ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chateau Lafite Rothschild v. Lei lier, Price TTTp Case No. D2023-4213 1. The Parties The Complainant is Chateau Lafite Rothschild, France, represented by Plasseraud IP, France. The Respondent is Lei lier, Price TTTp, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2023. On October 10, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which completed the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2023 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 October 17, 2023. 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 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2023. The Center appointed Peter Burgstaller as the sole panelist in this matter on December 5, 2023. 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. page 2 4. Factual Background The Complainant is a French wine estate established in the 18th century and has been owned by the Rothschild family since the 19th century (Annex 6 and 7 to the Complaint). The Complainant owns and/or has rights in numerous marks containing CHATEAU LAFITE or LAFITE, inter alia - EU trademark registration for CHATEAU LAFITE ROTHSCHILD (word), Registration No 000108639, registered on June 9, 1998 for international classes 33 and 34; - US trademark registration for CHATEAU LAFITE-ROTHSCHILD (word), Registration No 1200616, registered on July 6, 1982 in international class 33; - International registration for CHATEAU LAFITE ROTHSCHILD (word), Registration No 395875, registered on November 28, 1972 for various countries around the world, in various international classes; - International registration for LAFITE (word), Registration No 649854, registered on January 19, 1996 for various countries around the world, in international classes 33 and 34 (Annex 8 to the Complaint). Further, the Complainant or its subsidiaries own various domain names containing the mark CHATEAU LAFITE, e.g., registered March 4, 2018, registered May 27, 2004, registered February 6, 2015 (Annex 9 to the Complaint). The Complainant has a strong internet presence especially under its official website available under the domain name (Annex 10 to the Complaint). The disputed domain name was registered on June 30, 2023 (Annex 2 to the Complaint). The disputed domain name does not resolve to an active website (Annex 13 to the Complaint). 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the mark CHATEAU LAFITE is well-known since many decades around the world and notes that the disputed domain name consists entirely of this well-known mark. The Complainant submits that it is therefore inconceivable that the Respondent would not have been aware of the Complainant's trademark when registering the disputed domain name, or that there would be any legitimate use for the disputed domain name. The Complainant notes that the disputed domain name does not resolve to an active website, and is therefore not used for a bona fide offering of goods or services. The Complainant asserts that the passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would be legitimate and not infringing the Complainant's well-known mark. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to 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 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark CHATEAU LAFITE ROTHSCHILD and LAFITE for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In the present case, the disputed domain name is confusingly similar to the Complainant's marks since they are clearly recognizable in the disputed domain name. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition or omission of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy. WIPO Overview 3.0, sections 1.7 and 1.8. This is the case at present. The addition of the term "chateau" to the LAFITE trademark or the omission of the name "Rothschild" with respect to the CHATEAU LAFITE ROTHSCHILD trademark in the disputed domain name do not prevent a finding of confusing similarity. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the available record, the Panel finds the second element of the Policy has been established. page 4 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant has rights and is the owner of the well-known, famous and highly distinctive registered trademarks LAFITE and CHATEAU LAFITE ROTHSCHILD, which are registered and used in many jurisdictions around the world for decades. Moreover, the Complainant registered and is using numerous domain names containing the mark LAFITE or CHATEAU LAFITE e.g. or for years. It is inconceivable for this Panel that the Respondent registered the disputed domain name without knowledge of the Complainant's rights which were established long before the registration of the disputed domain name; these facts lead to the necessary inference of bad faith. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent. The disputed domain name is also being used in bad faith: Although there is no evidence that the disputed domain name is being actively used or resolved to a website with substantive content, Panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated goodfaith use, and (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. The distinctiveness and reputation of the Complainant's trademark, and the composition of the disputed domain name support the finding that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds that the Complainant has established the third element 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. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: December 19, 2023
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