The Complainant is L'alliance des Crus Bourgeois du Medoc of Bordeaux, France, represented by Gevers France, France.
The Respondent is Liu Le, Le Liu of Changsha, Hunan, China.
The disputed domain names <cru-bourgeois.net>, <crubourgeois.net>, <cru-bourgeois.org>, <crubourgeois.org>, <crusbourgeois.com>, <crusbourgeois.net> and <crusbourgeois.org> are registered with Bizcn.com, Inc. (the “Registrar”).
The original Complaint in French was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details and confirming that the language of the Registration Agreement is Chinese.
On March 1, 2013, the Respondent sent an email to the Center and on the same day, the Center transmitted a notification of possible settlement to the parties. On March 4, 2013, the Complainant advised the Center of its intention to continue with the proceeding without requesting a suspension.
On March 5, 2013, the Center transmitted an email to the parties in both Chinese and French language regarding the language of the proceeding. On March 5, 2013, the Complainant requested that the language of the proceeding be English. On March 5, 2013, the Respondent requested that the language of the proceeding be Chinese. On March 6, 2013, the Center sent a further email to the parties regarding the language of the proceeding. On March 11, 2013 the Respondent confirmed its request that the language of the proceeding be Chinese. On March 12, 2013, the Complainant submitted a copy of the Complaint in English.
The Center verified that the original French Complaint together with the English copy of 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 the Respondent of the Complaint in both English and Chinese, and the proceeding commenced on March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Response in Chinese was filed with the Center on March 25, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 9, 2013. 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.
The Complainant is a professional union in the wine sector based in France and the owner of a European Community trade mark registration for the trade mark CRU BOURGEOIS (the “Trade Mark”) with a priority date of November 28, 2008.
The Respondent is an individual based in China.
The disputed domain name <cru-bourgeois.net> was registered on July 7, 2012.
The disputed domain name <crubourgeois.net> was registered on July 7, 2012.
The disputed domain name <cru-bourgeois.org> was registered on July 8, 2012.
The disputed domain name <crubourgeois.org> was registered on July 8, 2012.
The disputed domain name <crusbourgeois.com> was registered on July 7, 2012.
The disputed domain name <crusbourgeois.net> was registered on July 7, 2012.
The disputed domain name <crusbourgeois.org> was registered on July 8, 2012.
The Complainant made the following submissions in the Complaint.
The Trade Mark is registered and used as an indicator of trade origin for CRU BOURGEOIS wine produced by the Complainant’s member wine producers in the Medoc region of France.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. Individuals such as the Respondent have no rights to register domain names comprising the Trade Mark, which functions as an indicator of trade origin for wine produced in the Medoc region of France.
The Respondent has offered to sell the disputed domain names to the Complainant for valuable consideration exceeding the costs incurred by the Respondent in registering the disputed domain names.
The Respondent made the following submissions in the Response:
In registering the disputed domain names, the Respondent did not intend to infringe any third party intellectual property rights.
The Complainant has not obtained any trade mark rights in China by registration or by recognition of the Trade Mark as a well-known mark in China.
The Respondent registered the disputed domain names for personal use in good faith and has made no commercial use of the disputed domain names. The Respondent does not intend to sell the disputed domain names to others for commercial gain.
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding, as the parties have communicated in English.
The Respondent has requested that Chinese be the language of the proceeding as the Respondent’s French is not good.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. It will accept the filing of the Complaint in French and in English;
2. It will accept the filing of the Response in Chinese; and
3. The language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the dates of registration of the disputed domain names.
It is trite under UDRP jurisprudence that, in determining the question of identity or confusing similarity between trade marks and disputed domain names, punctuation marks such as hyphens are to be disregarded.
The first four of the disputed domain names contain the Trade Mark in its entirety. The remaining three disputed domain names contain the plural version of the Trade Mark, “crus bourgeois”.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain names.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
Circumstances indicating that the Respondent has registered or the Respondent has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the 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 Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
The Respondent responded to an email from the Complainant’s representatives requesting transfer of the disputed domain names to the Complainant as follows:
“I reserved these domain names for my personal interest and I don’t want to interrupt others, so if it’s not me there will be other guys who will reserve these domains too.
I didn’t use these domain names for commercial use yet, so your client could be relieved for that. This really is a shame that your client has reserved a good domain name, but forgot to reserve all other names.
I have reserved these domain names in respecting the law, so I have my right to defend my interests.
If your client insists, I can arrange for transfer of the domain names to your client which will not be free.”
In light of the above, the Panel has no hesitation in rejecting the submissions in the Response and concluding that the Respondent has clearly registered the disputed domain names with the intention of selling them for a price greater than the registration costs for the disputed domain names.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(i) of the Policy, and also under the Panel’s general discretion under paragraph 4(b) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <cru-bourgeois.net>, <crubourgeois.net>, <cru-bourgeois.org>, <crubourgeois.org>, <crusbourgeois.com>, <crusbourgeois.net>, and <crusbourgeois.org> be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: April 23, 2013