WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maison Bouchard Père et Fils v. Bouchardpereetfils.Com/ Domain Administration
Case No. D2007-1769
1. The Parties
The Complainant is Maison Bouchard Père et Fils, of Beaune, France, represented by Ernest Gutmann - Yves Plasseraud S.A.S, France.
The Respondent is Bouchardpereetfils.Com/ Domain Administration, of Canada.
2. The Domain Name and Registrar
The disputed domain name <bouchardpereetfils.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007, naming Bouchardpereetfils.com as Respondent. On December 4, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On December 11, 2007, Nameview Inc. transmitted by email to the Center its verification response stating that Domain Administration is listed as the registrant and providing contact details. Nameview Inc. also stated that the expiry date of the domain name was February 9, 2008 and responded affirmatively to the Center’s request for confirmation that the domain name will remain on registrar lock during the pending administrative proceeding, in light of paragraph 220.127.116.11 of the ICANN Expired Domain Deletion Policy at “http://www.icann.org/registrars/eddp.htm”:
“18.104.22.168 In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted”.
In response to an invitation by the Center to amend the Complaint to reflect the different registrant information, the Complainant filed an amendment to the Complaint on December 17, 2007, naming Domain Administration as an additional Respondent. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. On December 20, 2007, the Respondent’s agent responded informally by email to the Center and to the Complainant, in terms described below. The proceedings were suspended by consent between January 4, 2008 and February 1, 2008. The extended due date for Response was February 4, 2008. The Respondent did not submit any formal Response. Accordingly, the Center notified the Respondent’s default on February 5, 2008.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 14, 2008. 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.
On February 27, 2008, due to exceptional circumstances, the time for the Panel to forward its decision to the Center was extended to March 3, 2008.
4. Factual Background
The Complainant is a long-established French wine company, trading since 1731 under the trademark BOUCHARD PERE & FILS, which it has registered in many countries, including in France under No. 1 553 411, filed on October 3, 1989, and in Canada, under No. LMC 387313, filed on March 16, 1990.
The domain name with which this proceeding is concerned was registered with Nameview, Inc. on February 9, 2006, for a period of two years, using a privacy service whereby the published registrant, administrative and technical contact names were given as BOUCHARDPEREETFILS.COM c/o Whois Identity Shield, of Vancouver, Canada.
The domain name resolves to a web page entitled “Welcome to Bouchardpereetfils”, displaying links to categories such as “Dating”, “Cars”, “Entertainment”, “Education”, “Jobs” and “Travel” and also offering a search facility. If “Wine” is searched, there appears another page under the same title, with links to wine merchants selling wines online.
5. Parties’ Contentions
The Complainant seeks transfer to it of the domain name because the domain name is identical or confusingly similar to the Complainant’s BOUCHARD PERE & FILS TRADEMARK; and because the Respondent has no rights or legitimate interests in the domain name, which was registered and is being used in bad faith.
The Respondent did not submit a formal Response to the Complainant’s contentions. However, in its email of December 20, 2007, the Respondent’s agent said its contact information was used fraudulently, since it was unaware, prior to receiving the Complaint, that its contact information was listed as the registrant of the domain name. The Respondent expressed willingness to transfer the registrant and contact information by changing it to that of the Complainant or otherwise to satisfy the Complainant. The email ended: “We recognize their right to this domain and would like to help in any way to rectify the wrong that was done to their name”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires the complainants to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered in the name of the Respondent 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
This is another regrettable case of identity theft, concealed from the victim, whose identity was stolen, by the use of a privacy service until the filing of the Complaint. The innocent victim, the Respondent, has consented to the transfer of the domain name to the Complainant.
In DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty, WIPO Case No. D2007-1431 (November 7, 2007), also a case of identity theft, this panelist noted that some panels have foregone the traditional analysis under the Policy and ordered transfer, on the footing that where the Respondent consents to transfer, no dispute exists: Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., NAF Case No. FA133625: Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Case No. FA 212653: Disney Enterprises., Inc. v. Morales, NAF Case No. FA 475191: Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195.
In other apparent consent cases, panels have examined whether, on the evidence, the three elements of Policy are satisfied, particularly where there may be some reason to doubt the genuineness or effectiveness of the consent: e.g. Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745.
In the present case a brief analysis will be undertaken.
A. Identical or Confusingly Similar
The domain name is virtually identical to the Complainant’s mark. The Complainant has established this element.
B. Rights or Legitimate Interests
The Respondent has no rights or interest in the disputed domain name, having been unaware of it until receipt of the Complaint. The Complainant has established this element.
C. Registered and Used in Bad Faith
In the circumstances of this case, there can be no question of impugning the good faith of the Respondent, who appears to have had nothing to do with the registration or use of the domain name and was unaware of it until receipt of the Complaint.
Whoever registered the domain name undoubtedly did so in bad faith and with knowledge of the Complainant’s rights. The content of the website to which the domain name resolves demonstrates that it is being used in bad faith, intentionally to attract, for commercial gain, Internet users to the website by creating the likelihood of confusion with the Complainant’s mark as to the source of the website.
The Complainant has established that the disputed domain name was registered and is being used by someone in bad faith. Since the Respondent has been the victim of identity theft, this finding should in no way be taken as a reflection on the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bouchardpereetfils.com>, be transferred to the Complainant.
Alan L. Limbury
Dated: March 3, 2008