WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Bordes Golf International SAS v. Carmine Bonacci
Case No. D2019-0551
1. The Parties
The Complainant is Les Bordes Golf International SAS, France, internally represented.
The Respondent is Carmine Bonacci, Cyprus, self-represented.
2. The Domain Name and Registrar
The disputed domain names <lebordes.com>, <lesbordesgolf.com>, <lesbordesgolfproperties.com>, <lesbordesgolfproperty.com>, and <lesbordesproperties.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 26, 2019.
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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Center received an informal communication from the Respondent regarding the basis of the Complaint on April 21, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on May 3, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on May 21, 2019. 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.
On June 7, 2019, the Panel, issued the Administrative Panel Procedural Order No.1 (“Panel Order No. 1”) stating that:
“The Panel, having reviewed the submissions in WIPO Case No. D2019-0551 and taking into account previous related Uniform Domain Name Dispute Resolution and Nominet DRS proceedings, is prepared to consider the Complainant may have potential trademark rights, as well as a prior business relationship with the Respondent. However, the Panel notes that much of the Complainant’s allegations are made with limited evidence. Accordingly, the Panel requests submission of evidence of the below by June 14, 2019:
From the Complainant:
1. evidence of registered trademark rights, or evidence substantiating unregistered trademark rights (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3);
2. evidence the Complainant’s representative is the appropriate entity to file the present dispute on behalf of the Complainant (in particular the relationship between RoundShield Partners LLP and the Complainant); and
From the Respondent:
1. evidence of any potential instructions from the Complainant to the Respondent regarding registration of the disputed domain names.
From both Parties:
1. evidence regarding the negotiations in 2017 concerning the Complainant’s potential restructuring (as described in the Complaint, page 9).”
The Panel therefore extended the decision due date to June 21, 2019. In response to the Panel Order No. 1, the Complainant requested an extension for the submission of their evidence until June 21, 2019, due to necessary third party input.
In accordance with its general powers under paragraph 10 of the Rules, the Panel agreed to extend the deadline for submission of the requested information in Panel Order No. 1, until June 21, 2019, thus extending the due date for decision to at least July 5, 2019.
4. Factual Background
The Complainant owns and operates the Les Bordes Golf Club, a renowned golf club, located on a hunting estate in Saint-Lauren-Nouan, France and originally created by Baron Marcel Bich, the founder of the Bic pen and razor company.
The Complainant has unregistered trademark rights in France, United Kingdom, and elsewhere, as referred to in paragraph 4(a)(i) of the UDRP.
The Complainant is 64 per cent owned by RoundShield Partners LLP (“RoundSheild”), a successful independent investment firm based in Piccadilly, London, United Kingdom, set up in October 2013 as a fund management and investment business. Investments made by RoundShield included a EUR 43 million loan, pursuant to loan notes issued on May 28, 2014, to the Complainant which were renegotiated and extended by further agreements in May 2015 and June 2016.
The Complainant failed to pay the loans, and by January 2017, pursuant to the terms of the loans, RoundShield became entitled to replace the President and full management of the Complainant. Despite this, between January and November 2017, further negotiations between the then management of the Complainant and Roundshield, were carried out for the solution of the Les Bordes financial problems.
In November 2017, due to creditor pressure, RoundShield wrote to Les Bordes proposing a restructuring of the Complainant, which would have implied RoundShield taking a controlling equity interest in the Complainant as well as a complete changeover of the entire management of the company (including the Respondent, Mr. Carmine (aka Carlo) Bonacci), who had been appointed Finance Director and Planning Gain Manager, through a consultancy agreement signed between himself, the Complainant, and its parent company on March 14, 2008.
The Respondent at no time had any role or connection with RoundShield. The Respondent received a copy of RoundShield’s proposal for the changeover of the entire management, of the Complainant and responded on the November 3, 2017, requesting a meeting to discuss the proposal. The meeting was arranged on November 5, 2017, for November 10, 2017. Four days before the meeting, on the November 6, 2017 – Mr. Bonacci registered without notice to either the Compainant or RoundShield, the following disputed domain names: <lesbordesgolf.com>, <lesbordesgolfproperties.com>, <lesbordesgolfproperty.com>, and <lesbordesproperty.com>
The Respondent did not undertake the registration or maintenance of the disputed domain names on behalf of the Complainant and had no authority or instruction from the Complainant to register any of the above domain names. On November 10, 2017, the meeting took place but the Respondent did not attend and on November 27, 2017, a restructuring was agreed pursuant to which the entire management of the Complainant (including the Respondent) was replaced and an affiliate of RoundShield took a 64 per cent shareholding in the parent company of the Complainant (on March 21, 2018). After the restructuring had been agreed, on January 16, 2018 – The Respondent registered four other domain names using the name and mark RoundShield: <roundshieldfund.com>, <roundshieldllp.co.uk>, <roundshield.co.uk>, and <roundshieldfund.co.uk>
The Respondent did not disclose to either the Complainant or RoundShield that he had registered any of the above domains until October 18, 2018 – shortly after the publicity surrounding the RoundShield’s purchase of the Complainant – when he sent an email to Mr. Benkirane, who is the founder and partner in RoundShield – offering to sell the above referenced domain names for GBP 500,000.
5. Parties’ Contentions
The Complainant in effect contends that disputed domain names: <lebordes.com>, <lesbordesgolf.com>, <lesbordesgolfproperties.com>, <lesbordesgolfproperty.com>, and <lesbordesproperties.com> are confusingly similar to the mark “LES BORDES” in which the Complainant has unregistered rights as they reproduce the mark in its entirety with the mere addition of descriptive terms.
The Complainant contends that the Respondent was “acting in bad faith and that the registration of the Domain Names was premeditated”.
The Complainants also highlights that the Respondent had “no authority to register the Disputed Domains on behalf of the Complainants and can have no legitimate reason to use them”.
The Complainant claims that, at the time at which the Respondent registered the disputed domain names, the Respondent “can have had no legitimate use for them and can have had no use for them at all other than to demand money from the Complainant or the Complainant’s owner as he has now done, or to cause disruption or confusion by representing that the Disputed Domains are associated with the Complainants”.
In addition, the Complainant assert that the Respondent registered the disputed domain names also with the purpose of preventing the Complainant from registering the mark LES BORDES in a corresponding domain name.
The Complainant asserts that the use of the disputed domain names was purposely thought up to provide email addresses which falsely represent or are associated to the Complainant, thus causing likelihood of confusion with the Complainant’s LES BORDES mark, contrary to paragraph 4(b)(iii) and/or 4(b)(iv) of the UDRP.
The Complainant further alleges that the disputed domain names were registered by or on behalf of the Respondent, otherwise he would not have control over them or be in a position to offer them for sale, and that the content of the email dated October 18, 2018, further supports this hypothesis.
The Complainants conclude that that registration and holding of the disputed domain names by the Respondent has been executed in bad faith, and thus requests that, in accordance with paragraph 4(i) of the Policy, the disputed domain names be revoked from the Respondent and transferred to the Complainant itself.
In response to the Panel Order No. 1, the Complainant filed a Supplemental Filing, on June 21, 2019, in which it provided 43 additional annexes as substantial evidence in support of each of the Panel’s above-mentioned submission requests. This evidence includes, among other evidence, a series of newspaper articles regarding the Les Bordes Golf Club, materials showing the sale of Les Bordes branded merchandise, and copies of the account of the club for the past 10 years, evidencing that the total turnover of the golf club Les Bordes has risen significantly during the past 10 years.
The Complainant further underlines that all services, including membership subscription, course fees, equipment hire, sales from the club shop, hotel and restaurant services are provided under the Les Bordes name and brand, and consequently that name is widely recognized throughout Europe and across the world as being the name and mark of the Complainant’s golf club and associated businesses.
Furthermore, the Complainant emphasizes that the use it has made of the Les Bordes name in the course of its business, has led to widespread recognition of the Les Bordes name and brand amongst the golfing, financial, and tourism communities.
As to the request in the Panel Order about the appropriate entity to file the present dispute on behalf of the Complainant, the Complainant informs the Panel that Mr. Bucket, who signed the Complaint on behalf of the Complainant, is the President of the Complainant and as such is the appropriate individual, authorized by the Complainant to file the present dispute on behalf of the Complainant.
With regards to the relationship between RoundShield Partners LLP and the Complainant, the Complainant underlines that the reason the address provided in the Complainant’s preferred method of address is that of RoundShield Partners LLP is that Mr. Bucket is also an employee of RoundShield Partners LLP, and he is primarily based at the London office of RoundShield Partners LLP. The Complainant explained that RoundShield Partners LLP is in fact the investment adviser to RS Fund I, LP and 100 per cent owner of the sole secured creditor and the ultimate sole shareholder of the Complainant.
With reference to the request in the Panel Order to provide evidence regarding the negotiations in 2017 concerning the Complainant’s potential restructuring (as described in the Complaint, page 9), the Complainant has provided copies of letter and email exchanges, in particular illustrating the lender rights, deadlines, and consequences deriving from the non-payment of the loan, followed by the consequent lender’s restructuring proposal, including the proposal to change the management and to appoint a board observer to the board, providing the Panel with the corresponding supporting documents.
The Complainant further submits that the Respondent, was well aware of the November 2, 2017, letter and proceeded nevertheless, without authorization by part of the Complainant, to register the disputed domain names <lebordes.com> and, 3 days later on November 6, 2017 the other four disputed domain names: <lesbordesgolf.com>, <lesbordesgolfproperties.com>, <lesbordesgolfproperty.com>, and <lesbordesproperties.com>.
The Respondent did not formally reply to the Complainant’s contentions.
Further to the Administrative Panel Procedural Order No. 1 dated June 7, 2019, the Respondent replied, via email dated June 9, 2019, to the Panel’s requests further submission of evidence, as follows.
With regards to point 1, which was anyway not addressed to the Respondent, the Respondent states that “[t]here were no registered or unregistered trademark rights in existence at the time of acquiring these domains”
As to the specific request addressed to the Respondent to provide evidence of any potential instructions from the Complainant to the Respondent regarding registration of the disputed domain names, the Respondent informs the Panel that no communications were received from the Complainant on this matter.
As to the last point of the Panel Order No. 1 addressed to both Parties to provide evidence regarding the negotiations in 2017 concerning the Complainant’s potential restructuring (as described in the Complaint, page 9), the Respondent asserts that he has no evidence in his possession of any restructuring negotiations.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel, in accordance with the WIPO Overview 3.0, is of the opinion that the Policy is applicable to common-law trademarks if the Complainant has shown that the mark has become a distinctive identifier associated with the Complainant or its goods and services, as held in Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286, Imperial College v. Christophe Dessimoz, WIPO Case D2004-0322, and Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395.
As stated in section 3.1 of the WIPO Overview 3.0, “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. […] Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning”.
The Panel has reviewed the documents and statements submitted by the Complainant in response to Panel Order No. 1 and finds that they are sufficient to establish common law/unregistered trademark rights on LES BORDES for the purpose of standing in this proceeding.
The Complainant has in fact established rights over the sign LES BORDES, based on the fact that the golf club LES BORDES is widely recognized throughout Europe and across the world as being the name and mark of the Complainant’s golf club and associated businesses.
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with the UDRP precedents, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
The panel notes that, notwithstanding the opportunity provided with Panel Order 1, the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
To the contrary the Respondent openly admitted, in response to the specific question of Panel Order 1, that the Complainant has not instructed or authorized the Respondent to register the disputed domain names.
The Respondent is not a licensee of the Complainant and there is no evidence that the Respondent is commonly known by the disputed domain names. Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain names, and the Respondent has not provided in the Response any convincing evidence to the contrary.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location”.
As to bad faith at the time of the registration, the Panel notes that in light of the evidence of use provided by the Complanant in response to Panel Order 1 and the relationship existing with the Complainant as detailed in the sections above, the Respondent was certainly well aware of the Complainant’s rights on the mark LES BORDES.
With reference to the bad faith use, the Panel deems that paragraph 4(b)(i) of the Policy is squarely applicable to the present case since, in light of the content of the correspondence provided by the Complaint, the disputed domain names were registered for the purpose of selling them to the Complainant for an amount well in excess of the documented out-of-pockets costs. Indeed, as detailed above and as per evidence provided to the Panel, the Respondent sent an email offering to sell the disputed domain names to the Complainant for GBP 500,000, an amount that is certainly well over the out-of-pocket costs directly related to the disputed domain names.
The Panel finds paragraph 4(b)(ii) of the Policy also applicable in this case, since the Respondent has registered the disputed domain names in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has registered five domain names incorporating the trademark rights of the Complainant.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For all 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 <lebordes.com>, <lesbordesgolf.com>, <lesbordesgolfproperties.com>, <lesbordesgolfproperty.com>, and <lesbordesproperties.com> be transferred to the Complainant.
Date: July 10, 2019