WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orlando Wyndham Group Pty. Limited v. Jacob Creek
Case No. D2002-0728
1. The Parties
The Complainant is Orlando Wyndham Group Pty. Limited, a South Australian Corporation with its principal place of business in Adelaide, South Australia, Australia. The Complainant is represented by its legal officer, Ms. Nicole Botsman.
The Respondent is Jacob Creek of PO Box 28, San Pedro, Ambergris Caye, Belize. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <jacobscreek.com>.
The domain name is registered with Network Solutions Inc. of Herndon, VA, United States of America (the "Registrar"). The domain name was first registered on January 9, 1998.
3. Procedural History
The Complaint submitted by the above Complainant was received on August 2, 2002 (email), and August 6, 2002 (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center").
On August 2, 2002, a request for Registrar verification was transmitted by the Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name <jacobscreek.com> is registered with it.
- Confirm that the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
- Indicate the current status of the domain name.
- Indicate the specific language of the registration agreement as used by the registrant for the domain name.
- Indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising form the use of the disputed domain name.
By email dated August 7, 2002, the Registrar advised the Center as follows:
- It is the Registrar of the domain name registration <jacobscreek.com>.
- Belize Domain Services is shown as the administrative and billing contact. Belize Domain Services had the same address (a Post Office box) as that given for the Respondent. A telephone number was also given.
- The Registrar will act in accordance with Paragraphs 3 and 7 of the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (the "Policy").
- The language of the Registration agreement is English.
- The domain name registrant has submitted his Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.
The Registrar did not appear to have answered the other requests from the Center.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy (the "Rules"), the Center on August 9, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint. The Center’s attempts to email both the Respondent and the Administrative Contact were unsuccessful. The Complainant had also tried unsuccessfully to email both of them on June 24, 2002.
The Complainant elected to have its Complaint resolved by a sole panelist: It has duly paid the amount required of it to the Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No response was filed by the Respondent and a Notice of Respondent’s Default was sent by the Center on September 4, 2002.
The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On September 13, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is September 27, 2002.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainant is the proprietor of registered trademarks for the name ‘Jacob’s Creek’ in classes 32 and 33 in numerous countries in Europe, Asia and Oceania as well as in the United States, Venezuela, Brazil, Trinidad and Tobago and Canada.
The Complainant produces and has produced wine from 1976 in Australia under the label ‘Jacob’s Creek’. It exports a range of its wines to 66 different countries world-wide. It began to export wine in 1986. In the year 2001, for example, it exported 4,577,789 9 litre cases at an estimated value (FOB) of $A269,865,700. Its brand is the top selling Australian wine in the United Kingdom, New Zealand, Ireland, Scandinavia and Asia.
The ‘Jacobs Creek’ brand has international exposure through various sponsorships, including the British Opera and Wimbledon in the United Kingdom. Its wines have achieved international success and have been favourably reviewed in various journals.
The Complainant owns several domain names incorporating the words ‘Jacob’s Creek’ – notably <jacobscreek.com.au>. The Complainant has spent large sums on promotion and advertising of the ‘Jacob’s Creek’ brand in various countries.
The Complainant has been unable to obtain any evidence that suggests the existence of a person called ‘Jacob Creek’ in Belize or elsewhere.
The disputed domain name is not in operation.
5. Parties’ Contentions
The disputed domain name is identical to the trademarks in which the Complainant has rights. The lack of an apostrophe is not significant, since domain names are not usually permitted to include punctuation.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has given him none.
The Complaint asserts that the facts of this Complaint are very similar to those found in Laurent-Perrier SA and Champagne Laurent-Perrier SA v. Laurentperrier.com, Mr L Perrier, Laurent Jacques Perrier and M. L. Perrier, WIPO Case No. D2000-0396, (Laurent-Perrier).
The Complainant has been unable to discover any evidence of the Respondent’s use of or intention to use the domain name in connection with a legitimate offering of goods or services. The research undertaken by the Complainant includes attempts to ascertain whether any trade mark has been registered by the Respondent or whether any business is conducted by the Respondent under the name JACOB CREEK or JACOB’S CREEK. The domain name in dispute is not in operation. In Laurent-Perrier the Panel concluded that "the sites are not in operation and as a result neither the Respondent nor their representatives are making a bona fide offering of goods or services on their sites."
The Complainant has not been able to obtain any evidence that indicates the existence of a person called "JACOB CREEK" a business operated under the name "JACOB’S CREEK" or any other organisation conducted by the Respondent using the name JACOB’S CREEK in Ambergris Caye, Belize or elsewhere.
Accordingly, in the absence of any evidence to the contrary the Complainant asserts that there is no such individual, entity or organisation.
The Complainant asserts that the domain name was registered to prevent the Complainant as the owner of the trade mark JACOB’S CREEK (and other associated trade marks) from reflecting its mark in a corresponding domain name. The Complainant also asserts based on the findings of the Panel in Laurent-Perrier that the Respondent or someone closely affiliated with the Respondent has engaged in a pattern of such conduct.
In Laurent-Perrier, the registrants purported to be a "Mr. L. Perrier", "Laurent Jacques Perrier" and "M. L. Perrier" and the domain names in issue were <laurentperrier.com> and <Laurent-perrier.com>. The contact details provided for the registrants were Belize Domain Services of PO Box 28, San Pedro Town, Ambergris Caye, Belize and e-mail address, "firstname.lastname@example.org" or "Belize@Visto.com". These are the same contact details as provided for the Respondent in this Complaint.
In relation to establishing a pattern of conduct, in Laurent-Perrier it was accepted by the Panel that "..Belize Domain Services now appears as the Registrant of several names of potential commercial importance, in particular, "thepru.com". It is evident that the Respondents, or those affiliated with the Respondents (ie Belize Domain Services) have been ‘involved’ in the ‘transfer’ of the names and that a pattern exists where these names have been transferred from Mr. Colman (the Respondent’s representative) to services with addresses in the Bahamas and Belize."
The Complainant also asserts that for the reasons set out below the domain name is registered in bad faith:
- the Complainant has been unable to find any evidence of the existence of Mr. Jacob Creek;
- the contact details provided for the Belize Domain Services are invalid;
- there is no evidence available to the Complainant indicating the Respondent has a bona fide use for the domain name and the Respondent is not using the domain name;
- it is likely that the Respondent had actual or constructive notice of the existence of the JACOB’S CREEK brand, products, trade marks and web site operating at "jacobscreek.com.au"; and
- as established in Laurent-Perrier there is evidence of a pattern of conduct involving the speculative registration of domain names by those closely involved with the Respondent.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The disputed domain name is identical to the Complainant’s registered trademarks. The Panel considers the first criterion proved. As stated by the Complainant the absence of the apostrophe in the domain name is irrelevant.
As to the second criterion, the Complainant gave the Respondent no legitimate rights or interest in respect of the domain name. That fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent’s rights or legitimate interest to a domain name. None of these have been demonstrated.
As contended in the Complainant’s submission, which the Panel accepts;
(a) There is no evidence of the Respondent’s use or intention to use the domain name in connection with a legitimate offering of goods and services.
(b) It is doubtful whether any individual exists in Belize called "Jacob Creek".
(c) The Laurent Perrier case suggests a pattern of conduct by persons associated with Belize Domain Services (the Administrative Contact in this case) to utilise domain names representing famous wines without any right to do so. The Panel considers the second criterion proved.
As to bad faith registration and use, the Panel considers these proved for the reasons:
(a) The Complainant’s mark is distinctive and relates to a wine readily available in many countries.
(b) There is no evidence of bona fide use of the name.
(c) The lack of a street address for the Respondent (Post Office Box address – no physical address) and the elusiveness of his administrative contact (Belize Domain Services).
(d) The suspicion of the same pattern of conduct as described in the Laurent Perrier decision.
(e) The lack of any development of a website or indeed any information when the disputed domain name is entered on the internet.
The third criterion is therefore proved and the Complainant must succeed. The fact that Belize is not one of the countries to which the Complainant exports its wines does not assist the Respondent in the matter of bad faith registration. The name is highly distinctive and the combination of the bad faith factors outlined above provides convincing evidence of bad faith registration and use.
For the foregoing reasons, the Panel decides:
(a) That the domain name <jacobscreek.com> is identical to the trademark to which the Complainant has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <jacobscreek.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: September 23, 2002