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Wal-Mart Stores, Inc. v. Modern Limited - CaymanWeb Development, Domain Administrator [2005] GENDND 364 (24 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Champagne Louis Roederer (CLR) v. Global Web Development, LLC

Case No. D2004-1073

1. The Parties

The Complainant is Champagne Louis Roederer (CLR), Reims, France, represented by Ernest Gutmann - Yves Plasseraud S.A., France.

The Respondent is Global Web Development, LLC, Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <cristalhosting.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004. On December 20, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2005.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on January 20, 2005. 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 Paragraph 7 of the Rules.

4. Factual Background

The Complainant, Champagne Louis Roederer (CLR), is a renowned French Champagne House founded in 1776, which is up to now one of the most prestigious Champagne houses enjoying a strong reputation throughout the world.

The Complainant products include the famous Champagne “CRISTAL” which is among the most sought-after in the world. For example, in the United States of America alone more than 4,000,000 bottles of Champagne “CRISTAL” were sold between 1948 and 2003.

The Complainant has numerous trademark registrations for Champagne “CRISTAL” in many countries of the world, including the United States of America.

The Respondent, Global Web Development, LLC, has registered and uses domain name <cristalhosting.com> for a website which refers to web pages with a title “CRISTAL HOSTING – Check out our booth in Miami. Free Cristal for all” showing on the home page a man holding a “CRISTAL” Champagne bottle of the Complainant and, on the other pages, people drinking “CRISTAL” Champagne in a night club.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <cristalhosting.com> is confusingly similar to the registered trademark for Champagne “CRISTAL”:

- The Complainant has registered the trademark “CRISTAL” for Champagne throughout the world,

- The word ““hosting”” added as a kind of suffix, does not change the overall impression of the designation as it is a descriptive term in relation with the Internet with a connotation apt to give the impression that the domain name resolves to the official website of the Complainant related to “CRISTAL”.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent has never been commonly known by the disputed domain name and has not registered or acquired any trademark relating to the name “CRISTAL”.

- The Respondent should have knowledge of the trademark and the name of Champagne “CRISTAL” due to the fact that a bottle of Champagne “CRISTAL” is displayed on its website.

- The Respondent does not use the domain name in connection with the bona fide offering of goods and services, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903).

(c) The domain name was registered and is being used in bad faith:

- The Respondent has registered the disputed domain name with the knowledge of the Complainant and its trademark Champagne “CRISTAL”.

- The choice by the Respondent of a domain name incorporating the well-known trademark “CRISTAL” constitutes evidence of bad faith from the part of the Respondent since, while displaying the Champagne “CRISTAL” of the Complainant on its website, the Respondent does not sell any Champagne “CRISTAL”, nor does he provide consumers with any information whatsoever regarding the “CRISTAL” Champagne”.

- Bad faith further is characterized by the fact that the domain name <cristalhosting.com> designates a website subtitled “Check out our booth in Miami. Free Cristal for all” which, by using the trademark “CRISTAL” and promising free Champagne “CRISTAL” for potential customers, intends to divert the public for its own commercial gain to its own booth in a night-club or a restaurant in Miami.

- The fact that there is no reference to a specific company name of the Respondent, which makes it likely for consumers to believe that the Complainant has endorsed, authorised or is otherwise affiliated with the said website.

- Furthermore, the presentation of the trademark “CRISTAL” of the Complainant on the website’s home page can also be considered as a use intending to tarnish the reputation attached to the mark “CRISTAL”. The representation of an insulting finger sign in the upper left corner of the first picture of the website is an obvious evidence of such intent from the Respondent

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has registered trademark for Champagne “CRISTAL” and the labeling of the “CRISTAL” Champagne bottle throughout the world including a number of international and national trademarks registrations, some dated as far as 1909 (Annex 8 and 9 to the Complaint). The list of countries includes many of the countries in the world, particularly European countries and the United States of America.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark for Champagne “CRISTAL”. The fact that the disputed domain name has the word “hosting” added as a kind of suffix, in the Panel view, does not change the overall situation. As the Complainant stated, the word “hosting” widely used as descriptive term in relation with the Internet gives the impression that the domain name resolves to the official website of the Complainant related to “CRISTAL”.

The Panel agrees with the Complainant’s arguments that result may, therefore, be that the disputed domain name would be associated in the mind of the consumers with the Complainant’s trademarks so that a risk of confusion is likely.

The Complainant refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

Similar decisions have been rendered with respect to addition of the descriptive word “hosting” to a registered trademark. See for example the following decisions: <mtvhosting.com> in Viacom International Inc. v. Franck F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; <bellsouth-hosting.com> in BellSouth Intellectual Property Corporation v. AA.HOSTING.COM, WIPO Case No. D2003-0732; <costcohosting.com> in Costco Wholesale Membership Inc., and Costco Wholesale Corporation v. WebHostingWholesale.com, WIPO Case No. D2004-0501).

The Respondent has not filed any reply to the Complaint or contested the Complainant’s assertions. The Respondent did not present any evidence of having rights in the trademark or trade name “CRISTAL”.

The Panel infers the Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services.

According to the documents submitted by the Complainant the home page of the website under the disputed domain name <cristalhosting.com> displays a bottle of Champagne “CRISTAL” with a title: “Cristal Hosting. Check out our booth in Miami. Free Cristal for all” (Annex 7 to the Complaint). Further pages display pictures of people drinking champagne.

The Panel finds no evidence that Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, as for the Respondent’s proof under Paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. The Complainant contends the Respondent is not commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on June 30, 2004 (Annex 1 to the Complaint). The Complainant’s product “CRISTAL” is known since 1876, and it is a trademark registered throughout the world.

The Panel believes that the Respondent knew about the Complainant’s Champagne “CRISTAL” name and trademark.

Afterwards, regarding these facts, it is the Panel’s view that the Respondent probably registered the disputed domain name with awareness of the Complainant’s product and its reputation.

Thus, the Panel finds that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of services under Paragraph 4(c)(i) the Policy, on the contrary, it proves that the disputed domain name has been used in bad faith (see below).

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of diverting public attention to the Respondent’s website for potential commercial gain, without fairly selling or even promoting the Champagne “CRISTAL” and, by so doing, tarnishing the reputation of the Complainant’s trademark “CRISTAL”.

According to the evidence submitted by the Complainant the home page of the website under the disputed domain name <cristalhosting.com> displays a bottle of Champagne “CRISTAL” with a title: “Cristal Hosting.Check out our booth in Miami. Free Cristal for all” (Annex 7 to the Complaint). The mere fact of representing the first letter “C” as capital letter is evidence of the fact that the Respondent is referring to the Complainant’s product and trademark Champagne “CRISTAL”.

The fist picture on the website shows a man holding a bottle of Champagne “CRISTAL” with someone holding the fingers at the bottleneck in an insulting manner.

The Panel finds that the Respondent’s website could have attracted potential attention from the public through an offer of free Champagne “CRISTAL”. At the same time it has created a likelihood of confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of its website.

In addition, due to the fact that Champagne “CRISTAL” is one of the most expensive champagne products and that the bottle of this champagne is displayed by the Respondent in combination with an insulting sign leads Panel to believe that indeed it may affect the Complainant’s business reputation.

The Panel’s independent search shows that currently there is no website at “www.cristalhosting.com”. It is clear that the Respondent discontinued using the disputed domain name for a website.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was in violation of provisions of Paragraph 4(b)(iv) of the Policy. The fact that the Respondent discontinued the above-mentioned activity, in the Panel’s view, should not be interpreted as eliminating bad faith.

The Panel holds that the Respondent “has registered the disputed domain name in bad faith”. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent knew of the Complainant’s product and showed be aware of the trademark Champagne “CRISTAL”. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The fact that the Respondent’s use of the disputed domain name has created a likelihood of confusion with the Complainant’s product and trademark under Paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.

The Panel finds the Complainant has shown that the Respondent registered the disputed domain name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name <cristalhosting.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: February 3, 2005