three elements of the Policy.  As such, a transfer decision is fully supported in this case.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)          the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          Respondent has no rights or legitimate interests in respect of the domain name; and

(3)          the domain name has been registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)          the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          Respondent has no rights or legitimate interests in respect of the domain name; and

(3)          the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the JACK DANIEL and JACK DANIEL’S mark based upon registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. JACK DANIEL—Reg. No. 2,795,048, registered Dec. 16, 2003; JACK DANIEL’S—Reg. No. 582,789, registered Nov. 24, 1953). Registration with a governmental trademark agency, such as the USPTO or the European Trademark Office (“EUTM”), is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant’s registration of the JACK DANIEL and JACK DANIEL’S marks with the USPTO and EUTM is sufficient to establish Complainant’s rights in the mark under Policy ¶4(a)(i).

 

Complainant claims Respondent’s <jackdaniel.com> domain name is identical to the JACK DANIEL mark, because the domain name consists entirely of the mark—less the space—and the added “.com” gTLD.  No domain name may contain spaces because spaces are prohibited characters in domain names.  Therefore, the omission of spaces is disregarded under a Policy ¶4(a)(i) analysis.  A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs.  Domain name syntax prohibits spaces.  Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). The domain name is identical to the JACK DANIEL mark under Policy ¶4(a)(i).

 

Complainant claims Respondent’s <jackdaniel.com> domain name is confusingly similar to the JACK DANIEL’S mark, because the name consists entirely of the mark, less the space, apostrophe, and letter “s” in the mark. No domain name may contain an apostrophe because apostrophes are prohibited characters.  Therefore, the omission of an apostrophe is also disregarded under a Policy ¶4(a)(i) analysis.  The other minor changes (such as omitting the space and adding the terminal letter “s”) are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶4(a)(i) analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the  SHIPCARSNOW mark because the domain name simply removes the letter “s”). The <jackdaniel.com> domain name is also confusingly similar to the JACK DANIEL’S mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent has no rights or legitimate interests in <jackdaniel.com> because Respondent is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Respondent used a WHOIS privacy service to register the disputed domain name.  The WHOIS information of record identifies Respondent as “Domain Admin / Whois Privacy Corp.” It seems clear Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).

 

Complainant claims Respondent lacks rights or legitimate interests in the <jackdaniel.com> domain name, which is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the FFDNS technique to automatically redirect Internet users through a rotating series of websites, some of which attempt to install malware on users’ computers. Such a use does not give Respondent rights or legitimate interests in a domain name under Policy ¶¶4(c)(i) or (iii). See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶4(c)(i) & (iii).”). The domain name resolves to a series of websites, some of which attempt to install malware on users’ computers. Given such a use, Respondent has no rights or legitimate interests in the domain name under Policy ¶4(c)(i) or (iii).

 

Complainant claims the <jackdaniel.com> domain name occasionally resolves to a website which is being used to obtain click-through revenue by linking to competing third-party websites. Using a domain name to link to a complainant’s competitors does not create rights or legitimate interests under Policy ¶¶4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Respondent’s domain name occasionally resolves to a website displaying only pay-per-click links, some of which send users to competitor’s websites. Respondent does not have rights or legitimate interests in the <jackdaniel.com> domain name.

 

In addition, Respondent has acquired no rights by registering the disputed domain name because Respondent has not publicly associated itself with the domain name. Title to the domain name is held by a naked trustee, who disclaims any interest in the domain name.  The public does not know Respondent’s identity.  Respondent cannot acquire any rights to the domain name under such circumstances.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent’s bad faith is indicated by its use of the <jackdaniel.com> domain name to link to a variety of third party websites, some of which compete with Complainant’s business. Using a domain name to resolve to a dynamic parking page of third-party links, including competing links, demonstrates a respondent’s bad faith under Policy ¶¶4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Defendant does as Complainant claims, based upon the screenshots provided to the Panel. Respondent has registered and used the domain name in bad faith under Policy ¶¶4(b)(iii) and (iv).

 

Complainant claims some of the web sites Respondent links to using the FFDNS technique attempt to install malware on consumers’ computers, which is evidence <jackdaniel.com> domain name was registered and is being used in bad faith. The evidence presented supports Complainant’s clams.  Using a domain name to resolve to a chain of domain names is evidence of bad faith (basically it is just a rotating parking page), as well as attempting to surreptiously download malware. See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”); see also Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).

 

Complainant claims it is inconceivable Respondent could have registered the <jackdaniel.com> domain name without actual knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's JACK DANIEL and JACK DANIEL’S marks. The Panel would agree, especially since Respondent’s domain name periodically links to Complainant’s web site.  Actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). It seems clear Respondent had actual knowledge of Complainant’s rights in the marks and thus registered the name in bad faith.

 

Respondent registered the disputed domain name using a privacy service.  In the commercial context, this raises a rebuttable presumption of bad faith.  Respondent has done nothing to rebut that presumption.  Therefore, this Panel is willing to find bad faith on this ground alone.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <jackdaniel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, January 15, 2018