Complainant is Chateau Lafite Rothschild of Paris, France, represented by WITETIC, France.
Respondent is Diane Gill of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <baronrrothschild.com> and <rothschildchateaulafite.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Center received an informal communication from Respondent on October 30, 2014. Respondent did not submit any formal response. Accordingly, the Center notified the commencement of the panel appointment process on October 31, 2014.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 4, 2014. 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.
Complainant is active in the wine business and vineyard cultivation in particular. Complainant is the holder of, inter alia, the following registered trademarks, which it uses in connection with its activities:
- Château LAFITE ROTHSCHILD, registered on November 28, 1972 as an international trademark with registration number 395 875 in classes 1 to 42 (with some limitations for specific jurisdictions), and duly renewed;
- BARONS DE ROTHSCHILD, registered on April 9, 1986 as an international trademark with registration number 501 876 in class 33, and duly renewed.
On June 22, 2013, Respondent registered the domain names <baronrrothschild.com> and <rothschildchateaulafite.com>. These domain names are collectively referred to as the “Disputed Domain Names”.
The Disputed Domain Names resolve to parking pages with information on the registrar and inviting the Internet user to purchase the Disputed Domain Names. In the informal communication which the Center received on October 30, 2014, Respondent requested an offer from Complainant in case Complainant wanted to purchase the Disputed Domain Names.
Complainant considers the Disputed Domain Names to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainant, Respondent has not used the Disputed Domain Names in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Names.
Finally, Complainant considers that the Disputed Domain Names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Names are 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 Disputed Domain Names; and
3. The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are trademarks respectively containing the words Château LAFITE ROTHSCHILD and BARONS DE ROTHSCHILD in which Complainant has rights. The trademarks have been registered and used in various countries in connection with a variety of goods and services, although mainly relating to wine.
The Panel considers the Disputed Domain Names <baronrrothschild.com> and <rothschildchateaulafite.com> to be composed of a name that is confusingly similar to the abovementioned trademarks.
The Disputed Domain Name <baronrrothschild.com> differs from the trademark BARONS DE ROTHSCHILD by the replacement of the letter “s” in the word “barons” with the letter “r”, and the omission of the generic word “de”, meaning “of” in French. The Panel is of the opinion that these two changes do not lead to significant differences with the distinctive elements of Complainant’s trademark BARONS DE ROTHSCHILD. The Disputed Domain Name <baronrrothschild.com> is thus considered to be confusingly similar as set out in paragraph 4(a)(i) of the Policy.
The Disputed Domain Name <rothschildchateaulafite.com> reproduces identically the terms CHATEAU, ROTHSCHILD and LAFITE that corresponds to Complainant’s trademark Château LAFITE ROTHSCHILD. The Panel considers that the mere inversion of the terms “Rothschild” and “Château Lafite” in the sequence of the Disputed Domain Name does not diminish the confusing similarity with Complainant’s trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, Respondent is not making any use of the Disputed Domain Names at all. According to the Panel, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO CaseNo. D2011-2209; American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).
Finally, Respondent did not reply to Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the Disputed Domain Names (See INTS IT IS NOT THE SAME, GmbH dba DESIGUAL v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).
The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the registration or acquisition of domain names primarily for the purpose of selling, renting, or otherwise transferring domain name registrations to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names and the registration of domain names in order to prevent the holder of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s trademarks at the moment it registered the Disputed Domain Names, since Complainant’s trademarks are widely known. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO CaseNo. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Respondent is not using the Disputed Domain Names. According to the Panel, the passive holding of domain names may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Names by the Respondent that would be legitimate and not infringing the Complainant’s well-known mark or unfair competition and consumer protection legislation (See Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the Panel is of the opinion that Complainant’s trademarks have a strong reputation and are widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by Respondent.
Furthermore, there is no sign of any good faith use in relation to the Disputed Domain Names. In an informal communication received by the Center on October 30, 2014, Respondent requested an offer from Complainant in case Complainant wanted to purchase the Disputed Domain Names. However, Respondent failed to reply to the many emails in which Complainant offered to resolve the matter amicably, and did not file a Response in the framework of the present proceedings. According to the Panel, this serves as an indication of Respondent’s bad faith.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <baronrrothschild.com> and <rothschildchateaulafite.com> be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: November 18, 2014