The Complainant is Accolade Wines Australia Limited of Reynella, South Australia, Australia, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Kathi Vining of New York, New York, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on February 14, 2018. 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 is a wine merchant with operations in Australia, United Kingdom, mainland Europe, South Africa, New Zealand, Asia and North America. It has over 1,700 employees around the world and delivers approximately 38 million cases of wine to more than 140 countries annually.
The Complainant’s HARDYS brand was created in 1853 by the Complainant’s predecessor and founder – the eponymous Thomas Hardy.
The Complainant’s main website and online corporate presence is established at “www.accolade‑” and the Complainant operates a major brand-related website at “www.hardys”. The Complainant’s domain name was registered on July 18, 2005.
The Complainant’s Facebook account had 132,451 “followers” and its Twitter account had 9,310 “followers” as at January 8, 2018.
The Complainant is the registrant of a large portfolio of trademarks including:
- United Kingdom Registered Trade Mark HARDYS, registration number 1540113 registered on September 22, 1995 for “wines, all included in class 33”;
- United States Registered Trade Mark HARDYS, registration number 4090213, registered on January 24, 2012 for “wine” in international class 33;
- European Union Trade Mark HARDYS, registration number 345090, registered on July 16, 1998 for goods in class 33.
In the absence of a Response or any communication from the Respondent, the only information available about the Respondent is that contained in the Complaint and the Registrar’s WhoIs. The disputed domain name was registered on October 20, 2017 and resolves to a website that purports to offer garments at discounted prices under a third party brand name details of which are set out below. 5. Parties’ Contentions A. Complainant
The Complainant relies on its abovementioned registered trademarks and its rights at common law established by long and extensive use of the HARDYS trademark in respect of its international wine business. In support of its submissions the Complainant has exhibited screenshots of its websites at “www.hardys” and “www.accolade-”, its social media channels, WhoIs information about its domain names and and an online article from the trade press giving general background details about its HARDYS brand.
The Complainant contends that the disputed domain name is confusingly similar to its HARDYS trademark in that it differs only by the addition of the generic and descriptive word “wines”. The Complainant avers that the word “wines” does nothing to distinguish the disputed domain name from the Complainant’s mark and contends that it exacerbates the prospects of confusion because the Complainant’s HARDYS brand is inextricably linked to the production and sale of wine and so the Complainant’s customers would reasonably assume that the disputed domain name would be associated with the Complainant, rather than any unrelated third party.
The Complainant submits that the Top-Level Domain extension is wholly generic in that it is required only for technical reasons and, as is customary in proceedings under the Policy, should be disregarded for the purposes of comparison with the Complainant’s trademarks.
The Complainant furthermore contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant refers to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which asks “How do panels assess whether a respondent lacks rights or legitimate interests in a domain name?”and answers: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Accordingly, the Complainant seeks to make out a prima facie case to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name submitting that the Complainant has found no evidence that the Respondent has been commonly known as “Hardys Wines” prior to or after the registration of the disputed domain name; that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its marks; that the Complainant has found no evidence that the Respondent owns any trademarks incorporating the term “Hardys Wines”; nor has the Complainant found any evidence that the Respondent has ever traded as “Hardys Wines”; and the registration of the Complainant’s oldest registered mark pre-dates the registration of the disputed domain name by approximately 24 years.
The Complainant further contends that given the fame of its HARDYS mark and the confusing similarity of the disputed domain name to said mark, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interests upon the Respondent. Equally, the Complainant cannot conceive of a legitimate reason for the Respondent to forward web users searching for the Complainant’s products to a website promoting a third party brand. In all of these circumstances, the Complainant asserts that it has established a prima facie case along the lines anticipated by section 2.1 of the WIPO Overview 3.0 that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant also submits that that the disputed domain name was registered and is being used in bad faith; and that by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website in terms of the Policy, paragraph 4(b)(iv).
The Complainant submits that the term “Hardys Wines” refers exclusively to the Complainant and its products. The Complainant has exhibited the results from the search engine Google for the term “Hardys Wines”; the Complainant notes that all the results refer to the Complainant and to no other entity. The Complainant therefore asserts that the term “Hardys Wines” has no other meaning than which relates to the Complainant and its products and argues that given that the Complainant and its mark are well-known, as outlined above, and that the additional word “wines” does not distinguish the disputed domain name from the Complainant’s mark and its activities and that the term “Hardys Wines” has no other sensible meaning, the Complainant asserts that it is inconceivable that the disputed domain name would not cause confusion among web users. Internet users who find the disputed domain name through a search engine or who type it directly into their browser would naturally expect to find the Complainant and its products. The Complainant submits that the disputed domain name is inherently confusing in and of itself.
Nothing is known about the Respondent by the Complainant. The disputed domain name was registered on October 20, 2017. The disputed domain name resolves to a website which purports to offer discounted fashionwear for sale and which gives the impression that it belongs to a named third party that is well known in the online fashion industry. The Complainant observes that the named third party is an American clothing company located in California which focusses on premium denim clothing and which was established in December 2002. The Complainant has no connection with the named third party and furthermore has seen no evidence which would suggest that the website to which the disputed domain name is an official outlet or otherwise authorized by the named third party.
The Complainant submits that the confusion is not negated when web users arrive on the Respondent’s website as it displays and sells unrelated, third party goods that have nothing to do with the Complainant. The Complainant suggests that it is reasonable to infer that the Respondent registered the disputed domain name to benefit from the web traffic that would inevitably be directed to the Respondent’s site as a result of said confusion.
Furthermore, the Complainant notes that it operates its own website at the URL “www.hardys” and contends that the disputed domain name is intentionally misleadingly similar to the Complainant’s domain name. The Complainant avers that it cannot conceive of any circumstances in which such an impersonation could be considered a bona fide, good faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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 Complainant has adduced convincing evidence of its ownership of and rights in the HARDYS trademark which it has established through the above-mentioned registered trademarks and its extensive use of the mark in association with its business as an international wine merchant for many years.
The disputed domain name consists of a combination of the distinctive word “hardys”, a hyphen, the dictionary word “wines” and the generic Top-Level Domain (“gTLD”) extension “.com”.
Having compared both, this Panel finds that the word “hardys” is the dominant and only distinctive element of the disputed domain name. The word “wines” does not distinguish the disputed domain name from the mark in any way. The hyphen and the gTLD “.com” extension may be ignored for the purpose of comparison in the circumstances of the present Complaint.
This Panel finds therefore that the disputed domain name is confusingly similar to the HARDYS trademark in which the Complainant has rights and the Complaint has succeeded in the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name consists of the Complainant’s distinctive HARDY trademark in combination with the word “wines” which is a reference to the Complainant’s business; there is no connection between the Complainant and the Respondent; the Complainant has carried out Internet searches and has not found any information about the Respondent; there is no evidence that the Respondent is known by or has any connection with the name “Hardys” or with the wine business; it appears that the Respondent has caused, permitted or allowed the disputed domain name to resolve to a website which purports to sell discounted clothing under the name of a third party rather than her own name and appears to be taking advantage of the Complainant’s reputation and goodwill to attract Internet traffic to her website.
In such circumstances, as the Complainant has submitted, it is well established that the burden of production shifts to the Respondent. The Respondent has not filed any Response. In the circumstances the Respondent has failed to discharge the burden of production.
On the evidence, this Panel finds therefore that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has satisfied the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
This Panel accepts the Complainant’s submission that on the evidence that in combination the words “hardys” and “wines” refer exclusively to the Complainant and its products. The distinctive element of the disputed domain name is the Complainant’s HARDYS trademark. The descriptive element “wines” refers to the Complainant’s specialist merchandise. It is most improbable that when the disputed domain name was chosen and registered the registrant was unaware of the Complainant, the reputation of the HARDYS trademark, the Complainant’s domain name which was registered on July 18, 2005 and the Complainant’s established website at the almost identical web address “www.hardys”.
In the circumstances, on the balance of probabilities the disputed domain name was chosen and registered in bad faith to refer to the Complainant’s business and to take predatory advantage of the Complainant’s goodwill and reputation.
Since registration, the Respondent has caused, permitted or allowed the disputed domain name to resolve to a website that purports to sell discounted fashion goods. The Respondent’s website creates the impression that it is established and maintained by a named third party online fashion outlet. The third party’s name bears no similarity whatsoever to the Complainant’s HARDYS mark or the disputed domain name. There is no evidence of any connection between the Respondent and the third party and it is most improbable that any large established fashion enterprise would endeavor to take advantage of the Complainant’s goodwill and reputation. In fact is most probable that an established fashion house would find any use of the Complainant’s name and mark in association with its fashion products an undesirable source of confusion. Taken together, these facts lead this Panel to conclude that the Respondent’s website is not authentic and that the disputed domain name is being used in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and that by using the disputed domain name, the Respondent intentionally attempted to take predatory advantage of the Complainant’s reputation and goodwill to attract Internet traffic to her website.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in its Complaint. 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.
James Bridgeman
Sole Panelist
Date: February 20, 2018
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