The Complainant is DGB (Proprietary) Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 2019. The Center verified that the Complaint together with the amended 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 November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2019. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 6, 2020. 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 owns the Boschendal wine estate where its BOSCHENDAL wines are produced, and which is one of South Africa’s oldest wine estates. The Complainant’s BOSCHENDAL wines have won awards in the International Wines & Spirits Awards Competition (held in London), International Wine Challenge (London), Syra du Monde (France), The Japan Wine Challenge, Concours Mondial de Bruxelles (Japan), Mundus Vini (Germany), and others, through the years. The Complainant holds the following registrations of the trade mark BOSCHENDAL (hereafter together the “Trade Marks”): - European Union Trade Mark No. 015754138 registered on December 7, 2016; The Domain Name was registered on July 17, 2019 and resolves to a website which features links, which lead to websites of different wine distributors, which offer and sell wines online, including the Complainant’s competitors’ wines. 5. Parties’ Contentions A. Complainant According to the Complainant, the Domain Name is confusingly similar to the Trade Marks, as it comprises BOSCHENDAL as the first, dominant and sole distinctive element, together with the descriptive word “estates”, which heightens the confusing similarity between the Domain Name and the Trade Marks. Furthermore, the Complainant submits, the generic Top-Level domain (“gTLD”) “.com” in the Domain Name is not relevant in the comparison of domain names to trade marks. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name since the Complainant is the sole legitimate proprietor of the Trade Marks, which, through the Complainant’s use of the Trade Marks in relation to its goods and services, are solely associated with the Complainant and its business, as evidenced by the fact that a search on the Internet reveals, in the first five pages of the results, only entries that relate to the Complainant’s business, the Boschendal wine estate, and its BOSCHENDAL wines. The Complainant states that the Respondent has not made any bona fide or legitimate use of or traded in good faith in connection with the sale of goods or services, since the website under the Domain Name contains hyperlinks to websites of wine distributors, offering and selling wines from competitors of the Complainant. According to the Complainant, the Respondent has registered and is using the Domain Name in bad faith as it was registered long after the Complainant registered its Trade Marks and since the Domain Name is used to promote the Complainant’s competitors’ wines, with the intention to or in an attempt to attract, for commercial gain, Internet users to its website, or other online location, by creating a likelihood of confusion with the Trade Marks, regarding the source, affiliation or endorsement of the website or the products or wines that are promoted on the websites that are linked to the Domain Name. The Complainant further points out that it is highly improbable that the Respondent may have independently conceived the Domain Name as it comprises the Complainant’s distinctive and reputable Trade Marks, which have no meaning in ordinary language. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “Boschendal”, of which the Trade Marks consist, in its entirety. The addition of the descriptive term “estates” does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier,WIPO Case No. D2018-0980). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This 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. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 (see WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. Furthermore, in view of the fact that the Domain Name resolves to a website which features links which lead to websites of different wine distributors which offer and sell wines online, including the Complainant’s competitors’ wines, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. Therefore, the Panel concludes that the Respondent has no rights to or legitimate interests in the Domain Name in terms of paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of and indeed specifically targeted, the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 26 years after the registration of the earliest of the Trade Marks; (ii) the element BOSCHENDAL of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which a registrant is likely to spontaneously or accidentally think; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks. In view of these circumstances and the use of the Trade Marks on the website to which the Domain Names resolves for links to websites where products competing with those offered by the Complainant, the fact that the Respondent tried to hide its identity through the use of a privacy service and the fact that the Respondent did not file a Response, the Panel concludes that the Respondent registered and used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or location or of the services on the website to which the Domain Name resolves, in accordance with paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 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 Wolter Wefers Bettink
- Benelux trade mark No. 0796193 registered on September 21, 1993;
- African Intellectual Property Organization (OAPI) trade mark No. 60284 registered
on October 28, 2008;
- United States of America trade mark No. 3,339,249 registered on November 20, 2007;
- Switzerland trade mark No. 583026 registered on February 16, 2009;
- United Kingdom trade mark No. UK00001289738 registered on October 31, 1986;
- Canada trade mark No. 445,158 registered on July 14, 1995;
- China trade mark No. 5707413 registered on November 7, 2006;
- Brazil trade mark No. 901277231 registered on January 4, 2011;
- France trade mark No. 93485699 registered on September 30, 1993.
Sole Panelist
Date: January 20, 2020
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