Chivas Brothers Ltd -v- Plenderleith [2002] DRS 658 (12 December 2002)

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The complaint was entered into Nominet’s system on 14 October 2002. Nominet validated the complaint and informed the Respondent on 17 October 2002, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 working days (until 8 November 2002) to submit a Response. No Response was received.

On 11 November 2002 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 21 November 2002.

On 22 November 2002 Nominet invited Tony Willoughby to provide a decision in this case and, following confirmation to Nominet that he knew of no reason why he could not properly accept the invitation to act in this case and that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality (save for the matter that he drew to the parties’ attention was the fact that he had acted for many years as solicitor to The Scotch Whisky Association. The parties were invited to object, if appropriate, and neither party sought to object to the appointment. Nominet duly appointed Tony Willoughby as Expert with effect from 22 November 2002.

As a matter of course, when sending the papers to the Expert, Nominet includes in the papers a printout from the Companies Registry website containing short form details of any party which is a UK registered company. The printout relating to the Complainant discloses that the Complainant was incorporated 12 days after registration of the Domain Name under the name of Yearweb Limited and only acquired its present name by way of a name change about 9 months after registration of the Domain Name.

The Complaint includes a variety of claims to the effect that the Complainant possesses rights going back over a century, but includes no reference to there having been any Assignment.

The Expert was faced with this dilemma: should the Complaint be dismissed out of hand on the basis that on the face of the Complaint the Complainant could not possess the rights claimed for it in the Complaint, or should the Expert conduct an online check at the Trade Marks Registry to verify whether or not there had been an Assignment, a check which need take no more than a couple of minutes of the Expert’s time? The Expert was not prepared to adopt the third option which was to waste further time going back to the Complainant, inviting the Complainant to improve its position, an option open to the Expert by virtue of paragraph 13 of the Procedure.

The Expert was conscious that he had recently “gone public” on Nominet’s behalf to the effect that experts will be getting tough over defective Complaints; equally, he was conscious that in all probability the Complainant possessed the rights claimed for it in the Complainant.

In the end, the Expert decided to verify the existence of the Assignment. The principal determining factor for the Expert was that the Complaint was in all other respects a full and properly prepared document.

The Complainant, Chivas Brothers Limited, is a company incorporated in Scotland. It is the proprietor of amongst others, the CHIVAS REGAL brand of Scotch Whisky and it is the proprietor of a large number of trade mark registrations around the world (including the UK) for marks comprising or including the designation CHIVAS, one of the UK registrations dating back to 1929.

Moreover, for most, if not all of the last 70 years or more, the Complainant and/or its predecessors in title have traded to a substantial degree in the United Kingdom under the name CHIVAS BROTHERS.

The Nominet Whois search with which the Expert has been provided shows that the Domain Name was registered on behalf of the Respondent on 20 January 2000.

On 20 August 2002, solicitors acting on behalf of the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights in the name CHIVAS BROTHERS and, inter alia, seeking assignment of the Domain Name. No reply was received.

There is currently no website accessible under the URL http://www.chivasbrothers.co.uk. The Domain Name has been de-tagged.

The Complainant points to the substantial reputation of its predecessors in title which have traded under and by reference to the name CHIVAS BROTHERS. The Complainant also points to the fame of its principal brand, CHIVAS REGAL and it also points to its several hundred registered trade marks, many of which incorporate, one way or another, the name CHIVAS.

The Complainant claims rights in the names CHIVAS and CHIVAS BROTHERS, the latter of which is identical to the Domain Name.

The Complainant claims that the Domain Name is an abusive registration because in registering the Domain Name the Respondent has appropriated the goodwill of the Complainant. The Complainant also claims that the public will associate the use by a third party of the CHIVAS BROTHERS name as an indication that such use by a third party has been authorised or approved by the Complainant and/or the third party is in some way connected with the Complainant.

The Complainant contends that the Respondent has acquired neither trade mark nor service mark rights in the Domain Name. It further contends that the Respondent cannot be said to be commonly known by the Domain Name “while the Complainant clearly holds such privilege”.

The Complainant refers to the One In A Million case (amongst others) and claims that “the Respondent could have had no other reason to register the Domain Name other than to pass himself off as part of the Complainant or to pass off the Complainant’s products as his own or for one of the reasons detailed in paragraph 3(a) of the Policy and demonstrates registration in bad faith.”

The Complainant refers to the fact that the Domain Name has been de-tagged and claims that it is a reasonable inference that the Respondent has no interest in maintaining the registration of the Domain Name. The Complainant further contends that the Respondent may have given false contact details to Nominet. This latter claim is based on the fact that to date neither the Complainant nor Nominet have had any success in making contact with the Respondent. The Royal Mail have informed the Complainant that the Respondent no longer resides at the address, which appears on the Whois Database.

Furthermore, the Complainant contends that “in registering the Domain Name, the Respondent has inhibited the commercial development of the CHIVAS BROTHERS brand in the UK and worldwide by denying internet users access to the Complainant’s brand.” The Complainant contends that the Respondent is not making any legitimate non-commercial fair use of the Domain Name without intend to mislead/divert consumers. The Complainant further contends that the Respondent’s registration of the Domain Name can have no other effect than to mislead or divert users of the internet.

In sum, the Complainant contends that the registration is an abusive registration and that the registration should be transferred to the Complainant.

Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has rights in respect of the name or 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 as defined in paragraph 1 of the Policy.

These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to respond. The effect of the Respondent’s default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent’s non-compliance as he considers appropriate.

Having verified the existence of an Assignment (see Section 4 above) the Expert is satisfied that the Complainant is the current proprietor of substantial rights in the names CHIVAS and CHIVAS BROTHERS, acquired/developed over the last 100 years and more by the Complainant’s predecessors. The Complaint contained substantial evidence of the existence of those rights.

The Expert is satisfied that the name CHIVAS is similar to and the name CHIVAS BROTHERS is identical to the Domain Name (ignoring, as the Expert is required to do, the first and second level suffixes of the Domain Name).

Paragraph 1 of the Policy defines abusive registration as 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 made in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an abusive registration is set out in paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors is set out in paragraph 4(a) of the Policy.

In the Expert’s view, in the particular circumstances of this case, a detailed analysis of those provisions of the Policy is unnecessary.

On the evidence before the Expert, the name CHIVAS BROTHERS is exclusively referable to the Complainant. It is a distinctive name and at any rate in the context of alcoholic beverages a very famous name. It is inconceivable that the Respondent can have registered that name without having the Complainant firmly in mind.

The Expert agrees with the Complainant that there is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name and the Respondent has elected not to come forward with any explanation for his registration of the Domain Name.

While it may be possible (at least theoretically) that the Respondent registered the Domain Name for no purpose at all, the Expert regards that as most improbable. What could the Respondent’s purpose have been? It could have been with a view to making a use of it, or it could have been with a view to selling it, or simply to block the Complainant. We are left to speculate because the Respondent has not responded, nor has the Respondent made any use at all of the Domain Name.

1. which is identical to a name in respect of which the Complainant has rights; 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.

Accordingly, the Panel finds on the balance of probabilities that the Respondent registered the Domain Name for one or more of the purposes contained in the non-exhaustive list set out in paragraph 3(a)(i) of the Policy or for some other abusive purpose.

Having concluded that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, chivasbrothers.co.uk, should be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Chivas Brothers Ltd -v- Plenderleith [2002] DRS 658 (12 December 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/658.html Cite as: [2002] DRS 658