The Complainant is Hutchinson Wines of Healdsburg, California, United States of America, represented by Bay Area Technology Law Group PC, United States of America.
The Respondent is Amphora Wine Group Pty Ltd, William Howard of Stonyfell, South Australia, Australia, represented by Alison Bradshaw Legal, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Central Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 3, 4, 7 and 10, 2011, the Center transmitted by email to Domain Central Pty Ltd. a request for registrar verification in connection with the disputed domain name. On March 10 and 11, 2011, Domain Central Pty Ltd. 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. The Response was filed with the Center on April 4, 2011.
The Center appointed Michael J. Spence as the sole panelist in this matter on April 11, 2011. 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 has been using AMPHORA as a trade mark for wines since 1998 in the United States. It has also been operating under the domain name to offer wines for sale over the Internet. The term “amphora” is a generic term that refers to an ancient form of vessel used to store and transport wine, amongst other products. The Respondent has been operating as the Amphora Wine Group Pty Ltd since 2008. It has developed a business with a turn-over of approximately AUD 3.2 million involving sales in Australia, China, Hong Kong, New Zealand and Tonga. The name of the business was chosen “in the course of a round table discussion of staff”. 5. Parties’ Contentions A. Complainant
The Complainant contends: that the disputed domain name is identical or confusingly similar to its mark; that it is unaware of any rights or legitimate interests that the Respondent may have in respect of the disputed domain name; and that the likelihood of confusion is so strong that it evinces an intention deliberately to mislead consumers which constitutes bad faith. B. Respondent
The Respondent contends: that the Complainant enjoys no trade mark rights in Australia by reason of its registration in the United States and that it would be ineligible for the registration of a “.” domain name; that it chose the domain name without any knowledge of the Complainant’s business and on the basis of the history of the word “amphora” and has since built up a significant business under the name; and that it has at no stage demonstrated bad faith in the registration or use of the disputed domain name. 6. Discussion and Findings
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are different policies, both share substantial similarities and, as such, the Panel finds it appropriate to rely on authority concerning the UDRP in resolving the present dispute. A. Identical or Confusingly Similar
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarises the consensus view on the issue of the rights that a Complainant must show in order to satisfy the trade mark requirements of paragraph 4(a)(i) UDRP in the following terms: “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP”. Given the language used in paragraph 4(a)(i) of the Policy, the Panel finds that the same reasoning applies under the Policy. There can be no doubt, therefore that the Complainant satisfies the requirement of the first element of the Policy that trade mark rights be demonstrated.
More difficult is the issue of whether the trade mark and the disputed domain name are identical or confusingly similar. The common material in the registered trade mark and the disputed domain name is merely the generic word ‘amphora’, a word that has been used in relation to wines for over 8000 years. The disputed domain name and the Complainant’s own domain name share a stronger similarity, but the Complainant has done little to establish that it enjoys trade mark rights in AMPHORA WINES.
On balance, it does seem plausible that the Complainant’s trade mark and the disputed domain name are identical or confusingly similar and that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. However, given the Panel’s findings on the second element of paragraph 4(a) of the Policy, it is not necessary to reach a settled decision on this issue. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case, the Respondent has demonstrated to the satisfaction of the Panel that it has, for some three years, been operating a significant business under the name Amphora Wine Group Pty Ltd. Moreover, it has indicated that its choice of name for that business was based on the generic meaning of the term “amphora” and intended apparently no reference to the Complainant or its activities. The Complainant has not addressed the existence of this business in any way.
On balance, the Panel therefore finds that the Complainant has not established the second element of paragraph 4(a) of the Policy. C. Registered or Subsequently Used in Bad Faith
Given the Panel’s findings in relation to the second element of the paragraph 4(a) of the Policy, it is not necessary to address the issues raised in the third element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Sole Panelist
Dated: April 21, 2011
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