WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wine & Spirit Education Trust (WSET) v. Domains by Proxy, Inc/ Larry Johnson Case No. D2010-0547 1. The Parties
The Complainant is Wine & Spirit Education Trust (WSET) of London, United Kingdom of Great Britain and Northern Ireland, represented by Lee Bolton Monier-Williams, United Kingdom.
The Respondent is Domains by Proxy, Inc/ Larry Johnson of Jonesboro, Arkansas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2010. On April 12, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Name. On April 13, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 22, 2010. The Center verified that the Complaint (together with the amendment to 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, and the proceedings commenced on April 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2010.
The Center appointed Derek M. Minus as the sole panelist in this matter on May 31, 2010. 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.
Due to exceptional circumstances, it was necessary for the Panel to extend the due date of decision to July 30, 2010, Rules, paragraph 15. 4. Factual Background
The Complainant is the Wine & Spirit Education Trust and is known by its acronym “WSET”. The Wine & Spirit Education Trust is a wine school that organises wine education courses, spirits courses and wine tastings for professionals and enthusiasts in 50 countries worldwide. Founded in 1969 to provide high quality education and training in wines and spirits, according to its website, the WSET has grown to become the foremost international body in the field of wines and spirits education.
In the United Kingdom, the Complainant is the only wine and spirit education body approved by the Qualifications & Curriculum Authority (QCA), the government regulatory authority for education. In other countries, the Complainant works through a network of over 400 approved programme providers, to deliver the high standard of teaching required to enable students to obtain qualifications, principally the WSET Diploma.
According to its website, WSET monitors the performance of all programme providers and has a formal review, reapproval and disciplinary framework to ensure that every provider adheres to its regulations and performs in accordance with its expectations.
The Complainant provided evidence of its registration of its mark, WSET in both the United Kingdom and the United States of America (“United States”). In the United Kingdom, the Complainant registered trademark number 2336342 for WSET in classes 09, 16 and 41 on 39 June 2003. The trade mark is registered and used in relation to electronic publications, magazines and newspapers in relation to alcoholic beverages; printed matter and publications; provision of teaching and instructional services relating to wine and spirit trade both direct and through interactive electronic media. The Complainant is also the proprietor of trademark number 2336344 for exactly the same classes, for the full text of its name, WINE & SPIRIT EDUCATION TRUST, also registered on June 30, 2003. Copies of the certificates detailing the registration was provided from the Intellectual Property Office was provided. In the United States, the Complainant is the registered owner of two trademarks in the mark WSET numbers 2836469 and 2871449 and the marks are registered and used on similar goods and services as the registered marks are in the United Kingdom. Copies of the United States Patent and Trademark Office registrations, filed December 11, 2002 were provided.
Additionally the Complainant is the owner of the domain name . A copy of a WhoIs search show that the Complainant registered that domain name for its own use at a date “before August 1996”. 5. Parties' Contentions A. Complainant
The Complainant asserts that:
(a) The Domain Name which was registered by the Respondent is confusingly similar to the names and trade marks in which the Complainant has rights. The Domain Name consists of the Complainant's mark WSET together with the words “no-wine-course”.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.
(c) The Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant's contentions, the Panel shall decide the Complaint on the basis of the Complainant's submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
The Complaint submits that the disputed Domain Name is confusingly similar to the names and trademarks in which the Complainant has extensive rights. Here the disputed Domain Name incorporates the Complainant's WSET trademark but adds the generic words “no” and “wine” and “course” to the top level “.com” identifier.
According to the Complainant the domain name in its entirety is confusingly similar to the trademarks owned by the Complainant. The principal element of the domain name is “WSET” which is an acronym of the Complainant's full name and is identical to the trademarks it has registered in the United States.
The fact that the trademark is not an actual word makes it distinctive and unique, unlike the other words, “no”, “wine” and “course”, with which it is linked in the Domain Name. The WSET trademark is therefore the dominant and most significant part, and as used in the Domain Name could confuse consumers into thinking there was an affiliation or association with the Domain Name and the genuine WSET organization.
The words “wine” and “course” in the Domain Name, although only descriptive, are indicative of the Complainant's business. They are words with which consumers and others familiar with the business and operations of the Complainant would expect the WSET trademark to be associated. The use of the words “wine” and “course” in the Domain Name, increase the suggestion of a connection or affiliation between the Complainant and the Domain Name.
Similarly, the final word used in the Domain Name, “no” is a common word that must be seen as secondary or subsidiary to the use of the trademark WSET. By itself, the word “no” is not sufficient to indicate to a consumer that the domain name is a site for criticism or protest of WSET and not a site associated or affiliated with WSET.
Whether a domain name which incorporates a complainant's trademark together with a prefix or suffix is confusingly similar to the trade mark has been considered in a great number of UDRP decisions. It has been held that a domain name consisting of the complainant's trademark and ending with the “.com” gTLD is confusingly similar to the complainant's trademark (see Sanofi-Aventis v. The Counsel Group, LLC,WIPO Case No. D2005-0650). Earlier panel decisions have found that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered trademark (see Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant's registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The incorporation of a trade mark in its entirety, followed by a common term can also be sufficient to establish that a domain name is identical or confusingly similar to a trademark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,' which is a distinctive mark. The mere addition of common terms such as “sports”, “basketball”, “soccer”, “volleyball”, “rugby” and the like to the ‘PEPSI' mark, does not change the overall impression of the designations as being domain names connected to the Complainant.”
The Panel finds that the Domain Name is confusingly similar to the Complainant's registered trademark in which the Complainant has rights, as neither the addition of the contextually generic words “no”, “wine” and “course” nor the gTLD “.com”, is sufficient to prevent confusion with the Complainant's unique registered trademark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name as the Respondent is not now and has never been commonly known by the Domain Name. The Respondent is not a trustee of the Complainant charity nor a member of the Complainant company, neither has the Respondent been authorised or licensed to use the mark, WSET. Nor is there any relationship between the Complainant and the Respondent that would give rise to any license, permission, or implied authorization by which Respondent could own or use the Domain Name. The Complainant's domain name and trademarks were registered at least five years before the Respondent registered the Domain Name.
There is no evidence that the Respondent's use of the Domain Name was in connection with a bona fide offering of goods or services either before or after notice was given to the Respondent of the Complainant's concerns about the website and the Respondent has not been commonly known by the Domain Name.
What the Respondent has done in this case is to deliberately adopt the mantle of the Complainant including the use of its trademarks for the purpose of making a commentary on the nature of the courses conducted by the Complainant in the United States of America. Whilst the Respondent has the right to free speech to express his views regarding the quality and legality of the training courses conducted by the Complainant, as was said by the panel in The Royal Bank of Scotland Group plc, National Westminster Bank plc a/k/a NatWest Bank v. Personal and Pedro Lopez ,WIPO Case No. D2003-0166, “in order to fully exercise free speech rights, is (sic) not indispensible to use someone else's identical or confusingly similar trademark”. Similarly, it was stated by the panel in Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc.,WIPO Case No. D2004-0136, “the right to express one's views is not the same as the right to identify itself by another's name when expressing those views.”
The critical issue for consideration is therefore whether the Respondent had under the Policy, the right to register and use a domain name identical or similar to a sign identifying the trademark owner. In Asset Loan Co Pty Ltd v. Gregory Rogers,WIPO Case No. D2006-0300, it was said by the panel: “ … it does not matter in these proceedings whether a Complainant owns a domain name or not. The question is whether it has rights in a trademark which the Respondent has transgressed by registering and using its own domain name.”
There is clear evidence that the Respondent is not making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain. Rather it is misleading customers interested in the Complainant's services and diverting them to a site which has as its primary function, the denigration of the Complainant's business and the tarnishing of the Complainant's trademark which has commercial implications. As was said by the learned panelist in Monty & Pat Roberts Inc. v. J. Bartell, WIPO Case D2000-0300, “…the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views”.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden is on the Respondent to establish its right or legitimate interest in the disputed Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. 2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.
The Panel therefore finds that the Complainant has made out a prima facie case of the Respondent's lack of rights to, or legitimate interests in, the disputed Domain Name. The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant contends that the Respondent's conduct in registering and use of the Domain Name was for a bad faith purpose.
The domain resolves to a professionally produced website, the description of each page of which, uses both forms of the Complainant's trademarks, “Wine & Spirit Education Trust | The Unprofessional WSET Diploma”. On each page of the website is featured a graphic of a bunch of grapes over which it is labeled “Wine & Spirit Education Course” and subtitled “Fraudulent Professional Certification Since 1994”.
The website specifically identifies the Complainant and makes direct attacks upon it, saying:
“The Wine & Spirit Education Trust (WSET) is based on one idea: they offer professional certification for the wine industry. They sell a two-year diploma program that costs thousands of dollars to complete. They claim that their classes are for the ‘wine trade and sommeliers, for accreditation by London's WSET'. Those claims are false. Their programs are not accredited or recognized in the United States.
And:
“Currently, none of the WSET programs or its affiliated schools across the country have been properly licensed to offer professional training or certification. Even a wine school cannot run a professional training program without a state-issued license.”
And:
“In many states, if you are using your WSET certificate or diploma to gain employment, you may open yourself up to criminal charges and civil penalties. This can happen because the WSET is not an accredited or approved school by any state in the US.”
According to the Complainant, the Respondent's actions in registering and his use since registration of the Domain Name cannot be described as fair or for honest purposes. The Respondent has acted in a way to mask his identity from the Complainant. There is no information provided on the website to indicate the owner's name or contact details or the source of the website content. The registered proprietor has not registered the domain name in his own name instead he has used a registration agent, Domain Names by Proxy, Inc. and as a result the Complainant, prior to the lodging of the application for adjudication, had been unable to ascertain the Respondent's real identity.
Even so, the Complainant attempted to confirm the identity of the Domain Name owner by writing to the Respondent's registrar, Domain Names by Proxy, Inc., and by posting a message on the message board which is linked to the Domain Name, but without success. The Complainant submits that if the Respondent was genuine and was not acting in bad faith he would not have hid behind a proxy registrar, refused to put his name on the website itself, or ignored requests by the Complainant to make contact and discuss the nature of his allegations against the Complainant.
By providing information on the website, which the Complainant contends is false and misleading, and advising consumers to join a class action lawsuit and seek refunds for WSET courses they have paid for, the Respondent is acting to disrupt the Complainant's business in the United States. These are, the Complainant contends, the actions of a competitor. The beneficial owner of the domain name may be a competitor of the Complainant and has registered and is using the domain name in bad faith to disrupt the Complainant's business and tarnish its reputation.
The activities of the Respondent in adopting the identity of the Complainant clearly conflicts with Complainant's trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's products and services (see Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl, WIPO Case No. D2004-0791 where use of a domain name confusingly similar to a widely-known registered trademark held to be not for a bona fide business or commercial purpose).
In the case of Asset Loan Co (see above) a domain name incorporating the complainant's trademark was employed by the respondent. The respondent in that case, argued that he used the domain name to attract internet traffic to his website to ‘alert the public to the criminal and unlawful corporate conduct' of the complainant and that ‘…(w)arning the public about dishonest businesses and people is a legitimate use of a domain name.' In that case the panel (of three members) noted the then continuing debate on the legitimacy of a domain name with incorporated the trademark of a complainant but which when used in a bona fide non-commercial criticism site was fair use of the domain name for the purposes of the Policy. See Bonneterie Cevenole S.A.R.L v. Sanyouhuagong,WIPO Case No. D2001-1309. The panel in the Asset Loan Co case concluded that:
“to constitute a website as a criticism or protest site for present purposes, the domain name itself must normally indicate that the site to which it leads is not an official site of the trademark owner, but a separate site that is given over to criticism of the company, person or organization concerned. In other words, Internet users must normally be warned in advance that if they follow the domain name it will lead to such a site. If that is not done, some Internet users will believe that the contentious domain name is in fact an official domain name of the company or person embodied in the domain name. In other words to be a true criticism or protest site, the domain name and the web address must normally say what it is and not masquerade as an official domain name and site”.
Visitors who follow the Domain Name who are looking for genuine information on WSET, can expect the Domain Name to resolve to a site that would provide information about the Complainant's business. It is too late by the time they reach and read the site to understand what the purpose and source of the website is. On entering the website the words in large type “Wine & Spirit Education Trust” would indicate to a consumer that they have reached a genuine website associated with WSET and not one set up to criticise it. The Respondent has no disclaimer on the website to indicate that the site is not connected with the Complainant.
The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, is expressly non-exclusive. The Panel finds that the Respondent has clearly sought to disrupt the business of the Complainant by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its own website. The Respondent has sought to cloak itself with the identity of the Complainant to attract Internet users to its website and commercially damage the business of the Complainant. This is clear evidence of its use of the Domain Name in bad faith. 7. Decision
It is therefore established that the Complainant has made out each of the three elements that it is required to prove. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: July 30, 2010
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