The Complainant is Les Grands Chais De France of Petersbach, France, represented by MEYER & Partenaires, France.
The Respondent is KMS Wine Invest OU of Tallinn, Estonia. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2011. On July 1, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On July 6, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on August 16, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a French wholesale wine and spirits merchant. The Complainant was founded in 1979, is present and active in the main French vineyards and has become a leading private winemaker in France. The Complainant employs more than 1,505 people in 23 companies. Its annual turnover in 2009 was EUR 731 million, 73% of which came from exports. The Complainant’s top product is J.P. CHENET, a wine brand launched in 1984, which is sold in 160 countries.
The Complainant owns numerous trademark registrations for J.P. CHENET, including International Registration no. 551533 “J.P. CHENET” filed on June 15, 2000 (hereinafter also referred to as the “J.P. CHENET Marks”). The Complainant provides information on its product J. P. CHENET on the Internet inter alia at , and .
The Respondent operates websites for online retail sale of wine and spirits to the general public. The disputed domain names have been registered on November 20, 2006 and were originally redirected to one of the Respondent’s websites. Once the Respondent was contacted by the Complainant regarding the amicable transfer of the disputed domain names, which the Respondent refused, the disputed domain names redirect to parking websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names are identical or confusingly similar to the Complainant’s J.P. CHENET Marks as they incorporate the mark J.P. CHENET exactly and in its entirety by merely omitting the full stops, which is irrelevant.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as it is not currently and has never been known under the name J.P. CHENET or a variation thereof, as the Respondent does not own trademark rights in J.P. CHENET, is not one of the Complainant’s authorized agents and does not carry out any activity for or has any business with the Complainant. The Complainant further argues that the Respondent, which is in fact a retailer of some of the Complainant’s J.P. CHENET products, even if not an authorized one, has no rights in the disputed domain names based on a bona fide offering of goods under the disputed domain names as the Respondent sells not only the Complainant’s goods but also goods of the Complainant’s competitors and as the Respondent’s website does not disclose its relationship to the Complainant. The Respondent finally submits that the actual use of the disputed domain names in connection with parking websites does not result in rights or legitimate interests either.
(3) The disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent’s bad faith registration of the disputed domain names is established by the facts that the Complainant’s trademarks are reputed and known throughout the world and that the Respondent is a retailer of the Complainant’s products. The Complainant further contends that the Respondent also uses the disputed domain names in bad faith as they currently redirect to parking websites. The Complainant states that the Respondent’s previous redirect of the disputed domain names to the Respondent’s website also constitutes bad faith under the Policy as the Respondent mainly offers competing products at its website. The Complainant finally argues that the Respondent disrupts the Complainant’s business, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark, and that the Respondent registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and engaged in a pattern of such conduct. 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 must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names fully incorporate the Complainant’s J.P. CHENET Marks in which the Complainant has exclusive rights and are identical to such marks.
Firstly, the fact that the disputed domain names do not include the full stops and spaces of the J.P. CHENET Marks does not hinder a finding of identity as punctuation marks cannot be included in domain names for technical reasons.
Secondly, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain names was not bona fide under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the fact that the respondent must use the site to sell only the trademarked goods, as otherwise he/she could be using the trademark to bait Internet users and then refer them to other goods (cf Oki Data Americas, Inc. v. ASD, Inc., WIPO Case D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). The Complainant provided evidence that the Respondent used the disputed domain names to market not only the Complainant’s products but also products of the Complainant’s competitors. Therefore, the Respondent’s use of the disputed domain names was not bona fide under the Policy. The redirection of the disputed domain names to parking websites after the Respondent was contacted by the Complainant, in the circumstances, is also not bona fide.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and its rights in the J.P. CHENET Marks as it is a retailer of the Complainant’s products. It is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant’s rights. The Panel is therefore satisfied that the Respondent registered the disputed domain names in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the J.P. CHENET Marks into the disputed domain names and by using such domain names in connection with a website offering the Complainant’s competitors’ products for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain names in bad faith. The redirection of the disputed domain names to parking websites does not change the Panel’s finding.
Consequently, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: August 30, 2011
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