The Complainants are Alain Vauthier, Micheline Vauthier, and Catherine Vauthier of Saint-Emilion, France, represented by Inlex IP Expertise, France.
The Respondent is DM Solutions Co. Ltd. of Drums, Philadelphia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2013. On August 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 10, 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. Preliminary Issues A. Consolidation of Complainants
The present Complaint has been filed by multiple Complainants. On this subject, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 provides as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
In the present case, the Complainants have expressly requested consolidation of their respective complaints on the basis that they allege a common grievance against the Respondent and a common legal interest in relevant rights that are allegedly affected by the Respondent’s conduct. On the latter subject, the Complainants note that they are co-owners of the CHATEAU AUSONE trademarks upon which they rely for the purposes of the present proceeding.
The Panel presumes that the fact that the Complaint describes the Complainants as individuals who are the joint owners of certain rights, rather than as partners in a single-entity partnership, is due to some aspect of national law where the Complainants are based with which the Panel is unfamiliar or is perhaps due to the fact that the Complainants are co-owners of the rights concerned while the trading entity is the company described in the Complaint, Chateau Ausone SCEA. Had the Complainants been described as a partnership or had the Complaint been brought in the name of Chateau Ausone SCEA, which presumably uses the Complainants’ trademarks under license, the Panel would simply have treated either of these as a single entity, such that no request for consolidation would have been necessary. Leaving aside the actual legal construction of the Complainants’ business, which is unknown to the Panel, there seems to the Panel to be little or no difference for present purposes between the Complainants as individual joint owners of certain rights which they use in the course of trade and a single entity such as a partnership or limited company. Accordingly, this fact alone suggests to the Panel that consolidation is reasonable.
The Panel notes that the Complainants allege that the disputed domain name targets the rights which the Complainants jointly own. This constitutes a specific common grievance against the Respondent. There is nothing before the Panel suggesting that the conduct complained of affects each of the Complainants’ respective rights in anything other than an identical fashion. Furthermore, the Panel notes that the Respondent has not filed a Response to the Complaint and therefore has not objected to the request for consolidation. Most importantly, the Respondent has not suggested that any prejudice arises from such consolidation, nor can the Panel perceive that any such prejudice would be likely to arise. The Panel considers in all of the above circumstances that it would be procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. B. Requested Remedy
The Panel notes that the remedy requested in the Complaint is that the disputed domain name be transferred to “the Complainant.” The Panel presumes that, in the event of the Complaint’s success, the Registrar will be able to show all of the Complainants’ names as legal registrants upon transfer of the disputed domain name. If the Complainants intended the disputed domain name to be transferred to the First Complainant or any single one or other combination of them, or in the event that the Registrar cannot list all of the Complainants as the legal registrant, the Complainants may simply ask the Registrar to amend the relative account details after the transfer is implemented. C. Delay
It is clear to the Panel that the Complainants have waited almost a decade after the creation of the disputed domain name to bring the present Complaint. No explanation has been provided for this delay. That said, the Panel reminds itself that the doctrine or defense of laches as such does not generally apply under the Policy, and that any such delay does not of itself prevent a complainant from succeeding in its complaint, provided the complainant is able to establish a case on the merits under the requisite three elements (see paragraph 4.10 of the WIPO Overview 2.0). There are no facts or circumstances before the Panel in the present case that indicate that this general approach to the question of delay should not apply. 5. Factual Background
The Complainants are the owners of multiple registered trademarks for the word mark CHATEAU AUSONE, including, for example International Registered Trademark No. 692849 designated for multiple countries and registered on May 11, 1998 in classes 32, 33 and 35. The Complainants produce AOC wines, or wines with protected appellation of origin, from the wine-making estate called Château Ausone. The product of the said estate, also called “Château Ausone”, is a Bordeaux wine from Saint-Émilion appellation, one of only four wines, along with Château Angélus, Château Cheval Blanc and Château Pavie to be ranked Premier Grand Cru Classé (A) in the Classification of Saint-Émilion wine. Only three different families have owned the Château Ausone estate since it was originally created. The Vauthier family, of whom the Complainants are part, has had a connection to the estate since the early twentieth century and has owned it outright since the mid-1990s.
Little is known about the Respondent, which appears to be an entity based in Philadelphia, United States of America (“USA”). The disputed domain name was created on October 9, 2003. The home page of the website associated with the disputed domain name displays the name “CHATEAU-AUSONE” at the top of the page surrounded by several Japanese characters. 6. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to trademarks in which the Complainants own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants note that in addition to their extensive portfolio of registered trademarks for the CHATEAU AUSONE word mark, the Complainants also own various domain names for this term on an individual and collective basis. The Complainants contend that the disputed domain name incorporates the Complainants’ trademark and is highly similar to the corporate name Chateau Ausone SCEA. The Complainants submit that the mere addition of a hyphen in the disputed domain name is insufficient to exclude the likelihood of confusion resulting from the incorporation of the Complainants’ trademark in the disputed domain name. The Complainants assert that the likelihood of confusion is aggravated because of the high notoriety of the CHATEAU AUSONE trademark.
The Complainants state that the Respondent does not own a trademark in respect of the words “Ausone” or “Chateau Ausone”. The Complainants note that the Respondent is not linked to the Complainants or their business in any manner nor does the Respondent act on their behalf. The Complainants contend that they have not given any authorization to the Respondent to use the CHATEAU AUSONE trademark as part of the disputed domain name and submit that the Respondent has not been commonly known by this name.
The Complainants note that the website associated with the disputed domain name contains many different types of merchandise together with comments from blog and twitter feeds or news from other media. The Complainants state that the Respondent cannot make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain and assert that there is no coincidence in the Respondent’s selection of the Complainants’ trademark. The Complainants submit that the Respondent registered the disputed domain name for no other purpose than to include the Complainants’ trademark therein.
The Complainants assert that as their trademark is used worldwide it is very unlikely that the Respondent would not have been aware of this when it registered the disputed domain name. The Complainants state that the Respondent has not used or presented demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainants contend that the Respondent promotes “litigious products” reproducing the Complainants’ protected signs in order to mislead consumers and take advantage of the Complainants’ notoriety. The Complainants state that this demonstrates that the Respondent has intentionally attempted to attract Internet users to the website associated with the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainants’ trademark. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 7. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have demonstrated to the Panel’s satisfaction that they are the proprietors of numerous registered trademarks for the word mark CHATEAU AUSONE, including the trademark cited in the Factual Background above. The only differences between this mark and the disputed domain name are the hyphen between the “chateau” and “ausone” elements of the second level of the disputed domain name and the “.com” generic Top-Level Domain (gTLD). The gTLD may be disregarded on the grounds that this is wholly generic and is required for technical reasons only, as is customary in cases under the Policy. Similarly, the presence of the hyphen in the disputed domain name is not of any significance given that it is not possible to reproduce white space in a domain name, again for technical reasons.
In these circumstances, the Panel considers that the disputed domain name is almost identical and is undoubtedly confusingly similar to the Complainants’ trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainants have rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“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 rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Paragraph 2.1 of WIPO Overview 2.0. In the present case, the Complainants submit that the Respondent does not own a trademark in respect of the words in the disputed domain name, that the Respondent is not linked to the Complainants or their business, that the Complainants have not given the Respondent any authorization to use their trademark and that the Respondent has not been commonly known by the disputed domain name.
In the opinion of the Panel, these submissions collectively constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of such rights or legitimate interests. The Respondent has not filed any Response to the Complaint in the present matter and accordingly has provided the Panel with no case which might disclose any apparent rights or legitimate interests in the disputed domain name. Furthermore, the Complainants contend that the disputed domain name is used to offer a variety of merchandise along with a collection of material produced from third party media and the Panel cannot see how such use could be characterized as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In all of these circumstances, the Panel finds that the Complainants have proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, 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:
“(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 online 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”.
In the present case, the Complainants’ submissions focus principally on paragraph 4(b)(iv) of the Policy. The Complainants note that the website associated with the disputed domain name is used in connection with an offering of many different types of merchandise together with comments from blog and twitter feeds or news from other media. The Complainants also make a compelling case that the fame of their trademark, which takes its name from the specific wine making estate that is named Château Ausone, is such that the Respondent could not have selected and registered the disputed domain name without an awareness of and intent to target the Complainants.
In light of the Complainants’ submissions and the absence of any contrary account from the Respondent, or indeed any credible alternative explanation, the Panel considers that the most probable reason for the Respondent’s registration and use of the disputed domain name is that the Respondent was seeking to free ride on the fame of the Complainants, for commercial gain, to attract the maximum number of visitors to the Respondent’s website based on the expectation of those visitors that the website and disputed domain name would be in some way connected to the Complainants and their activities in the field of viniculture. In these circumstances, the Panel finds that paragraph 4(b)(iv) of the Policy is applicable to the circumstances of the present case.
Accordingly, the Panel finds that the Complainants have established that the Respondent has registered and is using the disputed domain name in bad faith in terms of the Policy and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 8. 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 Complainants.
Andrew D. S. Lothian
Sole Panelist
Date: September 24, 2013.
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