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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taittinger Compagnie Commerciale et Viticole Champenoise v. James MD

Case No. D2019-3177

1. The Parties

The Complainant is Taittinger Compagnie Commerciale et Viticole Champenoise, France, represented by Sodema Conseils S.A., France.

The Respondent is James MD, United States of America.

2. The Domain Name and Registrar

The disputed domain name <taittinger-fr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an amended Complaint on January 9, 2020.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on January 21, 2020. In accordance with paragraph 5 of the Rules, the due date for Response was February 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020.

The Center appointed Chiang Ling Li as the sole panelist in this matter on February 25, 2020. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a French company in the business of producing champagne wine and is based in Reims, France. Since its foundation in 1734, the Complainant has been a leading producer of champagne wine. In 2014, the Complainant reported a sale of 5.8 million bottles at an export rate of 73 percent.

The Complainant is the owner of the European Union Trademark registration TAITTINGER (registration number 008943433), filed on March 10, 2010, and registered on October 13, 2016, in classes 32 and 33. The Complainant also has registered domain names reflecting its marks: (1) <taittinger.com> created on July 3, 1997, and is used as the Complainant’s website; and (2) <taittinger.fr> created on December 24, 1997, and used for some email addresses of the Complainant in its operations and communications with clients.

The disputed domain name was registered on December 13, 2019, according to the WhoIs records maintained by the Registrar. The Complainant claims that between December 13, 2019 and December 18, 2019, the disputed domain name was used to send several emails impersonating an employee of the Complainant to one of the Complainant’s clients and business contacts in furtherance of a fraudulent scheme.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is nearly identical and confusingly similar to its mark TAITTINGER and domain names <taittinger.com> and <taittinger.fr>. According to the Complainant, the disputed domain name is an attempt by the Respondent to benefit from the Complainant’s mark and domain names by a discreet and likely error of spelling. The Complainant argues that the inclusion of “-fr” in the disputed domain name following “taittinger” does not affect the pronunciation and visual appearance of the disputed domain name and does not dispel the confusing similarity between the disputed domain name and the Complainant’s marks. Instead, the inclusion of “-fr” may be perceived by the public as an indication of a subdivision within the Complainant’s export team.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent has not been licensed, or otherwise been permitted in any respect, by the Complainant to use the mark TAITTINGER, the Complainant’s domain names, or any other similar variation. According to the Complainant, the Respondent has used the disputed domain name to impersonate an employee of the Complainant (“[...]@taittinger-fr.com”) for purposes of perpetuating a fraudulent scheme involving requesting payment of false invoices. The Complainant asserts that the unfair use of the disputed domain name misleads and diverts clients of the Complainant and risks tarnishing the TAITTINGER mark.

In view of the foregoing, the Complainant reasons that the Respondent did not apply for the disputed domain name to use it in good faith. To the contrary, the Complainant contends that the disputed domain name has been used by the Respondent in bad faith and intentionally to create confusion with the Complainant’s mark and domain names and to realize a profit by means of a fraudulent scheme. The Complainant further notes that the first fraudulent email was sent on December 13, 2019, the day that the disputed domain name was registered, and further demands for payment of the false invoices were made within the following five days. The Complainant further submits that the disputed domain name was used by the Respondent to the detriment of the Complainant, its clients, and its business contacts as a third party has entered its network and intercepted its emails.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4 of the Policy requires the Complainant to establish that:

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it registered the TAITTINGER mark and domain names before the Respondent’s registration of the disputed domain name. The Respondent did not reply to the Complainant’s contentions.

The disputed domain name is identical with the Complainant’s mark TAITTINGER with the mere addition of “-fr” which is easily taken to refer to France. As highlighted in Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, the inclusion of “-fr” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The incorporation of the Complainant’s trademark TAITTINGER in the disputed domain name is considered sufficient to make a finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has shown that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademark.

In the absence of the Respondent’s formal response to the Complaint, the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Further, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13, “[p]anels have categorically held that the use of a domain name for illegal activity”, such as the phishing scheme utilized by the Respondent to impersonate an employee of the Complainant, “can never confer rights or legitimate interests on a respondent”.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

However, this list is not meant to be exhaustive and it does not limit a finding of bad faith to only these situations. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As noted in Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230, the prevailing objective of the Policy is to limit the abusive registration of domain names for purposes of seeking profit or the exploitation of the trademark of another.

For the reasons discussed under this and the preceding headings, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The records presented to the Panel strongly demonstrates that the Respondent was aware of the Complainant’s mark when registering the disputed domain name. The Complainant’s mark and signature block were even replicated by the Respondent in the fraudulent emails sent to the Complainant’s client. In the Panel’s assessment, through the registration and use of the disputed domain name, the Respondent takes advantage of the goodwill and reputation of the Complainant, its name, and its mark.

In the absence of any explanation from the Respondent, the Panel concludes, on a balance of probabilities, that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of 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 <taittinger-fr.com> be transferred to the Complainant.

Chiang Ling Li
Sole Panelist
Date: March 2, 2020

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