Nominet UK Dispute Resolution Service

DRS No. 4373

Jack Daniels Properties, Inc. v. Dale Stirling

Decision of Independent Expert

1	Parties
              
Complainant:	Jack Daniels Properties, Inc.
Country:	US

Respondent:	Dale Stirling
Country:	GB

2	Domain Name
             
<jack-daniels.co.uk> (the “Domain Name”)

3	Procedural Background
               
3.1	The Complaint entered Nominet’s system on 15 January 2007.  Hard copies of the Complaint were received by Nominet on 18 January 2007.  The Complaint was validated and sent to the Respondent on 18 January 2007.  No response was received within the deadline for response of 13 February 2007 (which had been extended by 4 working days for reasons unknown to the Panel) and therefore no response was forwarded to the Complainant.  Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me.  I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 6 March 2007.
                       
4	Outstanding Formal/Procedural Issues (if any)
             
4.1	None
                    
5	The Facts
                 
5.1	The Complainant is a United States corporation, incorporated in the State of Delaware, with its principal place of business in the State of California. The business was established in 1863 by Mr Jack Daniel and involves the distilling and sale of “sour mash” whiskey under the name JACK DANIEL’S. The Complainant’s whiskey is sold throughout the world, including in the United Kingdom, under this name. The Complainant also sells a range of “licensed merchandise” under the JACK DANIEL’S name which may be purchased in the United Kingdom from various well known retailers.
               
5.2	The Complainant is the registered proprietor of the trade mark JACK DANIEL’S in the United Kingdom and Community Trade Mark Registers. The trade mark has been registered for a wide range of goods and services, for the plain words JACK DANIEL’S, stylised versions of the words as used in trade, and for variations on the Complainant’s labels as applied to the goods it sells, including, specifically, its whiskey label.
               
5.3	The Complainant is the wholly owned subsidiary of Brown-Forman Corporation (“BFC”). BFC is the proprietor of a number of domain names incorporating the words “Jack Daniel’s”, including <jackdaniels.co.uk> and <jackdaniels-store.co.uk>.  

5.4	The Respondent is a UK individual.
                    
5.5	The Domain Name was registered on 6 August 2006 in the name of the Respondent (by whom it continues to be held). The Domain Name was then used for a web site that contained links to whiskey-related sites, history and information.
                    
5.6	On the first page of the Respondent’s website was a section headed “Domain name may be for sale…” with a hyperlink titled “Interested in buying this domain?” Clicking on this hyperlink took the user to another webpage, inviting offers for the domain name.
       
5.7	The Complainant first became aware that the Respondent had registered the Domain Name in October 2006.  On 3rd October 2006, the Complainant received an e-mail from a person by the name of Chris Holland, of CHC Internet, indicating that CHC Internet were selling the domain name <jack-daniels.co.uk> and asking whether the Complainant would be interested in purchasing it for a price of US$488. The offer was rejected by the Complainant.
                 
5.8	The Complainant, through its representative Murgitroyd & Company, sent a letter to the Respondent on 2 November 2006 to the contact address given in the WHOIS database for the Domain Name, setting out its position and its rights in the company name and the trade mark JACK DANIEL’S, and requesting that the Respondent transfer the Domain Name to the Complainant. The Respondent has not responded in any way to the Complainant’s request.

5.9	By the time the papers had been passed to me no website was operating from the Domain Name.

6	The Parties’ Contentions
                        
Complainant

6.1	The Complainant seeks transfer of the registration of the Domain Name into the name of BFC, its parent company, on the grounds that it is identical or similar to a name or mark in which the Complainant has rights and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
             
6.2	The Complainant points to its extensive use of the “Jack Daniel’s” brand in connection with whiskey since 1863 as evidencing the fact that it has rights in the “Jack Daniel’s” name. The Complainant asserts that the brand is extremely well-known both in the UK and world-wide, illustrated by the fact that a recent search for the name “Jack Daniels” using the Google search engine produced over 1.4 million references. The whiskey has won numerous medals at international exhibitions since 1904. The Complainant maintains that’s its rights in the name also stem from its international portfolio of registered trade mark registrations for the words “Jack Daniel’s”. 

6.3	The Complainant asserts that the Domain Name, <jack-daniels.co.uk>, is essentially identical to the Complainant’s registered UK and Community trade marks, incorporating the identical words “Jack Daniels”. The Complainant asserts that the Domain Name is also essentially identical to, or similar to, the domain names owned by BFC and in addition, the Complainant states that the Domain Name is essentially identical to the Complainant’s company name, Jack Daniels Properties, Inc.

6.4	The Complainant contends that the Respondent's registration of the Domain Name is abusive. In support of its contention the Complainant makes the following assertions:
                      
●	Use of the disputed website by the Respondent in connection with whiskeys, the core business of the Complainant, takes unfair advantage of the Complainant’s rights in its company name, trade marks and domain names.
                             
●	The Respondent’s registration of the Domain Name has been used to divert trade from the Complainant’s business and confuse the Complainant’s customers.
                 
●	The Respondent has offered to sell the domain name to the Complainant for more than the Respondent paid for it. In addition, the Respondent has actively solicited offers for the domain name on the disputed website. 
                      
Respondent

6.5	The Respondent served no Response in these proceedings.
              
7	Discussion and Findings:
             
General 

7.1	To succeed under the Nominet Dispute Resolution Service Policy (the "Policy"), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
               
7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
Abusive Registration means a Domain Name which either:
     
(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights: OR

(ii)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant 's Rights.

7.3	The failure by the Respondent to file submissions in response does not entitle the Complainant to the equivalent of a default judgment on these issues. The Complainant still has to make out its case on the balance of probabilities under the Policy to obtain the decision it wants. 
                 
Complainant’s Rights
        
7.4	I am satisfied on the evidence that the Complainant owns numerous trade mark registrations that comprise or incorporate the words “JACK DANIEL’S”.  These include Community Trade Mark registration No. 154,211 in classes 32 and 33 and UK Trade Mark registration No. 2,024,025 in class 33 which are both for the words “JACK DANIEL’S” alone.  The Domain Name consists of the words “Jack Daniel’s” with a hyphen between them and without the apostrophe between the letters “l” and “s”.   It is not possible to register a “.co.uk” domain name which incorporates either apostrophes or spaces. I therefore have little difficulty in finding that the JACK DANIEL’S mark is identical to <jack-daniels.co.uk> and that the Complainant has made out paragraph 2(a)(i) of the Policy.
                       
Abusive Registration

7.5	Although the email from Chris Holland at CHC Internet dated 3 October 2006 asserts that the website was initially registered in 1996, WHOIS query results show that the Domain Name was registered in August 2006.  In either case, I have little doubt that given the fame and distinctive nature of the Jack Daniel’s brand that the Respondent registered the Domain Name in full knowledge of the Jack Daniel’s name for whiskey products. 
               
7.6	A non-exhaustive list of factors that may provide evidence that a domain name is an Abusive Registration is set out in paragraph 3 of the Policy.  Although the Complainant does not expressly say that any of these examples apply in this case, its submissions suggest that it relies primarily (if not exclusively) upon sub-paragraph 3(1)(i)(A) in this case. 
                    
7.7	Sub-paragraph 3(1)(i)(A) refers to:
                       
Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily … for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
                          
7.8	I am persuaded that possible sale of the domain name to the Complainant or its competitors was in the mind of the Respondent at the time when he registered the domain name. The facts that on the uncontested evidence of the Complainant the  Respondent made an unsolicited offer of sale of the Domain Name to the Complainant in October 2006 and the website operating from the Domain Name included an offer for sale of the Domain Name, are compelling.  The sum of US$488 sought is very modest but there is no evidence that these represent solely the Respondent’s out of pocket costs associated with acquiring or using the Domain Name. 
                
7.9	Was the Domain Name in this case registered “primarily” for this purpose?  I do not know, but there in one factor that would suggest that it may not have been. For example, the website operating from the Domain Name includes a large number of “sponsored links”. This suggests that the Respondent registered the Domain Name in order to set up such a website in the hope that internet users looking for the Complainant would inadvertently find their way to the Respondent’s website and in turn use these links thereby earning “click through” revenue for the Respondent. 
                 
7.10	However, registering a domain name in order to obtain “click through” revenue by trading off the goodwill and reputation of the owner of a well known brand such as Jack Daniel’s in the manner I have described, is of itself abusive.   
                    
7.11	I therefore have little difficulty in concluding that whatever the exact intentions of the Respondent in this case, his registration and subsequent use of the Domain Name have been abusive.  
                   
7.12	The decision in Chivas Brothers Limited -v- David William Plenderleith (DRS 00292) (the "Chivas Case") is also relevant here.  In the Chivas case the expert stated that: "where a Respondent registers a Domain Name:
                          
1		which is identical to a name in respect of which the Complainant has rights; and
                     
2	where that name is exclusively referable to the Complainant; and
                        
3		where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and

4		where the Respondent has come forward with no explanation for having selected the Domain Name,
               
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws those inferences."

7.13	All four limbs of the Chivas Case test are satisfied in this case and consequently, even without the additional evidence that I have described in this decision, it is reasonable to infer that the purpose of the registration was abusive. 
                 
7.14	I therefore find that the Complainant has made out a case of Abusive Registration pursuant to paragraph 2(a)(ii) of the Policy. 
                
8	Decision
              
8.1	I find that the Complainant has Rights in the JACK DANIEL’S mark, which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.2	The Complainant has requested that the Domain Name be transferred into the name of its parent company, BFC, rather than into its own name. Paragraph 11(a) of the Policy and paragraph 17(c) of the Nominet Dispute Resolution Service Procedure envisage that the Expert will make a decision that a Domain Name “should be cancelled, suspended, transferred or otherwise amended”. Nominet states on its website that “Generally, if the expert thinks that the complainant has met the tests in the Policy, they will order that the domain name is transferred to the complainant”.  However, I can find no evidence to suggest that the Expert’s power to order the transfer of a Domain Name does not extend to transfer of the Domain Name to another company connected with the Complainant if that is the remedy requested by the Complainant.

8.3	I therefore determine that the Domain Name should be transferred to the Complainant’s parent company, BFC.
                  
Matthew Harris

20 March 2007