Complainant is Berry Bros. & Rudd Ltd of London, United Kingdom of Great Britain and Northern Ireland, represented by Groom Wilkes & Wright LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Alex Cowen of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center notified Complainant that the Complaint was deficient on September 15, 2015. Complainant filed an amended Complaint on September 16, 2015.
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 Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 8, 2015.
The Center appointed David Perkins as the sole panelist in this matter on October 22, 2015. 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 Complainant is in the business of importing and selling wines and spirits in the United Kingdom. It also exports wines and has branches in Hong Kong, China, Singapore and Tokyo, Japan. According to Complainant's website, it was established in 1698 and is the United Kingdom's oldest wine merchant.
Complainant's BRR, BB&R and BBR.COM trade marks.
4.A.2 Complainant is the proprietor of the registered trade marks for BBR, BB&R and BBR.COM, evidence of which is exhibited to the Complaint, as follows:
Country
Registration No
Mark
Classes of Goods/Services
Dates of Application/Registration
United Kingdom
2,245,262
BBR.COM
33 and 35
Application September 11, 2000
Registered March 30, 2001
United Kingdom
2,403,969
BB&R
33 and 35
Application October 14, 2005
Registered April 28, 2006
United Kingdom
2,480,069
BBR
33 and 35
Application February 18, 2008
Registered July 25, 2008
International Registration
904,701
BB&R
33 and 35
Application/Registration
September 14, 2006
International Registration
968,537
BBR
33 and 35
Application/Registration
March 12, 2008
International Registration
1,059,850
BBR.COM
33 and 35
Application/Registration
November 15, 2010
IR 904,701 covers Australia, the European Union, China, Japan, Republic of Korea and Singapore. IR 968,537 covers Australia, the European Union, Japan, Republic of Korea, Russia and Singapore. IR 1,059,850 covers China, the European Union and the United States of America.
Complainant's domain name
4.A.3 Complainant registered the domain name on October 24, 1997. That domain name resolves to Complainant's website, a print out of which is exhibited to the Complaint. 4.B. Respondent
4.B.1 In the absence of a Response, what is known of Respondent is set out in the Complaint and its Annexes.
4.B.2 The disputed domain name was registered on January 30, 2015.
4.B.3 The disputed domain name resolves to a website offering wines and spirits and is, to all intents and purposes, identical to Complainant's website. For example, it bears Complainant's corporate name, Berry Brothers & Rudd, and even gives the same London address as Complainant. A print out of that website is exhibited to the Complaint. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The disputed domain name incorporates Complainant's BBR trade mark in its entirety, with the addition of the descriptive words "wine and spirit". Complainant's case is that the suffix is descriptive of Complainant's wines and spirits business and, consequently, the disputed domain name is confusingly similar to its BBR trade mark and domain name. Complainant cites in support the judgment of the General Court of the European Union in Sabel v. Puma (Case No.C-251/95). In that case, which concerned an allegation of trade mark infringement under Article 4(1)(b) of the Trade Mark Directive, the Court held that, in assessing likelihood of confusion under that provision, one must take into account "...the visual, aural or conceptual similarity of the marks in question...based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components." Rights or Legitimate Interests
5.A.2 Complainant says that Respondent is not licensed or otherwise authorised to use its BBR, BB&R or BBR.COM trade marks.
5.A.3 Complainant points to the way in which Respondent is using the disputed domain name - summarised in paragraph 4.B.3 above - which it characterises as an instrument of fraud.
5.A.4 Complainant also asserts that Respondent's use of the disputed domain name for that website demonstrates that the disputed domain name was registered primarily for the purpose of disrupting the business of Complainant and by uiseing the disputed domain name Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion as to the source or affiliation of the disputed domain name.
5.A.5 Under these circumstances, Complainant says that Respondent cannot demonstrate rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
5.A.6 Complainant reiterates the grounds summarised in paragraphs 5.A.3 and 4 above as demonstrating registration and use in bad faith under the circumstances listed at paragraphs 4(b)(iii) and (iv) of the Policy. 5.B. Respondent
5.B.1 As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that 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 trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(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 Respondent's rights or legitimate interests in the disputed domain name.
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 relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 It is clear that Complainant has rights in the trade marks BBR; BB&R; and BBR.COM.
6.6 The disputed domain name incorporates the BBR mark in its entirety. Addition of the suffix "wineandspirit", being the business that Complainant has been engaged in for over 300 years, only adds to the confusing similarity of the disputed domain name with Complainant's BBR, BB&R and BBR.COM trade marks.
6.7 Whether or not the country code Top-Level Domain ".co" falls to be considered in the context of assessing confusing similarity, on the facts of this case that suffix does not avoid a finding of confusing similarity.
6.8 Although the test for assessing trade mark infringement under the European Trade Mark Directive on the basis of "likelihood of confusion" is different to that applied in relation to assessing "confusing similarity" under paragraph 4(a)(i) of the Policy, there can be overlap of the factors to be taken into account in both.
6.9 Applying paragraphs 6.5 to 6.7 above, the Panel finds that the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.10 On the basis of the facts summarised in paragraphs 4.B.3 and the submissions made in paragraphs 5.A.2 and 3 above, the Panel takes the view that Respondent could not demonstrate rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy, or otherwise, and therefore Complainant's prima facie case remains unrebutted. Accordingly, Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.11 The Panel accepts Complainant's characterisation of Respondent's use of the disputed domain name for a website, which is to all intents and purposes identical to Complainant's website, as an instrument of fraud. Accordingly, the Panel has no hesitation in finding that the facts demonstrate bad faith registration and use under paragraph 4(b) of the Policy. Consequently, Complaint satisfies 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 Complainant.
David Perkins
Sole Panellist
Date: October 26, 2015
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