ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chateau Lafite Rothschild v. Xiao Shuang Wang Case No. D2022-3395 1. The Parties The Complainant is Chateau Lafite Rothschild, France, represented by Plasseraud IP, France. The Respondent is Xiao Shuang Wang, China. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2022. On September 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 13, 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 (Registration Private, Domains By Proxy, LLC, United States of America) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 September 24, 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 September 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2022. The Center appointed Nicholas Weston as the sole panelist in this matter on October 26, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 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 French producer of Bordeaux appellation wines. The Complainant holds a number of registrations for the trademark CHATEAU LAFITE ROTHSCHILD in numerous jurisdictions including, for example: International Trademark Registration No. 395875 for CHATEAU LAFITE ROTHSCHILD, registered on November 28, 1972. The Complainant owns numerous domain names that comprise or contain the trademark CHATEAU LAFITE ROTHSCHILD, including the domain name . The Disputed Domain Name was registered on December 21, 2019 and resolves to an inactive webpage. 5. Parties' Contentions A. Complainant The Complainant cites its International trademark No. 395875 registered on November 28, 1972 and other registrations internationally for the mark CHATEAU LAFITE ROTHSCHILD as prima facie evidence of ownership. The Complainant submits that its rights in the mark CHATEAU LAFITE ROTHSCHILD predate the Respondent's registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates distinctive elements of the CHATEAU LAFITE ROTHSCHILD trademark and that the confusing similarity is not removed by the inversion of the words "lafite" and "rothschild", or the addition of the generic Top-Level Domain ("gTLD") ".com". The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a webpage that has been inactive for the nearly three years since its registration. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, and submits that "[t]he trademark CHATEAU LAFITE ROTHSCHILD is extremely well-known" and that "the passive holding of the [D]isputed [D]omain [N]ame amounts to bad faith use in this case". B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark 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 3 (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark CHATEAU LAFITE ROTHSCHILD in numerous jurisdictions. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1). Turning to whether the Disputed Domain Name is identical or confusingly similar to the CHATEAU LAFITE ROTHSCHILD trademark, the Panel observes that the Disputed Domain Name comprises: (a) the terms "lafite" and "rothschild" from the Complainant's trademark CHATEAU LAFITE ROTHSCHILD, inverted; (b) followed by the gTLD ".com". It is well established that the gTLD used as technical part of a domain name may be disregarded. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically: "rothschildlafite" (see section 1.11 of the WIPO Overview 3.0). The Panel finds that the inversion of the terms "lafite" and "rothschild" does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant's trademark. It is well established that in cases where at least a dominant feature of the relevant mark of a Complainant is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent's rights or legitimate interests in the Disputed Domain Name. 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: WIPO Overview 3.0, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name resolved to an inactive webpage so there is no evidence of any fair or noncommercial or bona fide use; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name "rothschildlafite", and has not been commonly known by the name "rothschildlafite"; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks. The Complainant submits that "the CHATEAU LAFITE ROTHSCHILD trademark is not only intrinsically extremely distinctive and globally well known [.] it is exclusively associated with the Complainant". The Panel accepts the Complainant's uncontested submission and evidence that the Disputed Domain Name resolves to an inactive webpage and is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel finds for the Complainant on the second element of the Policy. page 4 C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Name, the Panel is satisfied that the Respondent knew of the Complainant's trademark CHATEAU LAFITE ROTHSCHILD when it registered the Disputed Domain Name (see Chateau Lafite Rothschild v. Diane Gill, WIPO Case No. D2014-1680 ("Complainant's trademarks are widely known"); Château Lafite Rothschild v. Chen Yuan ( 陈源 ), WIPO Case No. D2020-0581 ("the Complainant's well-known trademarks"). On any view, the Respondent cannot credibly claim to have been unaware of the mark (see WIPO Overview 3.0, section 3.2.2). In addition, the gap of several years between registration of the Complainant's trademark and the Respondent's registration of the Disputed Domain Name is a further indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant's rights in its trademark predate any rights that could possibly flow from the Respondent's registration of the Disputed Domain Name by at least 50 years. On the issue of use, the Complainant's evidence is that the Disputed Domain Name does not resolve to an active website and that, for almost three years, there have been no demonstrative preparations to use the Disputed Domain Name. The fact that the Disputed Domain Name does not resolve to an active website does not prevent a finding of bad faith (see WIPO Overview 3.0, section 3.3.). On the evidence before it, the Panel is unable to consider any plausible good faith use to which the Respondent could put the Disputed Domain Name and notes that the circumstances of this case, including the strong reputation of the Complainant's trademark and the absence of any response or evidence of good faith use, support a finding of bad faith. In the absence of any evidence to the contrary, this Panel accepts the Complainant's evidence and finds that the Respondent has targeted the Complainant's trademark CHATEAU LAFITE ROTHSCHILD by the incorporation of a deliberate inversion of the terms "lafite" and "rothschild" in the Disputed Domain Name, without the Complainant's consent or authorization. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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. Nicholas Weston/ Nicholas Weston Sole Panelist Date: November 9, 2022
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