WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viña San Pedro Tarapacá S.A. v. Super Privacy Service LTD c/o Dynadot
Case No. D2020-0546
1. The Parties
The Complainant is Viña San Pedro Tarapacá S.A., Chile, represented by Sargent & Krahn, Chile.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tayu1865.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 11, 2020 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 amendment to the Complaint on March 13, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2020.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 14, 2020. 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 is a Chilean company, domiciled in Santiago. lt was founded in 1865 and is today one of the largest exporters of Chilean wine, and one of Chile’s traditional and historic wineries.
The Complainant owns a substantial portfolio of trademarks that incorporate the trademarks 1865 and TAYU. The Complainant’s Chilean trademark No. 942073 1865 was registered in class 33 for wines on December 26, 2011. The Complainant’s Chilean trademark No. 1310212 TAYU was registered on November 19, 2019 for “wine and sparkling wines”. Moreover, the Complainant provided evidence of the Chilean trademark application No. 1339948 for TAYU 1865 filed on October 22, 2019, and currently registered.
In addition, the Complainant also owns numerous domain names featuring “Tayu” and “1865”, including the domain names <tayuwine.com>, <1865wines.com>, and <tayu-1865.com>.
The disputed domain name was registered on November 12, 2019 and redirects to a website which offers the disputed domain name for sale for USD 990.
5. Parties’ Contentions
The Complainant submits that it owns registered trademark rights in the marks TAYU and 1865 as set out above.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that its trademark 1865 is well known in the wine market and that the combination of this trademark in a domain name with the term TAYU which is also registered as a trademark by the Complainant, is sufficient to establish confusing similarity between these trademarks and the disputed domain name.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent has no rights or legitimate interests in the disputed domain name as it merely offers the disputed domain name for sale;
- the Complainant has not given consent to the Respondent to use its trademarks TAYU or 1865 and the Respondent has no business relationship with the Complainant.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- in light of the Complainant’s reputation and scope of its operation it is obvious that the Respondent had knowledge of both the Complainant and its trademark at the time the disputed domain name was registered;
- the Respondent’s intention was to sell the disputed domain name for a price considerably higher than the registration costs, to prevent the Complainant from reflecting its trademarks TAYU and 1865 in a domain name and to attract, for commercial gain, Internet users to a website taking advantage of the Internet user’s confusion between the disputed domain name and the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trademarks TAYU and 1865 in Chile and various other countries prior to the registration of the disputed domain name on November 12, 2019.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Here the disputed domain name is composed of two registered trademarks, which are both owned by the Complainant.
The Panel concurs with the opinion of several prior UDRP panels that if a disputed domain name is composed of more than one distinct trademark, which are both owned by the same complainant, the domain name may be considered confusingly similar to all of the marks individually. (See, e.g., Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118; Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433).
That is particularly true where one of trademark is highly recognizable, as in the instant case. The Complainant has provided sufficient evidence that due to extensive advertising the trademark 1865 is widely-known in the wine market.
Finally, it has been long established under the UDRP that the generic Top-Level Domains (“gTLDs”) such as “.com”, “.net”, and “.org” are typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is at least confusingly similar to the Complainant’s trademarks 1865 and TAYU.
B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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.”
The Complainant asserted that the Complainant has not authorized the Respondent to use its trademarks 1865 and TAYU or the disputed domain name, and provided evidence that the disputed domain name redirects to a website that offers the disputed domain name for sale. These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
In light of the circumstances of this case, including the fact that the Respondent uses the disputed domain name to resolve to a website offering the disputed domain name for sale, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted 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 the Respondent’s website or location.
The Complainant holds trademark registrations for 1865 in Chile and many other countries since at least December 26, 2011 and is the owner of the trademark TAYU with priority of June 7, 2019. The Complainant’s trademark 1865 is distinctive and widely known in connection with the Complainant’s wines.
The disputed domain name was registered in November 2019 many years after the year 2011 when the Complainant commenced registering its international trademark portfolio of marks incorporating the 1865 mark and was advertising its Chilean wine under this mark.
This and the fact that the disputed domain name wholly incorporates the Complainant’s 1865 trademark and combines it with the term TAYU which is also registered as a trademark by the Complainant, makes it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks 1865 and TAYU.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
The Complainant provided evidence that the disputed domain name redirects to a website that offers the disputed domain name for sale for USD 990.
The Panel finds that the Respondent’s offer to sell the disputed domain name for USD 990 is an indication of bad faith even though there is no evidence on the record that the Respondent offered to sell directly to the Complainant or a competitor, as stated in Policy paragraph 4(b)(i). See, e.g., Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675 (offer to the public to sell disputed domain name for excess of out-of-pocket expenses was among evidence supporting bad faith).
The Respondent is employing the disputed domain name, which contains the Complainant’s trademarks, in order to create a likelihood of confusion with the Complainant’s mark, for commercial gain, to attract offers from the public to buy the disputed domain name belonging to the Respondent. The evidence therefore establishes that the Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. Policy paragraph 4(b)(iv).
For the above, the Panel finds that the Respondent’s registration and use is a clear-cut case of cybersquatting and that therefore the Complainant has also satisfied its burden under paragraph 4(a)(iii) of the Policy.
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 <tayu1865.com> be transferred to the Complainant.
Date: April 29, 2020