WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accolade Wines Australia Limited v. Robert Desantos
Case No. D2017-2503
1. The Parties
Complainant is Accolade Wines Australia Limited of Reynella, Australia, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is Robert Desantos of Weybridge, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <accolade-winesuk.com> is registered with Gandi SAS (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2017. On December 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 20, 2017.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 25, 2018.
The Center appointed Gary J. Nelson as the sole panelist in this matter on February 6, 2018. 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
Complainant operates in the wine industry and is located in Australia.
Complainant is the registered owner of several trademarks for ACCOLADE WINES. Specifically, Complainant owns at least the following trademark registrations in the indicated geographic territories:
July 14, 2011
June 10, 2011
United States of America
August 19, 2014
The disputed domain name was registered on October 3, 2017. At the time of the filing of the Complaint, the disputed domain name resolved to Complainant's website at "www.accolade-wines.com".
5. Parties' Contentions
Complainant is the number one wine company in Australia and the United Kingdom by volume, and is the fifth largest wine company in world. Complainant's predecessor, Thomas Hardy and Sons, was founded in 1853 by Thomas Hardy in Adelaide, Australia.
Complainant has over 1,700 employees around the world and 51 brands. Complainant delivers approximately 38 million cases of wine to more than 140 countries annually.
Complainant has significant operations in, inter alia, Australia, the United Kingdom, France, South Africa, New Zealand, and Asia. As a result, Complainant and the ACCOLADE WINES name, brand and mark are well-known throughout the wine industry, with wine and spirits wholesalers and the general public.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and has subsequently used and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the ACCOLADE WINES trademark and that the disputed domain name is confusingly similar to Complainant's ACCOLADE WINES trademark.
Where a Complainant owns a nationally or regionally registered trademark or service mark, this fact is prima facie evidence that satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP Complaint. See Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, WIPO Case No. D2013-0219; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269.
In this case, Complainant owns at least three registrations throughout the world for the ACCOLADE WINES trademark. Accordingly, Complainant has established rights in its ACCOLADE WINES trademark pursuant to Policy, paragraph 4(a)(i).
Where the relevant trademark (i.e., ACCOLADE WINES) is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) typically does not prevent a finding of confusing similarity under the first element. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075 (the addition of descriptive term "petroleum" to the VALERO trademark being insufficient to avoid a finding of confusing similarity); Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287 (the addition of the geographic term "Kenya" to the ALLIANZ trademark being insufficient to avoid a finding of confusing similarity).
In this case, adding the geographic descriptive abbreviation "UK" (i.e., the country code for the United Kingdom) to Complainant's ACCOLADE WINES trademark is insufficient to establish a domain name that is distinct from Complainant's trademark and is insufficient to avoid a finding of confusing similarity.
Also, the incorporation of a hyphen in the disputed domain name does not impact the analysis of confusing similarity. Nu Mark LLC v. Privacydotlink Customer 3030896 / Garrett Boyd, WIPO Case No. D2017-2084 (Panel disregarded the "hyphen" when conducting the confusingly similar analysis).
Moreover, the addition of a generic Top-Level Domain ("gTLD") suffix, such as ".com" in this case, is typically disregarded, and thus insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919 (the ".com" portion of the disputed domain name being disregarded when conducting the confusingly similar analysis); Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087 (adopting the same rationale).
Complainant has proven the requirements of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms "accolade", or "wines", or "uk", or any combination of these terms. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found under the circumstances of that case, where (1) respondent is not a licensee of the complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its ACCOLADE WINES trademark.
Moreover, Respondent's decision to add a common geographic term (e.g., "uk") to a well-known trademark does not instill Respondent with rights or legitimate interests in the corresponding domain name. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to the complainant).
In this case, when the Internet user attempts to access the website associated with the disputed domain name (i.e., "accolade-winesuk.com"), the Internet user is redirected to Complainant's own website at "www.accolade-wines.com".
The Panel finds this activity to be the equivalent of maintaining an undeveloped website associated with the disputed domain name. Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in this domain name. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that the respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and the respondent is not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the ACCOLADE WINES trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was most likely aware of the rights owned by Complainant in ACCOLADE WINES when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent was re-directing Internet users trying to access the website at "www.accolade-winesuk.com" to Complainant's own website at "www.accolade-wines.com". The Panel finds this fact to be evidence supporting a finding of bad faith registration and use.
Respondent's awareness of the ACCOLADE WINES trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain name and since the ACCOLADE WINES trademark is widely known. The relevant priority dates for all of Complainant's trademark registrations precede the date upon which the disputed domain name was registered (i.e., March 10, 2017). See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual notice of the complainant's trademarks registered in the United States of America); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Also, the Panel holds that Respondent is currently warehousing the disputed domain name and does not associate the disputed domain name with an active website. Rather, at the time of the filing of the Complaint, Respondent was using the disputed domain name to point to Complainant's own website. This, in the Panel's view, is evidence of bad faith registration and use for the purposes of the Policy.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 <accolade-winesuk.com> be transferred to Complainant.
Gary J. Nelson
Date: February 12, 2018