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Société Civile Agricole Chateau Margaux v. Goldman Williams Ltd [2001] GENDND 1382 (3 December 2001)

WIPO Arbitration and Mediation Center

A. The Complainant is Société Civile Agricole Chateau Margaux, 19 avenue Montaigne, 15008 Paris, France.

B. The Respondent is Goldman Williams Ltd, Suite 69 Eurolink Business Center, 49 Effra Road London, London Sw2 1bz, United Kingdom.

The domain name in issue is <chateaumargaux.org>.

The Registrar is Tuscows Inc., 96 Mowat Avenue, Toronto, Ontario M6K3M1, Canada.

The WIPO Arbitration and Mediation Center (the Center) received the complaint on September 19 (French electronic version). As the proceeding was to be conducted in English, the Center received a translated version on October 3 and October 5, 2001 (e-mail and hard copy version). The Center received the Registrar verification response on September 25, 2001. The Response was received on October 29 and October 31, 2001 (e-mail and hard copy version).

The Société civile agricole Chateau Margaux is the owner of the following trademark:

- The French and international trademark "Chateau Margaux" for wine and alcoholic products registered on October 6, 1983.

- The international trademark "Chateau Margaux" for cigars and cigarettes products registered on October 4, 1983.

The Complainant also registered the domain names <chateaumargaux.com> and <chateaumargaux.net>.

Goldman Williams Ltd. is a company in the United Kingdom engaged in the buying and selling of wines, and in particular of premier cru wines.

The grounds for the complaint are:

- That the domain name registered by the Respondent has exactly the same spelling than the Complainant’s trademarks.

- That the Respondent does not have any right on the name "Chateau Margaux", which is a well-known trademark that only the Chateau Margaux Company is allowed to use as a domain name.

- That the domain name was registered in bad faith as the Respondent is in direct competition with the Complainant in the selling of wines and as the site at the domain name at issue is still under construction.

In its response the Respondent states:

- That it is not disputed that the Complainant is the owner of the "Chateau Margaux" trademark.

- That it is not disputed that the Respondent has registered the domain name at issue.

- That the Respondent is permitted by section 11(2)b of the English Trade Marks Act of 1994 to use any trademark as a means of indicating the characteristics of the goods it sells.

- That the Respondent has not registered the domain name in bad faith as its sole purpose was to enable it to pursue its business on the Internet.

5. Discussion and Findings

The domain name is identical to the Complainant’s trademarks. Indeed the relevant part of the domain name chateaumargaux.org has exactly the same spelling as the trademarks. The Respondent does not dispute that fact.

The Respondent claims that he is permitted by the Trade Mark Act of 1994 to use any trademark as a means of indicating the characteristics of the goods it sells. However, one should not misunderstand the true nature of the right to a domain name once it has been legitimately acquired and used. Certainly, the Respondent is permitted to use any trademark as a means of indicating the goods he is selling, just as is any other person who has an interest in using the trademark to the same extent. It is, however, a non exclusive use of the trademark, i.e. it does not impinge on the right of the trade mark owner and on the right of third parties equally to use the same trade mark to indicate which goods they are selling. On the contrary, a domain name registration will only confer the use of the said domain name to its owner. Any other person will be prevented from using that domain name, cybersquatting not being tolerated any longer. The right to a legitimately registered domain name is therefore an exclusive right, and its nature is very different from the right the Respondent has to use the trademark for describing the merchandises sold in its business. Once again, if the Respondent were to be allowed to keep the domain name at issue, third parties would be prevented to indicate to the public that they are suppliers of the same wine through the use of an Internet domain name.

In a similar dispute (Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717), the panel decided not to address the issue of whether or not the distributor/reseller had the right to make use of a tradename or trademark owned by the principal, as such cause of action required a complicated weighing of the parties’ various interests which that proceeding was not designed to accommodate. In the present case however, there is no such difficulty in the weighing of interests. Indeed the Respondent is not using the domain name, the site at this address being under construction. Further, contrary to what the Respondent alleges, it is not only by using the words "Chateau Margaux" in the domain name that the Respondent can attract potential customers to its site. There is a variety of other possibilities. For example, to the extent that the use of corresponding metatags is permitted by national law, the Respondent can use those to attract potential customers to its site through search engines. On the other hand, to the extent that national trademark laws do not allow even such a use of a trademark in metatags (see e.g. the French decision of the Tribunal de Grande Instance de Paris, August 4, 1997, in Bensoussan & Bréban, Les arrêts-tendances de l’internet, Paris 2000, p. 217 et seq.), a fortiori they could not tolerate the grabbing of a well-known trademark in a domain name.

Further, it is important to note that the Respondent already has an established website at Goldmanwilliams.com from which it can conduct his business operations. It has no need for a <chateaumargaux.org>. In fact the Respondent can sell Chateau Margaux wine on the Internet without the use of this confusing domain name. The Respondent claims that it is only by using the words "Chateau Margaux" in the domain name that it can indicate what its business is and attract potential customers to the site. As is explained above, it clearly appears that in the present case such argumentation is not technically correct. Therefore, it does not afford any rights or legitimate interests to the registration of the domain name.

The Respondent states that its sole purpose in registering the domain name was to enable him to pursue its business on the Internet and that the words "Chateau Margaux" will be used to indicate the fact that the Respondent legitimately sells Chateau Margaux wine through their web site. In the "Brembo" case, the panel also denied the existence of registration in bad faith because, although the Respondent used the domain name to attract, for commercial gain, Internet users to its website, it made an effort to reduce the likelihood of confusion between itself and the Complainant and/or the Complainant’s business, by making clear that it did not own the "brembo" trademark and by indicating that it was selling other products than the Complainant’s as well. In the present case however, the website at <chateaumargaux.com> is still under construction. It is therefore not possible to judge of any such effort made by the Respondent, although it alleges that when the link to its main site will be implemented, it will be obvious to any customers who access the site that they are dealing with the Respondent. Nevertheless, as there appears to be a likelihood of risk of confusion by the very reason of the choice of the domain name at issue, the onus of proof rested on the Respondent to show how precisely this risk was countered, and no sufficient proof has been adduced before this panel.

Further, the Respondent did not give a detailed account of its relationship with the Complainant, if any. In the WIPO case D2000-0006, <militec.com>, involving also a dispute between an distributor or reseller and the principal, the panel decided not to support a finding of bad faith : although the panel did not know the full extent of the relationship between the parties, it did appear that there was some sort of relationship between the two involving the sale of the Complainant’s products. The panel in that case also noted that the Respondent informed the Complainant’s sale representative of what it was doing and that the news was greeted well. In the present case, however, there is no such relationship between the parties : the Respondent cannot oppose the Complainant's request on the ground of a business arrangement or the fact that he is selling the Complainant’s products.

Also important is the fact that the Complainant and the Respondent are competitors in the wine selling business as they both sell Chateau Margaux wines. The registration by the Respondent of a domain name identical to the Complainant’s trademark and apparently previously registered domain name results in the impossibility for the Complainant to reflect its own trademark in a domain name belonging to itself, without creating a confusion with the establishment of its competitor. Thus the registration of this domain name is disruptive of the Complainant’s business. It deserves to be observed that at least a well-known trademark should be protected against all domain names that are identical or similar to it when considering the second-level domain, even leaving aside the fact that there might be little legitimate interest for a merchant of wines to register a domain name under the top level domain org.

According to article 16 § 2 of the TRIPs agreement, in order to determine if a trademark is well-known, the knowledge of the trademark in the relevant sector of the public shall be taken into account, including knowledge in the member State concerned which has been obtained as a result of the promotion of the trademark. The Complainant’s trademark is well-known and is so all over the world. It is as such protected from dilution. The Respondent could not ignore this fact, and neither could he ignore that the registration of this domain name with the intention to use it in the future for the selling of its products would result in the dilution of the "Chateau Margaux" trademark. The Respondent states that its intentions are to use the domain name to implement a link to the current Goldman Williams web site. This in itself is a sign of bad faith. In case WIPO D2000-0024, <easyjet.net>, the panel found bad faith as the Respondent had implemented links to competitors of the Complainant on the web site at the disputed domain name. The Respondent bad faith lies in the fact that it is free-riding on the long-standing advertising and marketing efforts of the Complainant, which is in itself akin to unfair competition. It is clear that the Complainant has a very substantial reputation: wrongfully adopting the Complainant name and trademark in a misleading way would in all likelihood amount to the tort of passing off (see, for instance, WIPO case D2000-0014, theeconomictimes.com).

Finally, it will not escape the attention of the parties that the Report of the Second WIPO Internet Domain Names Process, of September 3, 2001 (WIPO Publication No. 843 E, sec. 224), cites the text of a Resolution of the 45 Member States of the Agreement for the creation of the Office International du Vin of November 29, 1924. Those States taken together represent the vast majority of the world’s planting areas and of the world’s wine consumption and production. This resolution in its pertinent part, reads as follows:

"…a very large number of Internet domain names consists of geographical indication… among these domain names there are a number which are particularly confusing for Internet users and constitute commercial piracy or a misappropriation of notoriety…certain registrations are offered for sale to the highest bidder or are linked to inactive sites, evidencing bad faith…".

As a matter of fact, besides being a well-known trademark and the trade name of its owner, Chateau Margaux is also a geographical indication relating to a particular wine-producing estate, and there can be under objective standards no good faith in grabbing it for a domain name.

In the light of the foregoing, the panel decides that the domain name registered by the Respondent is identical to the corresponding trademark of the Complainant, that the Respondent has no legitimate interests in respect of this domain name and that the domain name in issue has been registered and used in bad faith by the Respondent.

Accordingly the panel requires that the registration of the domain name <chateaumargaux.org> be transferred to the Complainant.

François Dessemontet
Sole Panelist

Dated: December 3, 2001