WIPO, Entscheidung vom 13. November 2002, Case No. D2002-0885, - dukenukem3d.com
EuGH: "Zustimmung bei Vertrieb von Waren innerhalb des EWR"
Leitsätzliches
Auch das Fordern von Produkten (hier: "a case of wine") mit irgendeinem Wert im Austausch als "Anerkennung" der Übertragung einer Domain wird als "Bad Faith" gewertet. Bei Vorliegen der weiteren Voraussetzungen ist es für die Entscheidung des Schiedsgerichts unerheblich, welche der beiden Parteien zuvor eine vereinbarte Übertragung der Domain hat Scheitern lassen. Das Unternehmen Baron Philippe de Rothschild SA, Frankreich, hat nach Ansicht des Schiedsgerichts bessere Rechte an der Domain chateaumoutonrothschild.com. Diese und andere Domains wurden übertragen.

WIPO, Entscheidung vom 11. November 2002, Case No. D2002-0891, - chateauxmoutonrothschild.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fall Nummer: D2002-0891

Entscheidung vom 11. November 2002

 

 

1. The Parties

 

Complainant is Baron Philippe de Rothschild SA, ... France,

 

Respondent is Nick G., ..., UK.

 

 

 

2. The Domain Name and Registrar

 

The domain names at issue are;

 

<chateaumoutonrothschild.com>,

<chateau-moutonrothschild.com>,

<chateaumouton-rothschild.com> and

<chateau-mouton-rothschild.com>

 

hereinafter referred to also as the "Domain Names". The registrar is Register.com.

 

 

 

3. Procedural History

 

The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on September 25, 2002, and in hardcopy with exhibits on October 1, 2001. On September 25, 2002, the Center acknowledged receipt and transmitted via email to Register.com a request for registrar verification in connection with this case. On the same date, Register.com transmitted via email to the Center its Verification Response, confirming that the registrant is Nick Gebbie and that the Domain Names registration are in "active" status.

 

The Center transmitted on October 8, 2002, to Nick Gebbie the Notification of Complaint and Commencement of the Administrative Proceeding.

 

On October 22, 2002, the Center received the Response from the Respondent.

 

On October 30, 2002, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

 

Having received Mr. Luca Barbero’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on October 31, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

 

 

 

4. Factual Background

 

The Complaint is based on:

 

- French Trademark Registration No. 1308941 CHATEAU MOUTON ROTHSCHILD filed on July 6, 1984, class 33

 

- UK Trademark Registration No. 961931 CHATEAU MOUTON ROTHSCHILD filed on July 3, 1991, class 33

 

(copy of the registrations are enclosed to the Complaint).

 

The respondent registered the domain name <chateaumoutonrothschild.com> on February 15, 2000, and <chateau-moutonrothschild.com>, <chateaumouton-rothschild.com> and <chateau-mouton-rothschild.com> on February 29, 2000.

 

 

 

5. Parties’ Contentions

 

A. Complainant

 

Château MOUTON ROTHSCHILD is the name of a unique French wine producer "Château"/ Estate which has been in the ownership of the Rothschild family since 1853.

 

The designation Château MOUTON ROTHSCHILD corresponds in particular to the Pauillac wine estate. The wine produced there is famous in the wine business as First Growth, is one of the five "Premier Grand Cru" wines of Bordeaux under the classification of Bordeaux wines of 1855 reviewed in 1973 and is internationally recognised for its quality and finesse. No licences are granted.

 

The Complainant states that the Domain Names are identical, or at least nearly identical, and confusingly similar to the trademarks owned by the Complainant and these Domain Names are clearly intended to capitalize on Complainant’s internationally recognised name and product and to confuse Internet users interested in fine wines or other products into believing that these domain names are owned, operated, or authorised by Complainant".

 

As to the Respondent’s rights or legitimate interest in the Domain Names, the Complainant states that the Respondent never used the Domain Names and that "the web page that exists under the domain names has always been vacant. [...]" indicating that the Respondent has never been commonly known by these Domain Names. Furthermore, the Complainant states that "the Respondent decided quite recently to put on sale the 4 domain names thanks to the Respondent’s domain names register, "Register.com". Thus, the Internet web page that appear for these domain names, a Coming soon page which points to another one, an "Afternic" page, a Register.com company, suggests that anyone could buy them and "Register.com" makes it clear that it was possible to make an anonymous offer for at least $200. The Respondent could have changed the Coming soon page for another one where domain names’ sale could not occurred."

 

As to the registration and use in bad faith, the Complainant declares that the "Respondent obviously selected these domain names at issue here with the sole intent and purpose of creating a likelihood of confusion , and of appropriating and trading upon Complainant’s considerable and long standing goodwill and reputation" and that "the Respondent tried to blackmail the Complainant by asking some bottles of Château Mouton Rothschild’s wine".

 

The Complainant also informs the Panel that both parties came to an agreement through the Network Solutions Inc. (NSI) Standard-Registrant Name Change Agreement also signed by an English Public Notary on April 26, 2001, but adding that "as the registrar, Register.com, requires an additional consent to the transfer of the domain names which has never been given, the Respondent acting in bad faith has always refused to give such a consent".

 

The Complainant concludes that the negotiations "failed because the Respondent’s real venture was cases of wine or money, not ‘the express aim of handing them (domain names) over to you (the Complainant)’ and to what the Respondent says ‘the purchase of these domain names...was a enterprising idea by a student who hoped to gain some wine in return, to enjoy as a reward’".

 

B. Respondent

 

The Respondent in the Response indicates his present wish to transfer the Domain Names to the Complainant and refers to the signed and notarised document as evidence.

 

As to the failure of the transfer procedure, the Respondent contests the circumstance stating that "Register.com have confirmed that no approach has been made by the complainant to complete the electronic transfer of these domain names. [...] Register.com requires the notarization forms to be sent by the complainant, together with the complainant’s billing information to complete this transfer. This has never been sent to register.com and is entirely the responsibility of the complainant".

 

The Respondent states also that he did not make "any specific demands of the complainant, other than reimbursement of costs" and that he never demanded any wine, merely asked the complainant to consider the gesture.

 

As to the offer of the Domain Names for sale, the Respondent states "the domain names have only ever been offered to the complainant. The ‘For Sale’ sign the complainant refers to [...] is a standard link for all register.com domain names. I have never intended to sell these domain names to anyone else other than the complainant."

 

 

 

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 in accordance with the Policy, the 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 Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,

 

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and,

 

(iii) that the Domain Names have been registered and is being used in bad faith.

 

6.1. Domain name identical or confusingly similar

 

The Complainant has provided evidence of ownership of French Trademark Registration No. 1308941 CHATEAU MOUTON ROTHSCHILD and of UK Trademark Registration No. 961931 CHATEAU MOUTON ROTHSCHILD.

 

In view of the above, the Panel finds that the Complainant has proved that the Domain Names are respectively identical and confusingly similar as to the versions with the hyphens (obviously but for the suffix ".com"), to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.

 

6.2. Rights and legitimate interest

 

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent does not assume the burden of proof, but does assume the burden of production and may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

 

(a) He has made preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services prior to the dispute;

 

(b) He is commonly known by the domain names, even if he has not acquired any trademark rights; or

 

(c) He intends to make a legitimate, non-commercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

 

From the statements both in the Complaint and in the Response, it appears evident to the Panel that the Respondent did not make preparations to use the Domain Names in connections with a bona fide offering of goods or services prior to the dispute. The Respondent did not indicate in the Response to be commonly known by the Domain Names nor that he intended to make a legitimate use of the Domain Names without intent for commercial gain.

 

Conversely, the Respondent stated in the Response that he was wishing to transfer the Domain Names therefore renouncing, for the purpose of the present paragraph of the Policy, to establish rights or legitimate interests in the disputed Domain Names.

 

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.

 

6.3. Registration and Use 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 the Domain Names in bad faith:

 

(i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 names; or

 

(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or

 

(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain names, 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 your website or location or of a product or service on the holder’s website or location.

 

As a preliminary issue, it is noted that both the Complainant and the Respondent make reference in the present procedure to an assignment document of the Domain Names already duly signed and blame the other party for not having completed the transfer procedure. The panel finds that it is not within the purpose of the present procedure to ascertain if it was the Complainant’s or the Respondent’s responsibility the failure of the transfer procedure but the Panel shall decide in view of the fact that the Domain Names are presently still in the name of the Respondent.

 

Pursuant to Article 16 of the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel has examined in further details the annexed correspondence exchanged between the parties with reference to the present Domain Names.

 

On January 9, 2001, e-mail annexed to both documents, the Respondent, acknowledging receipt of the forms to be signed for the ownership transfer, stated that he was "disappointed to learn that you only wish to offer me £50 per name. As I am sure you appreciate this barely covers the costs of purchasing the names". The respondent added that "I have not offered these names to any third party, nor shall I trade under the domain name myself, as this might infringe your trademark."

 

In the same e-mail, the Respondent also stated that "due to my great interest and enthusiasm in Bordeaux wines, I would be very interested in negotiating to receive a certain number of cases of wine in exchange for the domain names" or "consider any financial offer" as the Respondent "was expecting some form of discretionary reward" but adding that"I do not think that £50 per name is a fair offer".

 

On March 26, 2001, the Respondent wrote to Complainant in connection with the sending of the signed and notarised forms needed for the transfer of the Domain Names, again claiming a reward on account of the circumstance that "the purchase of these names was not conducted with the aim of getting vast sums of money in return...it was an enterprising idea by a student who hoped to gain some wine in return".

 

On May 3, 2001, the Complainant confirmed having received the signed documents and requested the bank details of the Respondent in order to pay the "indemnity" for the Domain Names. On the same date, the Respondent replied stating that in the meanwhile he had to pay both for the renewal of the registrations and for the notarization of the transfer forms. The Respondent claimed again "a case of wine" for his co-operation in the transfer and for having offered the four Domain Names the Complainant "had omitted to purchase".

 

On May 10, 2001, the Complainant, asking for further details concerning the Respondent’s bank account, notified the Respondent of the total amount which would have been paid to cover registration and renewal fees and notarisation expenses. On the same date the Respondent replied and highlighted again the circumstance that he had offered the transfer of the Domain Names directly to the Complainant, claiming again a case of wine for his co-operation.

 

On May 16, 2001, the Respondent wrote last to the Complainant reminding the payment of the reimbursement and once again asked for "a single case" of wine.

 

From the above statements and in particular from the mail of January 9, 2001, annexed also to the Response, the Panel first of all infers that the Respondent, due to the acknowledged great interest and enthusiasm in Bordeaux wines, was certainly aware of the prior rights of the Complainant on the name CHATEAU MOUTON ROTHSCHILD at the time of registration of the Domain Names.

 

The Panel also considers the statement that the amount offered by the Complainant - which, according to the same Respondent, would have covered the costs - was not a fair offer together with the reiterated requests to receive also one or more cases of wine in exchange for the Domain Names, as a clear circumstances indicating that the Respondent has registered the Domain Names in bad faith. As inter alia decided in Gutterbolt, Inc. v. NYI Bldg. Prod. Inc., (Nat. Arb. Forum Case no. FA 96076), Metallica v. Schnieder, (Nat. Arb. Forum Case No. FA 95636) the Panel finds that the demanded consideration does not have to be monetary in nature, but can be anything of value that exceeds the amount spent in registering and maintaining the domain name.

 

Furthermore, the Respondent stated in the Response that "I have never intended to sell (sic) these domain names to anyone else other than the complainant" providing the Panel with a further clarification of the intention to trade the Domain Names to the Complainant.

 

The Domain Names are presently pointing to a "coming soon" web page where services of the maintainer are offered and where any Internet user interested in the Domain Names could request to acquire the same by making an anonymous offer (which should not be less than US$ 200). The Panel finds that, even if the web page published in all the instant Domain Names is a standard one, the exploitation of the reputation of the trademark of the Complainant combined with the promotion of third party services and the indication of an offer for sale is tantamount to use in bad faith. The Respondent, being also the administrative contact of the Domain Names, could at any time instruct the maintainer to have such standard pointing changed or deleted, pursuant to the maintainer’s policy.

 

In view of the above, the Panel finds that Respondent has registered and is using the Domain Names in bad faith pursuant to paragraph 4(b)(i) of the Policy.

 

 

 

7. Decision

 

In light of the foregoing, the Panel decides that the Domain Names registered by the Respondent are identical to the Complainant’s trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Complainant has established that the Domain Names <chateaumoutonrothschild.com>, <chateau-moutonrothschild.com>, <chateaumouton-rothschild.com> and <chateau-mouton-rothschild.com> has been registered and is being used in bad faith.

 

Accordingly, the Panel concludes that the Domain Names <chateaumoutonrothschild.com>, <chateau-moutonrothschild.com>,

 

<chateaumouton-rothschild.com> and <chateau-mouton-rothschild.com> should be transferred to Complainant.

 

...

Sole Panelist