WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M Chapoutier v. Lan Qing Tian / Qingtian Lan
Case No. D2016-1717
1. The Parties
The Complainant is M Chapoutier of Tain-L’Hermitage, France, represented by Cabinet Laurent & Charras, France.
The Respondent is Lan Qing Tian / Qingtian Lan of Chengdu, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain names <chapoutier.club>, <chapoutier.top> and <chapoutier.vip> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2016. On August 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2016, 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.
On August 26, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 30, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceeding commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. The Response was filed with the Center on September 25, 2016. According to the Response, the Respondent appeared to be willing to explore settlement with the Complainant. On September 26, 2016, the Center invited the Complainant to comment whether it would like to suspend the proceeding to explore settlement with the Respondent. On September 29, 2016, the Complainant requested the Center to proceed further with the case.
The Center appointed Francine Tan as the sole panelist in this matter on October 5, 2016. 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 says it is a very famous winemaker and producer of the finest Rhône Valley Appellations (in particular Côte-Rôtie, L’Hermitage, Côtes du Rhône, etc.), which is very well known in France but also all over the world. Members of the Chapoutier family have been working in the Rhône valley in France since 1808. A distant ancestor, Polydor Chapoutier, was the first to buy vines there, shifting from being a simple grape grower to making and trading his own wine. The business has remained family-owned since then and is now run by Mr. Michel Chapoutier since the age of 26. The website of the Complainant is located at “www.chapoutier.fr”. Many references of wine made by the Complainant are marketed under the house mark, CHAPOUTIER.
The Complainant has registered the trade mark CHAPOUTIER in many countries worldwide including in France, the European Union, Switzerland, Canada, Russia, Japan, the Republic of Korea, Singapore, Indonesia, and in China where the Respondent is located. The Complainant’s international trade mark registration number 709548 dates from March 16, 1999 and is based on its French trade mark registration number 98750685 of September 16, 1998.
The Complainant has also registered many domain names incorporating “chapoutier” with the following extensions: “.asia”, “.biz”, “.co.uk”, “.com”, “.com.au”, “.de”, “.es”, “.eu”, “.jp”, “.mobi”, “.pt”, “.ru”, “.bio”, “.fr”, “.maison”, “.vin”, “.wine”, “.xyz” and “.cn”.
The disputed domain names were registered on May 23, 2016.
5. Parties’ Contentions
The disputed domain names are identical to the Complainant’s CHAPOUTIER trade mark. The disputed domain names reproduce indeed exactly the term “chapoutier” without any modification.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not consented to the registration of the disputed domain names; it has never licensed or otherwise permitted the Respondent to apply for any domain name incorporating the Complainant’s CHAPOUTIER trade mark; there is no relationship between the Complainant and the Respondent; the Respondent has adopted the Complainant’s CHAPOUTIER trade mark for its own use and incorporated the trade mark CHAPOUTIER “without any adjunction” into the disputed domain names without the Complainant’s authorization. The trade mark CHAPOUTIER is very distinctive and refers exclusively to the Complainant. One cannot conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain names. The term CHAPOUTIER has no significance in any language and it is obvious that “Chapoutier” is a French family name.
The Respondent has registered and used the disputed domain names in bad faith.
The trade mark CHAPOUTIER was registered with the Trademark Clearinghouse (the “TMCH”). With the registration of its mark with the TMCH, a potential domain name registrant would receive a warning notice when attempting to register a domain name that incorporates or matches the Complainant’s CHAPOUTIER trade mark. Consequently, the Respondent would have received a TMCH notification about the existence of the recorded trade mark CHAPOUTIER but it proceeded despite such notification, which shows that the registrations were made in bad faith. The fact that the Complainant has numerous domain name registrations incorporating the trade mark CHAPOUTIER in the domain name extensions mentioned above also means that the Respondent must have come across these domain names when it registered the disputed domain names. The registration by the Respondent of the disputed domain names was made not by accident but with the Complainant’s trade mark in mind.
The disputed domain names were registered very recently and have not been used in relation to any active website(s). The passive holding of the disputed domain name registrations may, nevertheless, be sufficient to constitute bad faith use taking into consideration the overall context of the Respondent’s behavior. In this case, the Complainant’s trade mark is well-known, including in China. The Chinese Trademark Office recognized the reputation of the trade mark CHAPOUTIER in an opposition decision. Further, CHAPOUTIER is one of the famous brands of wines in the menus of the best restaurants and bars in China. CHAPOUTIER-branded wines also widely represented in wine trade fairs all over the world including in China. There are many references to the trade mark CHAPOUTIER in magazines and in specialized journals in China.
In the Respondent’s September 25, 2016 email in Chinese, the Respondent asserted that there are numerous domain names in different countries and the numbers are increasing. It submitted it is unfair to restrict or prohibit the use of the disputed domain name since trademark right is secured on a first-registered, first-served basis and trademark laws and regulations are varied. The disputed domain name was registered through a long and tedious process through the proper channels and the registration was secured without any objection. Further, “Chapoutier” is a person’s name, to be used in relation to a personal website. There is no evidence that it has infringed the Complainant’s CHAPOUTIER mark or caused confusion by the use of the disputed domain name.
6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
The Complainant requested that English be the language of the proceeding in this case even though the Registration Agreement is in Chinese. The reasons given are:
(i) English most widely-used language in international relations and is one of the working languages of the Center;
(ii) the Complainant is located in France and has no knowledge of the Chinese language;
(iii) the disputed domain names consist of English characters and the family name “Chapoutier” in Latin characters; and
(v) it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving the domain name dispute. To proceed in Chinese, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost of the present proceeding.
Paragraph 11 of the Rules provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the relevant domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires that panels ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case.
The Panel determines that English should be the language of the proceeding in this case. As pointed out by the Complainant, the disputed domain names comprise Latin characters. Further, the Panel notes that all the communications from the Center to the parties were transmitted in both Chinese and English and the domain name extensions in this case are all in English. The Respondent was given the opportunity to present arguments in response in this proceeding and in fact responded by way of an email to the Center on September 26, 2016. This showed that the Responded understood the nature of the proceeding. It was also invited to respond on the issue of the language of the proceeding but did not do so. To require the Complainant to translate the Complainant and supporting evidence into Chinese would unduly delay the proceeding. The language requirements of the Rules should indeed not lead to undue burden being placed on the parties and undue delay to the proceeding. The Panel believes that the Respondent is not prejudiced by the language of the proceeding being English.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the CHAPOUTIER trade mark. The entire mark has been incorporated in the disputed domain names and the only difference lies in the generic Top-Level Domains (“gTLDs”) “.top”, “.club” and “.vip”. It is a well-established principle that the gTLDs may be disregarded when considering the issue of confusing similarity since they constitute a technical requirement of domain name registrations.
The Panel concludes that the first requirement of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. It includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services; or
(ii) being commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
For the purposes of paragraph 4(c) of the Policy, the Complainant is only required to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Once the Complainant has presented a prima facie case, the burden shifts to the Respondent to submit evidence which proves it has rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names or “chapoutier” nor is there evidence of a legitimate noncommercial or fair use of the disputed domain names in connection with a bona fide offering of goods or services. There is nothing in the Respondent’s response which demonstrates it has rights or legitimate interests in the disputed domain names. The Respondent’s assertion that it registered the disputed domain name through proper channels and that there is no evidence of infringement per se by the Respondent does not have merit. It has been long established that the mere registration of the disputed domain name does not itself confer rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
In the circumstances, the Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain names were registered and used in bad faith.
The Panel notes that the CHAPOUTIER trade mark may be widely-known mark in relation to wines. Bearing this in mind and the fact that the mark was registered with the TMCH, there is no doubt that the Respondent would have known of the Complainant and its rights to the CHAPOUTIER trade mark but persisted, nonetheless, in registering the disputed domain names. The Panel notes that the Respondent did not deny knowledge of the Complainant and of its CHAPOUTIER trade mark nor offer any explanation for its choice of the name “chapoutier” for its domain name registrations. The Respondent’s aim was undoubtedly to attract and divert Internet traffic to its website by creating confusion with the Complainant’s mark or otherwise give the impression that it is the Complainant or somehow affiliated with the Complainant. The choice of the gTLDs in this case is suggestive of the Respondent’s appreciation of the exclusive nature of the Complainant’s CHAPOUTIER brand and products. Notwithstanding the passive use of the disputed domain names by the Respondent, the Panel finds that the disputed domain names have been registered and used in bad faith.
The Panel concludes that the third element of paragraph 4(a) of the Policy has been met.
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 names, <chapoutier.club>, <chapoutier.top> and <chapoutier.vip>, be transferred to the Complainant.
Date: October 24, 2016