The Complainant is Champagne Louis Roederer (CLR), Reims, France, represented by Ernest Gutmann-Yves Plasseraud S.A.S, Paris, France.
The Respondent is OO Louis Roederer, St. Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with DomReg Ltd. d/b/a LIBRIS.com (“Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2010. On December 17, 2010, the Center transmitted by email to DomReg Ltd. doing business as (“DomReg Ltd.”) a request for registrar verification in connection with the Domain name. On December 17, 2010, DomReg Ltd. transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Registrar also indicated that the language of the registration agreement for the Domain Name was Russian. The Center sent two email communications to the Complainant on December 29, 2010 providing the registrant and contact information disclosed by the Registrar and a language of the proceeding document stating that the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceeding, and inviting the Complainant to submit the amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2011 adding the disclosed registrant as the Respondent and requested that the language of the proceedings be English. The Center verified that the Complaint together with the amendment to the Complaint and language submission 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”).
The Center verified that the amended 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 January 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 14, 2011. 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. 4. Factual Background
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is a well-known French Champagne House. It produces LOUISE ROEDERER champagne in a variety of styles and sells them in many countries. The Complainant is the owner of numerous LOUISE ROEDERER trademark registrations in Russia, Europe, and Asia (among 55+ trademark registrations are international registration No. 628021, dated December 20, 1991 designating Germany, Austria, Benelux, People’s Republic of China, Spain, Italy, Portugal, Switzerland, Czech Republic, Slovakia, Latvia, Algeria, Armenia, Azerbaijan, Belarus, Bulgaria, North Korea, Cuba, Kazakhstan, Kyrgyzstan, Liberia, Moldavia, Mongolia, Uzbekistan, Sierra Leone, Sudan, Tajikistan; United States trademark registration No. 96996 dated May 12, 1954; and registration No. 11270 with the priority date of July 10, 1951 in the territory of the Union of the Soviet Socialist Republics (“the USSR”), the validity of which is currently extended in the territory of the Russian Federation. The trademarks are registered for use in association with champagne wines in international class 33.
The Complainant is also the registered owner of two domain names that incorporate its LOUISE ROEDERER mark: and . The domain names direct to official websites of the Complainant.
The Domain Name was registered on September 27, 2002. At the time the Complaint was filed, the publicly available WhoIs information listed WhoIs Privacy Services, Provided by DomainProtect as the Registrant of the Domain Name. WhoIs Privacy Services, Provided by Domainprotect was the initial respondent in this case. Following the Registrar’s disclosure of the underlying Registrant, the Complaint was amended to reflect the OO Louise Roederer, located in St. Petersburg, Russia, as the Respondent in this case.
As of May of 2010, the Domain Name directed to a page offering the Domain Name for sale at US D 7,580.00. The offer was written in English. On May 20, 2010 the Complainant sent an email in English to the then registered owner of the Domain Name, demanding that it take steps necessary to transfer the Domain Name to the Complainant at a nominal cost. The Respondent did not reply to the email, but removed its sale offer from the website. The Domain Name has been inactive since that time. 5. Parties’ Contentions A. Complainant
1. The Complainant alleges that the Domain Name is confusingly similar to its trademark. In support of its claim, the Complainant submits that it is the owner of numerous LOUISE ROEDERER trademark registrations, and cites to over fifty five trademark registrations, including the International registrations No. 628021, with a priority date of December 20, 1991 and the USSR registration No. 11270 with the priority date of July 10, 1951. The name LOUISE ROEDERER has been used as a trademark throughout the world since 1833. The Complainant is also the registered owner of two domain names incorporating its LOUISE ROEDERER mark: and . The Domain Name is alleged to direct to the Complainant’s official websites.
2. The Complainant submits that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant argues that the Respondent did not register the mark LOUISE ROEDERER anywhere in the world. The Complainant contends that LOUISE ROEDERER is not the name of the Respondent and that the Respondent is not a licensee of the Complainant or a person authorized to use the Complainant’s trademark LOUISE ROEDERER. The Complainant further contends that the Domain Name is currently inactive and, therefore, it would not be possible for the Respondent to provide any evidence of a bona fide offering of goods or services showing a legitimate interest in the Domain Name.
3. The Complainant argues that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s knowledge about existence of the LOUISE ROEDERER trademark and its goods is undisputable for the following reasons: i) the trademark LOUISE ROEDERER is widely known worldwide and in Russia, because the trademarks were registered and because its goods were sold in Russia well before registration of the Domain Name in 2002; ii) there is a special connection between the Complainant and Russia due to the development of the Complainant’s flagship champagne “Cristal” at the request of Russian Czar Alexander II, which the Complainant has publicized in Russia; and iii) neither the first name Louise nor the name Louise Roederer are common or used in Russia at all. The Complainant further argues that the Respondent’s bad faith is evidenced by its registration of the Domain Name for the purpose of subsequent sale. In support of its position, the Complainant submits that the Domain Name has never been used by the Respondent and eight years after its registration, it was offered for sale for US $7,580.00. In Complainant’s view, the Domain Name sale price significantly exceeding out-pocket registration costs indicates the Respondent’s knowledge of the real value of the Doman Name and, as a result, indicates the Respondent’s bad faith. The Complainant further argues that the Respondent’s bad faith may be inferred from the concealment of the Domain Name owner’s true identity via use of the privacy services, and from the fact that the Respondent made the website inactive upon receipt of the Complainant’s demand in May of 2010. As a further evidence of bad faith, the Complainant states that the identity of the Domain Name owner, previously hidden behind a privacy shield, was changed to a new one, identical to the Complainant’s mark, upon receipt of the Complaint in December of 2010. The Complainant asserts that there is no company named OO Louise Roederer in Russia.
Finally, the Complainant submits that in its view, the real owner of the Domain Name is Eurobox, Ltd, because: 1) it used to be listed as the owner of the Domain Name in the past; 2) it is located in St. Petersburg, like the Respondent; and 3) it is a notorious cybersquatter. In Complainant’s view, if Eurobox, Ltd. is the real owner, then there is no doubt of the Respondent’s bad faith. Finally, the Complainant alleges that current passive holding of the Domain Name amounts to the Respondent’s acting in bad faith.
The Complainant requests the Domain Name to be transferred to the Complainant.
In support of its factual presentation, the Complainant submitted documentary evidence in the form of printouts from: 1) the WhoIs database: one dated January 7, 2011 listing the Respondent as the registrant of the Domain name, and another undated showing that Eurobox, Ltd. was the registrant of the Domain name some time between 2002 and 2008; 2) the website of the Registrar “www.” dated December 16, 2010 showing WhoIs Privacy Services, Provided by DomainProtect as the Registrant of the Domain name; 3) the website of the Respondent “www.” dated May of 2010 and December, 2010; and 4) the Domainpropect’s website showing that was offered for sale. In addition, the Complainant presented copies of the LOUISE ROEDERER trademark registration certificates from more than thirty countries around the world, including copies of the trademark registration in the Soviet Union and its extension in the territory of the Russian Federation. Further, the Complainant submitted copies of the domain name resolution policy applicable to the disputes at hand; a copy of an email from the Complainant to the Respondent dated May 20, 2010; evidence of domain name registrations owned by the Complainant; printouts from the Complainant’s websites “www.” and “www.louis.-”; extensive documents concerning the history, activity, products and reputation of the Complainant worldwide and in Russia; and copies of invoices evidencing shipments of Louise Roederer champagnes to various Russian companies during 1993-2000. Finally, the Complainant presented references to various WIPO domain name panel decisions concerning Eurobox, Ltd. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting language other than that of the registration agreement, the Panel must exercise discretion 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. See paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.1
The language of the registration agreement is Russian, as ascertained by the Center during its verifications prior to the notification of the Complaint.. The Complainant originally filed the Complaint in English and, requested that the language of the proceedings be English. The Complainant argues that there is evidence showing that the Respondent has sufficient proficiency in the English language. First, the website hosted under the Domain Name was displayed in English, and the offer for sale of the Domain Name placed on the webpage was also in English. In addition, immediately after receipt of the Complainant’s demand to transfer the Domain Name at a nominal cost, the Respondent made its website inactive. Further, the website of the Registrar is in part in English. In particular, its “Manage your domain name” page is written in English. The website of the DomainProtect, the privacy services company used by the Registrant to conceal its identity, also exists in English. Moreover, immediately following notification of the Complaint written in English language, the Respondent changed its identity in the WhoIs database. Finally, the Complainant argues that, in its belief, the true owner of the Domain Name is Eurobox Ltd., because it used to be listed as the owner of the Domain Name several years ago, and because this company is located in St. Petersburg, Russia, the same place where the subsequent Domain name owners are located. The Complainant alleges that Eurobox Ltd. is a notorious cybersquatter, and all of the WIPO UDRP proceedings against it were rendered in English.
It is a consensus view of the WIPO panelists that “where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of the proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.” Paragraph 4.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview of WIPO Panel Views”).2
Here, the Panel finds that the Respondent can clearly understand English, the language of the Complaint, for the following reasons. First, the printout from “www.”, the Respondent’s website contains information solely in English. Second, the printouts from the WhoIs database confirm that the next day following notification of the English-language Complaint to the Respondent, it changed its identity in the WhoIs database. Thus, it can likely understand English. Third, the websites of the Registrar and the DomainProtect used by the Respondent exist in English. Hence, to use both websites the Respondent should understand English. Finally, the Center sent the notification of the Complaint documents as well as all case related communications to the Respondent in both languages, and appointed the Panel proficient in both Russian and English. Thus, the Respondent had a fair chance to learn about his right to object to the language of the proceeding. The Respondent failed to do so. Based of the foregoing, the Panel concludes that the Respondent clearly understands the English language.
The Panel gives no weight to the Complainant’s argument relating to Eurobox, Ltd, because it is not a party to this proceeding. Therefore, it is irrelevant whether Eurobox, Ltd is able to understand the English language or not.
Based on the foregoing, the Panel determines that the language of the proceeding be English. 6.2. Preliminary Considerations
The Panel will decide the Complaint on the basis of the statements and documents submitted by the Complainant, the inferences the Panel will draw from the Respondent’s default and in accordance with the UDRP, the Rules and the WIPO Overview of WIPO Panel Views for the following reasons.
First, Paragraph 15(a) of the Rules provides that the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules, and any rules and principles of law that it deems applicable. To ensure fair, effective and predictable operation of the UDRP system, where appropriate, the Panel will make decisions consistent with the WIPO Overview of WIPO Panel Views. See Paragraph 4.1.of the WIPO Overview of WIPO Panel Views.
Second, Paragraph 10(b) of the Rules requires that the Panel ensure that “each Party is given a fair opportunity to present its case.” In this case, the Center discharged its responsibility “to employ reasonably available means calculated to achieve actual notice to the Respondent” of the Complaint. Paragraph 2(a) of the Rules. Therefore, the Panel finds that the Respondent was given a fair opportunity to answer the Complaint.
Third, in this case, despite the fair opportunity to do so, the Respondent chose not to respond to the Complaint. Therefore, the Panel “shall draw such inferences therefrom as it considers appropriate.” Paragraph 14(b) of the Rules.
Consequently, pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the basis of the statements and documents submitted by the Complainant, the inferences the Panel considers appropriate and in accordance with the UDRP, the Rules, the WIPO Overview of WIPO Panel Views.
Paragraph 4.6. of the WIPO Overview of WIPO Panel Views states that “the respondent’s default does not automatically result in a decision in favor of the complainant.” The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP” which require the complainant to support its assertions with actual evidence in order to succeed in a proceeding.
Therefore, to succeed on its claim, the Complainant must prove each of the following three elements: 1)The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Тhe Respondent has no "rights or legitimate interests in respect of the Domain Name"; and 3) The Domain Name "has been registered and is being used in bad faith."
The next step, therefore, is to determine whether the Complainant satisfied its burden of proof. 6.3. Analysis of the Complaint A. Identical or Confusingly Similar
Paragraph 1.1. of WIPO Overview of WIPO Panel Views provides that if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights irrespective of the location of the registered mark. In this case, in support of its claim of ownership in the mark LOUISE ROEDERER, the Complainant submitted copies of numerous trademark registration certificates which leave no doubt in its rights in the mark LOUISE ROEDERER.
The Policy requires that the Domain Name be “identical or confusingly similar” to the Complainant’s trademarks. Pursuant to paragraph 1.1. of the WIPO Overview of WIPO Panel Views, “the test for confusing similarity should be a comparison between the mark and the domain name.”
Based on the comparison of the trademark LOUISE ROEDERER and the Domain Name, the Panel finds that they are confusingly similar. First, the Domain Name incorporates the LOUISE ROEDERER trademark in its entirety, which is sufficient to establish that the domain name is identical or confusingly similar for purposes of the UDRP. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. Second, the gTLD suffix “.com” or equivalent, being an inevitable part of the domain name, has no bearing on the question of confusing similarity. See Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-03743. Therefore, the Domain Name is confusingly similar to the Complainant’s trademark.
The Panel, therefore, holds that the first element of paragraph 4(a) of the UDRP has been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the UDRP, a complainant must prove that respondent has no rights or legitimate interest in the domain name. Тo satisfy the requirements of paragraph 4(a)(ii) of the UDRP, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interest in the domain name. See paragraph 2.1. of the WIPO Overview of WIPO Panel Views. If the prima facie case has been made and the Respondent “fails to show one of the circumstances under paragraph 4(c) of the UDRP, “then the Respondent may lack a legitimate interest in the domain name” and a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. Paragraph 2.2. of the WIPO Overview of WIPO Panel Views.
The Panel finds that the Complainant satisfied its obligation to make a prima facie case.
First, It has been established that the Complainant has exclusive rights in the LOUISE ROEDERER mark.
Second, the Complainant never gave the Respondent a license, permission or consent to use LOUISE ROEDERER in the Domain Name.
Third, the Complainant provided evidence making implausible any claim that the Respondent used the Domain Name in connection with a bona fide offering of goods or services. The Respondent registered a Domain Name identical to the LOUISE ROEDERER mark, nine years after the Complainant started a massive marketing campaign in Russia. The Panel finds that the Respondent’s choice of the privacy services shield to hide its identity makes it improbable that the Respondent is commonly known by the Domain Name. There is no other plausible explanation for the Respondent’s choice of a French name, which is a widely known brand in Russia, except for an attempt to create an impression of association with the Complainant. As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” See e.g., Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Fourth, the Respondent offered the Domain Name for sale for US D 7,580.00, which shows intent to receive a commercial gain from the use of the Domain Name.
Finally, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name. See, e.g. Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Consequently, the Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Name, and the there is no evidence or facts which may plausibly suggest that the Respondent has rights or legitimate interest in the Domain Name.
Therefore, the second element of paragraph 4(a) has been satisfied. C. Registered and Used in Bad Faith
The third element of the paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.” Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.4
Paragraph 4(b)(iv) of the UDRP provides an open list of circumstances that, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among the circumstances listed in 4(b)(iv) of the UDRP, are “circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.” i). Registration in bad faith
The Panel gives no weight to the Complainant’s arguments relating to Eurobox, Ltd., as they are unsupported by any evidence linking Eurobox, Ltd. to the Respondent. The fact that Eurobox, Ltd. was the owner of the Domain Name at some point in time does not necessarily mean that it continues to own the Domain Name using a privacy service. Further, the fact that a cybersquatter is located in the same city as all of the subsequent registrants of the Domain Name does not mean that it remains the registrant of the Domain Name under a different identity.
The Panel, however, does find sufficient evidence to conclude that the Domain Name was registered in bad faith:
1) The Domain Name was registered fifty one years after the Complainant registered its trademark LOUISE ROEDERER in the territory of the Soviet Union that included territory of the Russian Federation, and nine years after the Complainant began a massive marketing campaign in Russia. The trademark has been used and advertised worldwide for over one hundred years to identify the Complainant’s champagne wines. Thus, the Respondent knew or should have known about the existence of the Complainant’s mark and registered the Domain Name with the knowledge about the Complainant’s rights.
2) Incorporation of such a well-known brand as LOUISE ROEDERER into the Domain Name “by someone with no connection with the product suggests opportunistic bad faith.” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-01635.
3) The Respondent’s choice of a domain name that incorporated the Complainant’s mark in its entirety, is indicative of the Respondent’s knowledge of, and desire to, capitalize on the goodwill and reputation of the LOUISE ROEDERER champagnes. This is, in turn, evidence of bad faith. ii). Use in Bad Faith
The Panel finds that the Respondent’s actions show use of the Domain Name in Bad Faith. First, there is no apparent connection between the Respondent’s business and the Domain Name. Second, there is no evidence of legitimate use of the Domain Name by the Respondent. Third, use of privacy services to conceal a respondent’s true identity has been found to be indicative of bad faith use by numerous panels. See, e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1312. Fourth, the Panel finds that paragraph 4(b)(iv) of the UDRP is applicable to the case at hand. The Respondent’s offer to sell the Domain Name for US D 7,580.00, a sum well in excess of the Respondent’s out-of-pocket costs, is an example of its intent to receive commercial gain from the use of the Domain name. That this usage was the Respondent’s "primary" purpose follows from the fact that it does not appear to have had any other purpose for use of the Domain Name. The Complainant did not allege that the Domain Name was used in 2002-2010 for any legitimate purpose, and disputes there was any legitimate use of the Domain Name. And those claims remain uncontroverted due to the Respondent’s failure to make an appearance and offer any contrary evidence.
Paragraph 4(a)(iii) of the UDRP requires that the domain name was “being used” in bad faith. This language indicates that the bad faith use of the domain name must occur at some time consequent to its creation. A printout from the Respondent’s website from May of 2010, shows that the Respondent was not using the Domain Name for any business at least since that time. Since December of 2011, the website “www. directs to a blank page.
Nevertheless, paragraph 3.2. of the WIPO Overview of WIPO Panel Views states that “the lack of active use of the domain name does not as such prevent a finding of bad faith.” Current bad faith may be inferred from passive holding of a domain name in certain circumstances. Examples of such circumstances include “complainant having a well-known mark, no response to the complaint, concealment of identity and impossibility of conceiving good faith use of the domain name.” WIPO Overview of WIPO Panel Views, paragraph 3.2. The Panel finds all of these circumstances to be present in this case: (i) The Complainant’s trademark is a widely known mark, as evidenced by its fame and use in many countries, (ii) the Respondent failed to respond to the Complaint; and iii) on the date the Complaint was filed, the Respondent’s identity was concealed by use of a privacy service company.
For all the foregoing reasons, the Panel concludes that the Domain Name was registered and is being used in bad faith. Accordingly, the third element of paragraph 4(a) of the UDRP has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: February 21, 2011
1 See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak,WIPO Case No. D2009-1583.
2
3 See also, RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
4 See also, Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
5 General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568.
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