The Complainant is Centre Vinicole Champagne Nicolas Feuillatte, Union de Cooperatives Agricoles of Chouilly, France, represented by AB INITIO, France.
The Respondent is Collector Consulting FZ of Dubai, United Arab Emirates, represented by LegalForce Raj Abhyanker P.C. Worldwide, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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.
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 July 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2013. The Response was filed with the Center on August 15, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 26, 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 proceedings are conducted in English as this is the language of the disputed domain name’s registration agreement. 4. Factual Background
The Complainant is a French union of champagne producers founded in 1972 by Mr. Nicolas Feuillatte. Its membership comprises 82 winemaking cooperatives representing 5,000 vineyards extending across 2,250 hectares.
The Complainant markets champagne under the NICOLAS FEUILLATTE brand in 76 countries, including the United Arab Emirates, the Respondent’s country of record.
The Complainant holds trademark registrations for NICOLAS FEUILLATTE in France, the earliest of which dates back to January 28, 1976. The Complainant also owns NICOLAS FEUILLATTE’s International and Community trademark registrations since 1986 and 2000, respectively.
The Respondent registered the disputed domain name on August 5, 2011. The disputed domain name is currently inactive but once resolved to a purportedly un-official blog of NICOLAS FEUILLATTE-branded champagne featuring images of the Complainant’s products, together with short descriptions thereon, and a disclaimer.
The Complainant served two cease and desist letters on the Respondent, plus an offer to set up a fan site in a domain name which does not reproduce the mark NICOLAS FEUILLATTE. Considering it unlikely that the Respondent would voluntarily surrender the disputed domain name, the Complainant brought the instant administrative proceedings. 5. Parties’ Contentions A. Complainant
The Complainant’s factual and legal contentions can be summarized as follows:
i. The Complainant’s brand and products are well reputed all over the world, including in the United Arab Emirates where the Respondent is established;
ii. The disputed domain name is confusingly similar to the NICOLAS FEUILLATTE trademark as it incorporates the Complainant’s mark in its entirety with the only addition of the term “champagne”, which is descriptive of the goods produced and sold by the Complainant;
iii. The Respondent is neither affiliated with, nor has it been authorized by the Complainant, to register a domain name incorporating the NICOLAS FEUILLATTE mark;
iv. The Respondent is not commonly known by the disputed domain name as an individual, business, or otherwise;
v. The Respondent has no trademark rights in NICOLAS FEUILLATTE, as shown in the online trademark search reports from the French Trademark Office, the Office for Harmonization in the Internal Market, and the International Trademark Register administered by WIPO;
vi. The Respondent is not offering bona fide goods or services through the disputed domain name. To the contrary, the Respondent is using the disputed domain name to redirect Internet users seeking the Complainant’s products, to its own website;
vii. Most UDRP panels have negated legitimate interests in a disputed domain name corresponding to a celebrity’s name or a well-known mark that is being used in a fan site;
viii. The lack of personal contribution from the Respondent in its website, coupled with such website’s inactivity since February 20, 2012, and the Respondent’s refusal to operate a fan site in a domain name which does not include the NICOLAS FEUILLATTE mark demonstrate that the Respondent registered the disputed domain name for purposes other than to create a fan website;
ix. The Respondent’s use of the NICOLAS FEUILLATTE mark to promote goods sold by the Complainant obviously indicates that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights and products, which is tantamount to bad faith registration under the Policy;
x. The Respondent’s use of a privacy service to shield its identity supports a finding of bad faith registration of the disputed domain name;
xi. The design of the Respondent’s blog is inspired by the Complainant’s official website as the Respondent uses the same association of colors black and gold as well as the same typeface;
xii. The disputed domain name has been used in bad faith as it diverts Internet traffic intended for the Complainant, to the Respondent’s website. B. Respondent
The Respondent’s pleas and defenses can be summarized as follows:
i. The Respondent agrees that the disputed domain name is identical or substantially similar to the Complainant’s NICOLAS FEUILLATTE trademark, but this fact however is not, in and of itself, dispositive of the question of the Respondent’s rights or legitimate interests in the disputed domain name;
ii. The Respondent made appropriate and demonstrable preparations to use the disputed domain name in connection with noncommercial and fair use before receiving any notice of this dispute;
iii. The Respondent’s website includes a disclaimer to ensure that Internet users do not confuse the Respondent’s fan site with the Complainant’s official website, nor do they mistakenly believe that Respondent’s website is endorsed by or affiliated with the Complainant;
iv. The Respondent’s website is strictly dedicated to comment on the NICOLAS FEUILLATTE brand in a positive manner;
v. The Respondent’s use of the disputed domain name does not operate to infringe on the Complainant’s trademark rights;
vi. The Complainant waited two years since it became aware of the Respondent’s identity, or one year from the time it had the Respondent’s website inspected by French Court Bailiffs, to file the instant Complaint;
vii. The reason why the disputed domain name was inactive during a short span is that websites are not created overnight, and also because they need to be periodically changed or edited to ensure that their content is of high quality;
viii. There is obviously personal contribution from the Respondent in the website at the disputed domain name in the form of the Respondent’s personal statements in regards to the quality of the Complainant’s brand;
ix. Domain name privacy services are designed for the protection of domain name owners’ safety, but not to protect domain name owners from potential complainants;
x. The is no evidence that the Respondent ever demanded financial compensation from the Complainant in exchange for the disputed domain name’s transfer;
xi. Except for the ancillary and limited placement of the Complainant’s logo and several small pictures of the NICOLAS FEUILLATTE goods, the Respondent’s website is not in any way similar or confusing to that of the Complainant. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The Respondent concedes that the disputed domain name is confusingly similar to the Complainant’s NICOLAS FEUILLATTE trademark, and consequently, the Panel needs not elaborate further.
The Complainant has thus met the first threshold of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you [the respondent] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or
iii. you [the respondent] 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.”
As noted in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.)
The Complainant represents to have neither licensed nor authorized the Respondent to apply for a domain name incorporating the NICOLAS FEUILLATTE mark. Equally, the Complainant submits that the Respondent is not known by the disputed domain name as an individual, business, or any type of organization.
The Respondent rests its defense on the assumption that the disputed domain name has been legitimately used in connection with a fan site claiming to be an un-official blog of the Complainant’s NICOLAS FEUILLATTE champagne.
In the Panel’s view, the Respondent’s contention is neither credible nor tenable for a number of reasons.
First, a fan site is not a blog. The former is created by one or more individuals supporting a celebrity, a music band, or a sports club, while the latter is an online personal journal with comments, reflections, and often hyperlinks provided by the writer1. The precarious layout and content of the Respondent’s website do not validate either of the two categories.
Second, the Respondent does not assert, much less prove, to have a membership base, which is the main component of a fan site.
Third, the Respondent does not disclose its identity on the website, nor does it describe its legal nature or field of activity in the Response;
Fourth, the Respondent does not contest the Complainant’s assertion that the website at issue became operational only after the Complainant sent off a first cease and desist letter on September 1, 2011, to the then undisclosed registrant of record; and
Fifth, the Respondent’s website is currently inactive, which prevented the Panel from assessing its purported legitimacy.
On the whole, the Panel considers that the Respondent’s portal is not a genuine fan site, nor a genuine blog for that matter. As such, the Respondent’s website ran afoul of either the “legitimate noncommercial” or “fair use” defense afforded by paragraph 4(c)(iii) of the Policy.
In view of the foregoing, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
First off, the Panel notes that the disputed domain name was registered some 35 years after registration and first use in commerce of the Complainant’s NICOLAS FEUILLATTE mark.
The Panel also notes that the NICOLAS FEUILLATTE mark is used globally in connection with the sale and distribution of champagne in numerous countries, including the United Arab Emirates where the Respondent is domiciled.
The Respondent does not deny to have been aware of the Complainant’s champagne products associated with the NICOLAS FEUILLATTE mark. To the contrary, the Respondent claims to have “purchased” the disputed domain name to promote the taste of the Complainant’s champagne.
The Panel notes that the term used by the registration agreement and the Policy is “register” while the WhoIs database refers to the disputed domain name’s “creation date”. It ensues that the Respondent did not purchase a web address that existed before, but rather the Respondent paid the Registrar to set aside a domain name of the Respondent’s own choosing.
Having already determined that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel finds that the Respondent has taken unfair advantage of the international reputation of the Complainant’s NICOLAS FEUILLATTE mark, and the goodwill attached to a well known appellation of origin like champagne.
Furthermore, the Panel finds that the Respondent’s portal creates initial interest confusion among Internet users seeking the Complainant in cyberspace, with the attendant consequence of diverting traffic originally intended for the Complainant, to the Respondent’s own website.
Lastly, the Panel considers that the use of a privacy service to conceal the Respondent’s identity, and the inactivity spans of the disputed domain name, both current and prior, are indicative of bad faith registration and use of the disputed domain name.
In the circumstances, the Panel holds that the disputed domain name was registered and has been used in bad faith for the purposes of the Policy.
The Complainant has therefore sustained its burden in connection with 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 disputed domain name be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: September 12, 2013
1 Merriam-Webster Dictionary.
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