ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chateau Lafite Rothschild v. Privacy Service Provided by Withheld for Privacy ehf / Brian Woods, Famers Case No. D2022-1039 1. The Parties The Complainant is Chateau Lafite Rothschild, France, represented by Plasseraud IP, France. The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Brian Woods, Famers, United States of America ("United States" or "USA"). 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2022. On March 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2022, 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 April 4, 2022. 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 April 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 12, 2022. page 2 The Center appointed David Perkins as the sole panelist in this matter on May 17, 2022. 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 4.A Complainant 4.A.1 The Complainant runs the Château Lafite Rothschild wine estate, commonly called "Lafite", which is a very famous and prestigious French wine estate. It was established in the 18th century and is located at Pauillac in the Bordeaux region in France. Information about the history of the Complainant is contained in an Annex to the Amended Complaint. 4.A.2 The Amended Complaint provides details of the Complainant's worldwide trade mark registrations consisting in whole, or in part, of LAFITE. They include the following: Country Registration No. Mark Classes of Goods & Services Date of Registration International ("IR")* 649854 LAFITE 33 and 34 January 19, 1996 European Union 000108639 CHATEAU LAFITE ROTHSCHILD 33 and 34 June 9, 1998 IR** 395875 CHATEAU LAFITE ROTHSCHILD 1-42 November 28, 1972 IR *** 764270 Device mark featuring inter alia, the mark LAFITE and a capital 'R' 14 and 33 July 23, 2001 France 1,656,313 The same 33 April 17, 1991 European Union 002107696 The same 33 February 27, 2001 China 22248378 LAFITE 33 January 28, 2018 China 18325901 Device mark featuring the mark LAFITE and a capital 'R' 33 December 21, 2016 IR **** 1547958 Device mark featuring the words 'GRAND VIN DE LAFITE ROTSCHILD' 16 and 20 June 9, 2020 IR***** 1338730 GRAND VIN DE LAFITE ROTSCHILD 31 January 31, 2017 United States of America 1,200,616 CHATEAU LAFITE ROTHSCHILD 33 July 6, 1982 United States of America 1,758,650 Device mark featuring, the mark LAFITE and a capital 'R' 33 March 16, 1993 * IR 649854 covers 20 countries, including the USA. ** IR 395875 covers 19 countries. *** IR 764270 covers 8 countries. **** IR 1547958 covers the European Union and 5 other countries including the USA. ***** IR1338730 covers the European Union and 5 other countries. The Respondent's given address is in California, USA. 4.A.3 The Amended Complaint states that the Complainant is the registrant of numerous domain names including the term "Lafite" alone or in combination with other elements. Those domain names include for example: page 3 , , , , , , , , , , , and . The earliest of the above, , was registered on January 20, 1997. 4.A.4 The Complainant also conducts its business on the Internet through its website at "www.lafite.com", which is available in multiple languages including French and English. The Amended Complaint explains that the domain name is used as the Complainant's official email address. 4.A.5 Annexed to the Amended Complaint is an email exchange in March 2022 in which the Respondent used the disputed domain name as an email addressed to one of the Complainant's clients purporting to be from a member of the Complainant's accounting department requesting payment to a (purportedly) new bank account. This attempted fraud was discovered when that client emailed the individual in the Complainant's accounting department to check the accuracy of the new bank account. 4.B Respondent 4.B.1 In the absence of a Response, what is known of the Respondent is contained in the Amended Complaint and its Annexes. 4.B.2 The disputed domain name was registered on March 10, 2022. The fraudulent email described in paragraph 4.A.5 above was sent the same day. 5. Parties' Contentions 5.A Complainant Identical or Confusingly Similar 5.A.1 The Complainant cites three cases decided under the Policy in which its LAFITE trade mark has been held to be known for wine worldwide and to be both well known and widely known. 5.A.2 The Complainant states that the disputed domain name incorporates its LAFITE trade mark in its entirety and is, consequently, confusingly similar to that trade mark. The Complainant cites section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") in support of its case that addition of a generic Top-Level Domain ("gTLD") is to be disregarded when assessing confusing similarity. By way of illustration, the Complainant cites five cases decided under the Policy in which Panels have found confusing similarity when the disputed domain name has merely included a hyphen and the letters "fr". Rights or Legitimate Interests 5.A.3 First, the Complainant says that it has not licensed or otherwise authorised use by the Respondent of the LAFITE trade mark. 5.A.4 Second, there is no evidence that the Respondent has been commonly known by the disputed domain name. 5.A.5 Third, the Complainant says there is no evidence of any fair, noncommercial or bona fide use of the disputed domain name. In that respect, the Complainant points to the fraudulent use of the disputed domain name described in paragraph 4.A.5 above. Additionally, the Complainant asserts that use of the disputed domain name on a pay-per-click ("PPC") parking page linking it to promoting products competing with its LAFITE wines does not create a right or legitimate interest in the disputed domain name. By way of page 4 illustration, the Complainant cites three decisions under the Policy where such use has been held to be neither a legitimate noncommercial nor fair use of the Complainant's domain name. Registered and Used in Bad Faith 5.A.6 First, the Complainant says that, given the distinctiveness, fame and repute of its LAFITE trade mark, registration of the disputed domain name cannot be a mere coincidence. The Complainant cites decisions under the Policy in which it has been held that incorporation of a well known trade mark into a domain name supports a finding of bad faith registration. 5.A.7 Second, the Complainant explains that, for a number of reasons, the Respondent's details given for registration of the disputed domain name are more than likely inaccurate, probably fanciful. For example, the postal address is that of the well known Farmers Insurance company in the United States. But the telephone number given is not that of Farmers Insurance, nor does it have the area code of California - the purported address of the Respondent - but is the area code for Bermuda. Still further, the Respondent gives its organisation as "Famers", a misspelling of "Farmers" as in Farmers Insurance. From the Complainant's enquiries, the Respondent does not appear to be an official agent of Farmers Insurance. Providing such fictitious information is, the Complainant says, evidence of bad faith, citing section 3.2.1 of the WIPO Overview 3.0 and two illustrative decisions under the Policy. 5.A.8 Third, the Complainant points to the fraudulent use of the disputed domain name described in paragraph 4.A.5 above. 5.A.9 Fourth, referring to section 3.6 of the WIPO Overview 3.0, the Complainant couples that use to the Respondent's use of a privacy service to hide his identity as further evidence of bad faith. 5.A.10 Fifth, the Complainant points to the bad faith use of the disputed domain name as a PPC link to competitor products: paragraph 5.A.5 above. 5.A.11 Sixth, although the disputed domain name is currently inactive, the Complainant asserts that all the factors constituting passive use are present on the facts of this case. These are that the LAFITE trade mark is globally well known, that the Respondent not only concealed its identity through a privacy service but also provided inaccurate identity and contact information, that because of its closeness to the LAFITE trade mark the disputed domain name carries a high risk of implied affiliation with the Complainant's prior rights and that, given the fraudulent use described in paragraph 4.A.5 above, any good faith use of the disputed domain name is clearly implausible. 5.A.12 In sum, the Complainant's case is that the Respondent's conduct plainly falls fair and square within paragraph 4(b)(iv) of the Policy. 5.B Respondent As noted above, no Response has been filed. 6. Discussion and Findings 6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding (i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and page 5 (iii) that the disputed domain name has been registered and is being used in bad faith. 6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name in issue. 6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith. 6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar 6.5 The Complainant clearly has rights in the LAFITE trade mark which is a highly distinctive and well known trade mark. 6.6 For the reasons summarised in paragraph 5.A.2 above, the disputed domain name is confusingly similar to that mark. 6.7 Consequently, the twin requirements of paragraph 4(a)(i) of the Policy are met. Rights or Legitimate Interests 6.8 There is no evidence that the Respondent could demonstrate any of the grounds in paragraph 4(c) of the Policy to establish rights or legitimate interests in the disputed domain name. The Complainant's case summarised in paragraphs 5.A.3 to 5.A.5 above is well made out and, accordingly, the Complainant succeeds under paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith 6.9 Again, the Complainant's case summarised in paragraphs 5.A.6 to 5.A.12 is well made out. The evidence of bad faith registration and use of the disputed domain name falls fair and square within paragraph 4(b)(iv) 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 names be transferred to the Complainant. /David Perkins/ David Perkins Sole Panelist Date: May 31, 2022
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