WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alain Vauthier, Micheline Vauthier and Catherine Vauthier v. Darren Weiskop, Central Equity Limited
Case No. D2014-1291
1. The Parties
The Complainants are Alain Vauthier, Micheline Vauthier and Catherine Vauthier of Saint-Emilion, France, represented by Inlex IP Expertise, France.
The Respondent is Darren Weiskop, Central Equity Limited of Southbank, Victoria, Australia, represented by Central Legal, Australia.
2. The Domain Name and Registrar
The disputed domain name <ausone.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2014. On July 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2014, 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 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 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2014. The Response was filed with the Center on August 11, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on August 21, 2014. 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 Complainants are individuals who jointly own the wine estate Chateau Ausone, which produces a Premier Grand Cru Class Saint-Emilion appellation Bordeaux. The Complainants market their wine under the trademark CHATEAU AUSONE, and have registered the mark in numerous countries around the world, including Australia, where the Respondent is located. The Complainants’ CHATEAU AUSONE mark was registered in Australia on January 23, 1998.
The Respondent is a developer of residential properties in Australia. Residential properties developed by the Respondent include the SouthbankONE and MelbourneONE apartment towers. The Respondent registered “Australia One Apartments” as a business name in October 2009, and acquired the disputed domain name <ausone.com> through Sedo GmbH in 2014, for the sum of USD 7,000.1 The disputed domain name currently resolves to a parking page provided by Sedo, with links to various third-party sites, some of which are related to wine. There are also, among others, links to third-party sites providing information on Vehicle Identification Numbers, commonly known by the acronym “VIN”. “vin” also is the French word for wine.
5. Parties’ Contentions
The Complainants submit that the disputed domain name should be considered as identical or confusingly similar to the CHATEAU AUSONE mark. The Complainants maintain that “ausone” is the essential and distinctive element of the mark. According to the Complainants, the term “chateau”, which means “castle” in English, is commonly used in relation to wines. The Complainants assert that CHATEAU AUSONE is a famous Bordeaux wine, one of only four Premier Grand Cru Class Saint-Emilion wines, and has been produced for close to four centuries under the AUSONE name.
The Complainants maintain that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants explain that the Respondent is in no manner affiliated with the Complainants, has not been authorized to use the AUSONE mark, and is not commonly known by the name AUSONE. The Complainants further contend that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainants submit that the Respondent is using the disputed domain name with a pay-per-click parking site containing hyperlinks directly related to the field of wines.
In light of the foregoing, the Complainants contend that the Respondent registered and is using the disputed domain name in bad faith. The Complainants assert that the CHATEAU AUSONE trademark is used worldwide, a fact the Complainants submit the Respondent was aware of when registering the disputed domain name. The Complainants assert that the Respondent is attempting to exploit and profit from the notoriety of the CHATEAU AUSONE mark, using the disputed domain name to divert Internet consumers to the Respondent’s website, which contains links to online shops of the Complainants’ competitors. According to the Complainants, this demonstrates that the Respondent is intentionally seeking to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark.
The Respondent argues that the disputed domain name is neither identical nor confusingly similar to the Complainants’ mark. The Respondent submits that it is an established developer of residential properties in Australia. The Respondent provides documentation of the purchase of the disputed domain name on March 4, 2014 for the sum of USD 7,000. The disputed domain name was acquired, according to the Respondent, for use with a residential development - an apartment tower that would be called AustraliaONE. According to the Respondent, the disputed domain name consists of “aus”, a commonly used acronym for Australia, followed by the word “one”. The record reflects the Respondent’s registration of the business name “Australia One Apartments” on October 28, 2009, and the Respondent asserts that the domain name <ausone.com.au> also was registered at that time. The Respondent further submits that it later registered the domain names <australiaoneapartments.com>, <australiaoneapartments.com.au>, <australiaonetower.com>, and <australiaone.com.au> on March 31, 2014, following the acquisition of the disputed domain name.
The Respondent concurs with the Complainants’ averment that the word “chateau” is commonly used with wines, and submits that for this reason the disputed domain name <ausone.com> when used with the Respondent's trade will not be confused with the Complainants’ CHATEAU AUSONE mark. As further indication that the disputed domain name is a combination of the acronym AUS and the word “one”, the Respondent points to its the prior development of two other apartment towers in Melbourne, Australia – SouthbankONE and MelbourneONE – and of the Respondent’s registration and use of the corresponding domain names <southbankone.com>, <southbankone.com.au>, <melbourneone.com>, and <melbourneone.com.au>.
In view of the foregoing the Respondent asserts that it has rights and legitimate interests in the disputed domain name. The Respondent denies any bad faith respecting the registration and use of the disputed domain name, averring that it did not acquire the disputed domain name in order to sell it to the Complainants, to create confusion with the Complainants’ mark, or otherwise seek to take advantage of or profit from the Complainants’ rights in the mark.
6. Preliminary Issues
A. Multiple Complainants
Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985. A number of UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against a respondent, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 and panel decisions cited therein.
The Complainants are joint owners of the Chateau Ausone wine estate, and the Complaint clearly sets forth a common grievance against the Respondent affecting the Complainants’ rights and interests in a similar fashion. In such circumstances the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single Complaint. See Alain Vauthier, Micheline Vauthier and Catherine Vauthier v. OM Solutions Co. Ltd., WIPO Case No. D2013-1391.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <ausone.com> is confusingly similar to the CHATEAU AUSONE mark, in which the Complainants have demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainants’ mark for purposes of paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainants have made a prima facie showing. The disputed domain name is confusingly similar to the Complainants’ mark, and resolves to what appears to be a pay-per-click parking page containing links to commercial third-party sites, including several such sites related to wine.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent submits that it has established rights or legitimate interests in the disputed domain name, arising from demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services – namely, the “Australia One Apartments”. At noted above, it appears the Respondent registered the business name Australia One Apartments in October 2009, together with the domain name <ausone.com.au>. More recently, the Respondent purchased the disputed domain name in March 2014, and also registered additional domain names corresponding to the name Australia One Apartments.
Whether the foregoing without more is sufficient to show demonstrable preparations by the Respondent to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services, as the Respondent claims, is less than clear. The Respondent has submitted no evidence of an ongoing apartment project or of advertising or promotions for a future residential development to be known as “Australia One”. In addition, the disputed domain name continues to resolve to a parking page, which has no apparent connection with the Respondent’s trade. In any event, in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. However, it is paramount that panels decide cases based on the very limited scope of the Policy. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainants have not satisfied their burden of demonstrating that the Respondent registered the disputed domain name in bad faith. As noted above, the record reflects that the Respondent is an Australia-based developer of residential properties. The Respondent registered the business name Australia One Apartments in October 2009, and registered the domain name <ausone.com.au> at or near that time. AUS is a recognized acronym for Australia. The Respondent later acquired the existing domain name <ausone.com> from its previous registrant in March 2014, and then registered additional domain names that correspond to Australia One Apartments. The record reflects that the Respondent has built and operates two existing apartment towers in Melbourne known as MelbourneONE and SouthbankONE, respectively, suggesting an identifiable naming protocol also reflected in the disputed domain name.
These circumstances lend credulity to the Respondent’s claim that the disputed domain name was not acquired in order to trade on the Complainants' CHATEAU AUSONE mark, but rather in keeping with the Respondent’s prior naming protocol (i.e., MelbourneONE and SouthbankONE). in this instance combining the acronym AUS with the word “one”. The Panel thus is of the view that the Complainant has failed to demonstrate that the Respondent more likely than not acquired the disputed domain name in in order to take exploit or profit from of the Complainants’ trademark rights, notwithstanding the notoriety of the
Accordingly, for the reasons summarized above, the Panel finds that the Complainants have failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
William R. Towns
Date: September 6, 2014
1 While not determinative as to the Respondent’s rights or legitimate interests or bad faith under the Policy, the Panel notes that the disputed domain name initially was registered on June 28, 2001, according to information in the concerned Registrar’s WhoIs database.