WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maison Albert Bichot v. Andrey Serkov, Company Name Domain Names Sale Lease Individual
Case No. D2011-1294
1. The Parties
The Complainant is Maison Albert Bichot, Beaune, France, represented by Jurispatent-Cabinet Claude Guiu, France.
The Respondent is Andrey Serkov, Company Name Domain Names Sale Lease Individual, Leningradskaya oblast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <albertbichot.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On July 28, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On July 29, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 8, 2011, the Complainant filed a supplemental filing. The Center acknowledged receipt of the supplemental filing on August 9, 2011 stating the following “the Rules for the Uniform Domain Name Dispute Resolution Policy ("Rules") provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party. Accordingly, the Panel when duly appointed will be informed of the Center's receipt of this supplemental filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the supplemental filing in rendering its decision, and whether to order further procedural steps, if any”.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2011.
The Center appointed John Swinson as the sole panelist in this matter on September 12, 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 is Maison Albert Bichot, a French winery which produces and sells wines. The winery was created in 1831. The Complainant is the registered owner of the domain name <albert-bichot.com> which was registered on December 8, 1999. The Complainant owns numerous trade marks, in various countries, for ALBERT BICHOT and MAISON ALBERT BICHOT.
The Respondent is Andrey Serkov, Domain Name Sale Lease Individual. Little information is known about the Respondent as a Response was not filed.
The disputed domain name was registered on July 21, 2010.
5. Parties’ Contentions
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant is Maison Albert Bichot. Maison Albert Bichot is the Complainant’s business and company name. The Complainant is a world-famous, French winery which produces and sells well-known wines. It was created in 1831 and for over 180 years the Complainant has forged an image of luxury and prestige, selling fine wines throughout the world. Each year, millions of bottles of wine bearing the sign ALBERT BICHOT are sold worldwide.
Further, the Complainant’s products are promoted through the website resolving from the domain name, <albert-bichot.com>, which was registered on December 8, 1999 and is owned by the Complainant.
The Complainant owns registered trade marks for ALBERT BICHOT and MAISON ALBERT BICHOT, and similar variations, in numerous countries, including:
US Trademark Registration for MAISON ALBERT BICHOT - registered October 7, 2003 (first use in commerce: 1923);
Japan Registration for ALBERT BICHOT - filed on September 22, 1980; and
Indian Trademark Registration for ALBERT BICHOT - filed March 12, 2001.
The Complainant’s trade marks and company and business name enjoy a worldwide reputation and considerable good will. The Complainant has invested substantial sums of money in developing and marketing its wines under its trade marks. Further, the Complainant has won prestigious awards and received media attention and coverage.
The disputed domain name is identical to the Complainant’s trade marks. The disputed domain name contains the exact words comprising the Complainant’s trade marks, in the same order. Consumers and Internet users will identify the disputed domain name with the Complainant’s business and company name and trade marks. With respect to the US trade mark, the addition of the word “Maison” will not alleviate any similarity between the disputed domain name and trade marks as it is a word commonly used to designate wineries. Further, the gTLD “.com” in the disputed domain name will not modify the perception of the root “albertbichot” because it is a generic extension.
It is likely that a consumer would instinctively search the disputed domain name expecting to find the institutional website of the Complainant, but will be redirected to the Respondent’s website. There will be a clear likelihood of confusion.
Also, the disputed domain name is almost identical to the Complainant’s prior-registered domain name, <albert-bichot.com>, which is currently active. The dash between the words is inconsequential. A consumer who is aware that the Complainant’s website resolves from <albert-bichot.com> may inadvertently or mistakenly mistype the domain name without the dash and be redirected to the Respondent’s website.
Rights or Legitimate Interests
There is no evidence the Respondent is commonly known by the disputed domain name or the name, “Albert Bichot”. The Respondent has no right to use the registered trade mark ALBERT BICHOT and there is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the ALBERT BICHOT trade marks.
The disputed domain name was registered on July 21, 2010. The Respondent acquired the disputed domain name after it had become available through involuntary nonpayment of renewal fees by the Complainant.
The disputed domain name appears to be used as a parking page by the Respondent. There is no evidence of the Respondent using the disputed domain name or a name corresponding to the disputed domain name with a bona fide offering of goods or services.
Registered and Used in Bad Faith
After July 21, 2011, and at the date the Complaint was filed, the dispute domain name was used as a parking page. Passive holding of a disputed domain name may constitute bad faith registration and use in certain circumstances, particularly where the Complainant’s trade mark has a strong reputation that is widely known.
Further, when registering the disputed domain name, the Respondent must have been aware of the Complainant’s trade marks, company name and business name, given the Complainant’s strong reputation throughout the world. Moreover, it can be inferred that Respondent had knowledge of the Complainant’s trade marks given the Complainant’s trade mark and business name were reproduced identically in the disputed domain name.
The website resolving from the disputed domain name contains many sedoparking addresses. On the website, “www.sedo.com”, it is clear that the company, Sedo, offers owners of domain names an opportunity to place advertisements on their website which redirects Internet users to other websites. The owners of such domain names get paid for every Internet user redirected by their website.
The Respondent is registered with Sedo and benefits commercially from this. Therefore, the Respondent used the disputed domain name for the purpose of obtaining a commercial advantage.
Also, the Respondent registered the disputed domain name in order to prevent the Complainant from using its marks in a corresponding domain name.
Prior to July 21, 2011, the disputed domain name redirected Internet users to a website offering pornographic material. This clearly tarnishes the image of prestige developed by the Complainant and constitutes bad faith (see e.g., Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Benetton Group S.p.A. v. Domain for Sale, WIPO Case No. D2001-1498). (The Panel notes that the Complainant referred to July 21, 2001 as the relevant date, however when read in the context of the surrounding submissions, the Panel has assumed that the Complainant intended to refer to July 21, 2011).
Therefore, the Respondent intentionally attempted to attract Internet users to his website in order to obtain a financial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location.
Finally, the Respondent has previously been involved in a very similar case in which the Respondent was found to have registered and used another domain name in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
The Respondent did not file a response. While this does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default. However, in accordance with paragraph 4 of the Policy, the Complainant must still support its assertions with actual evidence in order to succeed. (See e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).
A. Procedural Issues
The Complainant filed supplementary material. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these filings. The Panel finds that the information contained in the Supplemental Filing adds nothing to the Complaint and will not impact the finding of the case. As such, the Panel will not consider this information.
B. Identical or Confusingly Similar
The Complainant owns several registered trade marks comprising or incorporating ALBERT BICHOT. The disputed domain name is <albertbichot.com>. It is therefore clear that the disputed domain name and the Complainant’s trade marks are confusingly similar, if not identical, and as such, the Complainant must necessarily succeed on the first element of the Policy.
The Panel also finds that the Complainant has unregistered trade mark rights in ALBERT BICHOT. It is clear that the term has become a distinctive identifier associated with the Complainant and its goods. Given the length of use, length and amount of sales under the trade mark, marketing activities, awards and media recognition, “secondary meaning” has been established (see Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123).
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name in order to succeed. Paragraph 4(c) of the Policy provides a number of ways in which a respondent may then demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. (See Section 5.A, above). Given the Respondent did not file a Response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.
Specifically, it cannot be said that the Respondent can demonstrated a bona fide use or, intention to use, the disputed domain name or name corresponding to the disputed domain name in connection with an offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. This is evidenced by the fact that the disputed domain name has apparently been used to offer pornographic material and, more recently, to display a pay-per-click (“PPC”) parking page.
Generally, panels have recognized that use of a domain name to post PPC links may be permissible in some circumstances, however, such use will not of itself give rise to rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use” of the disputed domain name. Permissible use may arise where the disputed domain name is comprised of dictionary or ordinary words and the PPC links genuinely relate to the meaning of the words comprising the domain name, but this is not the case here. In this instance, the Respondent is attempting to take advantage of the trade mark value of ALBERT BICHOT, given there is no meaning attributable to the term other than that associated with the Complainant. (See e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437; Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652).
Further, the provision of pornographic material in these circumstances, where the disputed domain name is so similar to the Complainant’s well-known trade marks, clearly could not confer rights or legitimate interests on the Respondent.
As such, the Complainant has satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been used and registered in bad faith by the Respondent.
It appears that the Respondent has recently operated a PPC website from the disputed domain name and while such use does not constitute bad faith in and of itself, here, the circumstances are such that bad faith registration and use is made out.
Relevantly, the Panel finds that the Complainant’s trade marks are sufficiently well-known that the Respondent, most likely, was aware of the Complainant’s trade marks when registering the disputed domain name. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.)
Therefore, given the strong reputation and fame of the ALBERT BICHOT brand, trade marks and company, it appears that the Respondent intentionally selected and used the disputed domain name in order to create confusion in the mind of Internet users as to the association between the disputed domain name and the Complainant’s trade marks and thereby generate PPC revenue. Such conduct constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. (See e.g., BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQuest.com, Inc., WIPO Case No. D2009-1493).
Further, the Panel notes that it is asserted by the Complainant that the disputed domain name, at one time, resolved to a website displaying pornographic materials. If this is the case, given the strong reputation of the Complainant’s brand, and the similarity between the disputed domain name and the Complainant’s trade marks, such use of the disputed domain name tarnishes the reputation of the Complainant’s brand and constitutes bad faith (see e.g. Ferrero S.p.A. v. Alexander Albert W. Gore, supra; Benetton Group S.p.A. v. Domain for Sale, supra).
The fact that the Respondent did not file a Response is also indicative of bad faith.
Finally, the Panel the Panel notes that in Intel Corporation v. The Pentium Group, supra, the panel went so far as to state, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. The Panel relies on this statement as further support for its conclusion that the disputed domain name was registered and used in bad faith. (See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
The Panel does not make a finding in relation to whether the Respondent registered the disputed domain name in order to prevent the Complainant from using its trade marks in a corresponding domain name. The Panel acknowledges that registering a lapsed domain name where the prior registrant owned trade mark rights in the lapsed domain name may be evidence of bad faith, and specifically, of bad faith pursuant to paragraph 4(b)(ii) (see e.g. Lynne Russell v. Kenneth Young, WIPO Case No. D2002-1133). However, here, the Complainant has merely asserted that the Respondent registered the disputed domain name when it became available from the Complainant’s involuntary non-payment of renewal fees and in the absence of further evidence supporting this assertion, the Panel cannot make a finding of bad faith on this basis.
In any event, paragraph 4(a)(iii) of the Policy is satisfied.
On October 14, 2011, the Panel became aware that the disputed domain name appeared to be registered to a different individual to that at the time of filing (i.e., the named Respondent is no longer the listed owner of the disputed domain name) and there has also been a change of registrar. Accordingly, the Panel issued a Procedural Order on October 17, 2011 seeking clarification from the relevant registrars. A receipt acknowledgment was received from the previous registrar, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, on October 18, 2011, but no comments or clarification was submitted. No response was received from the gaining registrar, TurnCommerce, Inc. DBA NameBright.com.
As such, the Panel finds there has been a material breach of paragraph 8(a) and (b) of the Policy and in the absence of a response from the registrars clarifying or resolving the issue (or indeed any Response at any stage from the defaulting Respondent), and noting that these proceedings are an expedited process, the Panel issues its Decision on the merits of the case and in accordance with the preceding reasons. Although the evidence of record is not entirely clear, given that these breaches apparently occurred not only after the proceedings were filed and formally commenced, but after the Panel had been appointed, the Panel would find it incredible that the new gaining registrant and registrar could not have been aware (and in any event, certainly should have been) that the disputed domain name was being transferred in breach of the UDRP. Such finding only serves to re-inforce the Panel’s finding of bad faith in this particular instance.
The Panel trusts that the relevant registrar accrediting agency in this case will take the appropriate steps to investigate or facilitate implementation of the Panel’s issued Decision in accordance with the relevant provisions of the UDRP should such a need arise.
The Panel requests that the Center bring the Decision to ICANN’s attention in order to ensure this issue is resolved and the Decision is implemented.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <albertbichot.com> be transferred to the Complainant.
Dated: November 3, 2011