The Complainant is Societe Civile du Vignoble de Chateau Latour of Pauillac, France, represented by Inlex IP Expertise, France.
The Respondent is Yangzhi of Shenshi, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2013. On June 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13 and 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 13, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 19, 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. 4. Factual Background
The Complainant, Societe Civile du Vignoble de Chateau Latour, is a French company existing since 1842.
Château Latour is a French wine estate, rated as First Growth under the 1855 Bordeaux Classification. This rating consolidated its reputation and ensured its high prices.
The Complainant is the owner of numerous trademark registrations for the CHATEAU LATOUR and LES FORTS DE LATOUR marks around the world. For example:
United Kingdom registration No. 953784 – LES FORTS DE LATOUR, the registration date of October 27, 1969; United States registration No. 933664 - LES FORTS DE LATOUR, with registration date of May 9, 1972; French registration No. 1292358 - CHATEAU LATOUR, with registration date of December 12, 1984; Hong Kong, China registration No. 1989B1656 - CHATEAU LATOUR, with registration date of October 30, 1986; International Registration No. 505418 - CHATEAU LATOUR, with registration date of August 4, 1986.
The Complainant has been the owner of the corporate name Societe Civile du Vignoble de Chateau Latour since 1842.
The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the names “Latour” and “Chateau Latour”: , , , and more.
The disputed domain name was registered on January 15, 2011.
The disputed domain name resolved to a website offering for sale wines using the Complainant’s trademarks and names of wine: CHATEAU LATOUR, The Grand Vin, LES FORTS DE LATOUR and the image of the Château Latour wine estate. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks CHATEAU LATOUR and LES FORTS DE LATOUR and to the Complainant's corporate name and domain names.
The Complainant further argues that the marks CHATEAU LATOUR, LATOUR and LES FORTS DE LATOUR are very famous and well known around the world with the Complainant.
The Complainant further contends that the additional term “family” does nothing to avoid a finding of confusing similarity.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its CHATEAU LATOUR and LES FORTS DE LATOUR trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official website of the Complainant.
The Complainant further argues that the disputed domain name resolves to a website purportedly offering wines of the Complainant. The Complainant contends that the Respondent used the website under the disputed domain name to confuse consumers to believe that it is the official website of the Complainant or that it is affiliated with the Complainant or that the Complainant authorized it to sell the Complainant’s products.
The Complainant further argues that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.
The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s well-known trademarks when registering the disputed domain name.
The Complainant further argues that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent had incorporated the Complainant’s trademarks in the website to which the disputed domain name resolved.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name is primarily in English with the term “family” in the English language.
b) The content of the website associated with the disputed domain name is entirely in English, which suggests that the Respondent commands the English language.
c) The Respondent did not object to the language of the proceeding being English.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the CHATEAU LATOUR and LES FORTS DE LATOUR marks around the world. For example: United Kingdom registration No. 953784 – LES FORTS DE LATOUR, with registration date of October 27,1969; United States registration No. 933664 - LES FORTS DE LATOUR, with registration date of May 9, 1972; French registration No. 1292358 - CHATEAU LATOUR, with registration date of December 12, 1984; Hong Kong, China registration No. 1989B1656 - CHATEAU LATOUR, with registration date of October 30, 1986; International Registration No. 505418 - CHATEAU LATOUR, with registration date of August 4, 1986.
The Complainant is also the owner of several domain names which contain the names “Latour” and “Chateau Latour:”: , , , and more.
The disputed domain name differs from the registered trademarks CHATEAU LATOUR and LES FORTS DE LATOUR by replacing the word “Chateau” in the CHATEAU LATOUR trademark and the words “Les Forts de” in the LES FORTS DE LATOUR trademark with the world "family" and the additional generic Top-Level Domain (“gTLD)”) “.com”.
The Panel finds that the dominant element in the Complainant’s trademark and in the disputed domain name is the word “Latour”. The Complainant is using this dominant element as its primary Internet presence trademark. The Complainant owns domain names containing only the mark LATOUR: , .
The difference between the disputed domain name and the Complainant's trademark dominant element is the additional descriptive term “family” which does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s mark LATOUR (See Hungry Machine, Inc. v. Zhao Fuzhi,WIPO Case No. D2011-120; and Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Kwang W. Choi,WIPO Case No. D2010-0854).
The Panel also considers that the simple appearance of similarity between the “chateaulatour” and “latourfamily” to an Internet user makes the disputed domain name confusingly similar to the Complainant’s trademarks (See Just Car Insurance Agency Pty Ltd. v. Throne Ventures Pty Limited,WIPO Case No. DAU2008-0015).
Therefore, under the circumstances of this case, the Panel finds that the Complainant has met its burden of establishing that the Respondent’s disputed domain name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests of respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant established such a prima facie case case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its CHATEAU LATOUR and LES FORTS DE LATOUR trademarks or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the CHATEAU LATOUR trademark since the year 1970 and owns the corporate name Societe Civile du Vignoble de Chateau Latour since 1842.
The Respondent’s bad faith is suggestive, in these particular circumstances, in which the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
As determined earlier, the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s use of highly distinctive trademarks of the Complainant and the logo of the Complainant’s estate on the website under the disputed domain name is suggestive of the Respondent’s bad faith. Such use establishes the fact that the Respondent was and is aware of the Complainant, its trademarks and logos. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:
“By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent” (See Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. The failure to respond in this case, leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’“ (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The Complainant submitted evidence proving that the Respondent was and still is using the disputed domain name to promote goods that are on their face identical to the goods being offered by the Complainant.
In the Panel’s view, using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant, without the approval or authority of the Complainant and without any disclosure as to the relationship (or lack thereof) between the Complainant and the Respondent, is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name and the Complainant’s trademarks and logo, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 2, 2013
Full & Egal Universal Law Academy