World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maison Louis Latour v. Jos Beeres Wijnkoperij

Case No. DNL2011-0074

1. The Parties

The Complainant is Maison Louis Latour of Beaune, France, represented by Inlex IP Expertise, France.

The Respondent is Jos Beeres Wijnkoperij of Groningen, The Netherlands, represented by Trip Advocaten & Notarissen, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <louislatour.nl> (the “Domain Name”) is registered with SIDN through Argeweb.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 5, 2011, SIDN 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 filed an amendment to the Complaint on December 7, 2011. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2011. In accordance with the Regulations, article 7.1, the due date for Response was December 29, 2011. The Response was filed with the Center on December 29, 2011.

On January 3, 2012, SIDN commenced the mediation process. On February 2, 2012, SIDN extended the mediation process until March 3, 2012. On February 17, 2012, SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Willem J.H. Leppink as the panelist in this matter on March 5, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Domain Name was registered by the Respondent on March 8, 2010.

The Complainant owns various trademark registrations with relevance for the Benelux. The most relevant trademark registration for the word mark LOUIS LATOUR, is the International Registration 486288, registered on April 27, 1984 (the “Trademark”), invoking the priority of a French national registration filed on December 20, 1983. The Trademark is registered for inter alia wines (class 33), and also designates the Benelux.

5. Parties’ Contentions

A. Complainant

The Complainant has submitted a lengthy Complaint with several less relevant allegations. Insofar as relevant for this matter the Complainant contends the following.

The Complainant has rights in a trademark protected under Dutch law, as it owns various trademark registrations that grant protection in the Benelux, including the Trademark.

The Domain Name is in essence identical to the Trademark as the addition of “.nl” is irrelevant.

The Respondent has no rights to or legitimate interests in the Domain Name as the name of the Respondent is Jos Beeres Wijnkoperij. The Respondent uses the Domain Name to attract traffic to its own website “www.josbeeres.nl”.

The Complainant has submitted a screenshot of the website “www.louislatour.nl” to which the Domain Name resolves and which website provides information about the Louis Latour wines that are offered by the Complainant. As soon as an Internet user clicks on the link on this webpage, the Internet user is redirected to the website of the Respondent “www.josbeeres.nl” where the Internet user can purchase Louis Latour wines, but also other wines sold by the Respondent.

The bad faith of the Respondent is clear as the website to which the Domain Name resolves is the website of the Respondent. The bad faith of the Respondent is also evidenced by the use of the Domain Name as a window to its own website “www.josbeeres.nl”. Furthermore the Respondent does not have authorization from the Complainant to use the Complainant’s name to promote its wine.

B. Respondent

The Respondent has submitted a lengthy Response with several less relevant defenses. Insofar as relevant for this matter the Respondent contends the following.

The Respondent is a legitimate reseller of the Louis Latour wines.

There is no confusion as it is clear from the provided screenshot that the website “www.louislatour.nl” to which the Domain Name resolves is a website of the Respondent. The Respondent has added text to the website making it clear that the Respondent is not affiliated to the Complainant.

The Respondent has a legitimate interest in using the Domain Name as it is a reseller.

The Respondent does not agree with Complainant that it is using the Domain Name to attract traffic to its website “www.josbeeres.nl”. The website connected to the Domain Name has never been linked to the home page of “www.josbeeres.nl”, but always to a specific subpage of the latter website where only Louis Latour wines are displayed for sale.

From a cost-efficiency perspective, it could not be demanded from the Respondent that it would set up a separate individual web shop under the Domain Name. The fact that an Internet user, when arriving on the subpage of the general web shop containing only Louis Latour wines, has the opportunity to view other wines if and when he decides to search for those other wines by clicking on several more buttons, does not detract from the conclusion that the Respondent has a legitimate interest in the Domain Name and has always been using the Domain Name in a bona fide manner.

6. Discussion and Findings

According to article 10.3 of the Regulations, a complaint shall be granted unless the panel considers it to be without basis in law or fact.

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:

A. the disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1 sub a (II) of the Regulations; and

B. the respondent has no rights to or legitimate interests in the disputed domain name; and

C. the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has sufficiently demonstrated that it has rights in the Trademark and that the Domain Name is identical to the Trademark. This has also not been contested by the Respondent.

The Complainant has therefore established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

The Respondent has undisputedly asserted that it is a reseller of Louis Latour wines.

Whether the Respondent has registered and/or is using the Domain Name in connection with the bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (regarding the domain name <okidataparts.com>) which decision has been rendered under the Uniform Domain Name Dispute Resolution Policy (UDRP) and which decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 (regarding the domain name <deepsonspecialist.nl>).

The issue before the Panel, then, is whether the Respondent’s offerings may be characterized as bona fide.

To be bona fide, the offering must meet several requirements which have been referred to in the
afore-mentioned decisions. Those include, at minimum, the following:

- the respondent must actually be offering the goods or services at issue. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);

- the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products);

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

In this case, the core question is whether the Respondent is using the site to sell only the trademarked goods.

The Panel has reviewed the provided screenshots of both the website connected to the Domain Name and the subpage “www.josbeeres.nl/wijnen_josbeeres/louislatour” to which the link on the first website redirects. The Panel has also reviewed the current versions of both web pages.

The subpage shows on the middle of the page the various Louis Latour wines and on the left hand side a column which lets a visitor select all the various wines the Respondent offers by e.g. color, country, taste and price.

The Panel is of the view that by doing this, it cannot be said that the Respondent is using the site to only sell the trademarked goods. The site makes it relatively easy for Internet users to switch to another product than the wine as produced by the Complainant.

This circumstance indicates that the Respondent is using the Trademark in the Domain Name also to divert Internet users to competitive goods, which implies that the Domain Name for purposes of the Regulations is not used for the bona fide offering of goods or services.

Therefore the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.

The Complainant has thus established the second element of article 2.1 of the Regulations.

C. Registered or Used in Bad Faith

The Panel refers to its consideration under B.

In light of those considerations the Panel finds that the Domain Name is used by the Respondent for commercial gain by intentionally attracting Internet users to its website where the Respondent is also offering goods of the Complainant’s competitors, through trading off the goodwill of the Trademark and the likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website under the Domain Name. This constitutes evidence of bad faith registration and use in accordance with article 3.2 sub d of the Regulations.

Therefore, the Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <louislatour.nl> be transferred to the Complainant.

Willem J.H. Leppink
Panelist
Dated: March 13, 2012

 

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