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Southcorp Limited v. Frontier Direct Pty Ltd [2005] GENDND 55 (19 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southcorp Limited v. Frontier Direct Pty Ltd

Case No. D2004-0949

1. The Parties

The Complainant is Southcorp Limited, Artarmon, New South Wales, Australia.

The Respondent is Frontier Direct Pty Ltd, Alphington, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <penfoldsgrange.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2004. On November 12, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2004, Network Solutions, LLC 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 and technical contacts for the disputed domain name. The Center then 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 Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2004.

The Center appointed James A. Barker as the sole panelist in this matter on January 5, 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 the Rules, paragraph 7.

4. Factual Background

The Complainant, Southcorp Limited, is an Australian wine producer. The Complainant fully owns Southcorp Brands Pty Limited and Southcorp Wines Pty Limited, both of which are companies incorporated under Australian laws. Southcorp Brands owns (amongst many others) a number of Australian-registered trademarks for PENFOLDS, GRANGE and PENFOLDS GRANGE for alcoholic beverages and wines and Southcorp Wines uses them under licence from Southcorp Brands. Southcorp Brands also owns trademarks for PENFOLDS, GRANGE and PENFOLDS GRANGE in more than 40 countries.

The disputed domain name reverts to a website. The website is apparently operated by an entity called “Frontier Wines” (also referred to on the website as “Frontier Wine Australia Pty Ltd”, “Frontier Wines Inc”, and “Frontier Wines Pty”). The website describes Frontier Wines as “an Australian wine events company” and as “specialised in sourcing premium quality wines from some of Australia’s most awarded and exclusive boutique wineries”. Photographs picturing the Complainant’s trademarks, and bottles of wine labeled with the PENFOLDS GRANGE trademark, appear prominently on the website. Wine is offered for sale via the website, including Grange wines marketed by the Complainant and others not made or marketed by the Complainant.

The Respondent is an Australian company. Its Director and Secretary is Mr. Hanratty.

No evidence or argument was put to the Panel about the relationship between the Respondent and Frontier Wines. The Complainant, in its Complaint, treats Frontier Wines and the Respondent as in effect the same entity.

The names of the two entities - Frontier Direct and Frontier Wines - are similar. Both comprise of two words, the first being “frontier”. Both are located in Victoria, Australia. The administrative contact for the disputed domain name has as part of its email address: “[name]@frontierwines”. The first part of that address corresponds to the first five letters of the name Mr. Hanratty: the name of the Director and Secretary of the Respondent, Frontier Direct. The second part of that address obviously corresponds to the name “Frontier Wines”. Also, the Respondent must obtain, or have at least the possibility of obtaining, some benefit in pointing the domain name to Frontier Wines’ website.

These facts taken together suggest to the Panel that Frontier Wines, Mr. Hanratty and the Respondent are, in effect, the same entity. Accordingly, the Panel has treated them collectively as the Respondent in this decision.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The disputed domain name <penfoldsgrange.net> is identical to Complainant’s well-known registered trademark PENFOLDS GRANGE.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name. While the Respondent may have every right to sell the Complainant’s goods or services, it does not give Respondent the right to register a trademark of Complainant as part of a domain name without the consent of the owner of the trademark. Support for this contention may be found in Aventis Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113, in which the panel held that even if the respondent were a retail seller of the complainant’s products, it did not confer proprietary rights in the complainant’s marks, nor could it use the complainant’s mark as a domain name.

The Respondent is known as Frontier Wines – it has never been commonly known by any name even slightly resembling PENFOLDS GRANGE, whether as a business or company name or domain name and has never gained any registered or common law right to PENFOLDS or GRANGE or PENFOLDS GRANGE.

The Respondent is not making a legitimate non-commercial or fair use of the domain name. Rather, its intent is for commercial gain to misleadingly divert consumers.

Bad Faith

The Respondent registered and used the domain name in bad faith. By registering and using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, 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. Further evidence of bad faith registration is able to be inferred insofar as the Respondent has failed to answer a facsimile from the Complainant, objecting to the Respondent’s use of the domain name and requesting transfer.

B. Respondent

In response to the Center’s initial acknowledgement of receipt of the Complaint, the Respondent sent an email to the Center on November 17, 2004 stating: “I know nothing of this complaint. Please explain to me who you are and what the complaint is?”.

No further communication was received from the Respondent.

Under paragraph 14(a) of the Rules, in the absence of a Response, the Panel shall proceed to a decision on the Complaint. Under 14(b) of the Rules, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with the Rules.

There are no exceptional circumstances in this case. Accordingly, subject to the discussion and findings below, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant.

6. Discussion and Findings

For the Complaint to succeed the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and

- the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)); and

- the domain name was registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed respectively below.

A. Identical or Confusingly Similar

There is no dispute that the Complainant has rights in the trademark PENFOLDS GRANGE, via its ownership of Southcorp Brands Pty Ltd. That trademark is registered in Australia, where both the Respondent and Complainant reside. The Complainant also provided extensive evidence of the reputation of that mark in Australia.

The disputed domain name is self-evidently identical to the Complainant’s registered trademark. The domain name includes the “.net” extension; which has consistently been disregarded by panels in determining whether a domain name is identical or confusingly similar to a trademark.

Accordingly, the Panel finds that the domain name is identical to the relevant trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances that, if found by the Panel to be proved, are evidence of a respondent’s rights or legitimate interests in a domain name.

Panels have consistently found that the burden is on the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c). (For a recent affirmation of that principle, see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.) That burden arises once the Complainant establishes a prima facie case against the Respondent. The Complainant has established that case, as set out below. No response to that case was made by the Respondent. As also indicated below, there is no other evidence contrary to the case made by the Complainant.

Paragraph 4(c)(i)

Paragraph 4(c)(i) of the Policy provides that the following circumstance:

“(i) before any notice to you [the Respondent] of the dispute, your use of…the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.

As noted above, the Respondent is using the domain name in connection with an offering of the Complainant’s goods. For the Respondent to have a right or legitimate interest under paragraph 4(c)(i) there must be evidence that that offering is “bona fide”.

The Complainant states that, while the Respondent may have every right to sell the Complainant’s goods, this does not give the Respondent a right to use the Complainant’s trademark in a domain name. The Complainant cites, among others, Aventis Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, in support of the principle stated in that case that:

“While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with these goods in connection with their sale, this does not give it the right to register and use the mark as a Domain Name without the consent of the holders of the trademarks.”

It is clear that offering the Complainant’s goods by using the domain name that includes the Complainant’s trademark is not, by itself, a bona fide offering for the purpose of paragraph 4(c)(i). Further, the domain name entirely and identically incorporates the Complainant’s trademark; and the Respondent’s website also offers goods that compete with those of the Complainant. In similar circumstances, other Panels have found that such an offering of goods by use of such a domain name can not be bona fide for the purposes of paragraph 4(c)(i). (For example, recently see Pfizer Inc. v. Alex Schreiner/ Schreiner & Co., WIPO Case No. D2004-0731, and the cases cited in that one.)

Panels have been prepared to find that an offering is bona fide in circumstances where a complainant acquiesced or approved to some extent of the respondent’s conduct. (See, for example, Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.) It is clear, from the Complaint, that the Complainant did not acquiesce or approve of the Respondent’s conduct in this case. Neither is there evidence that the Complainant authorised the use of its trademark in the disputed domain name.

There is no other evidence to support a finding in the Respondent’s favour under paragraph 4(c)(i). None was provided by the Respondent.

Paragraphs 4(c)(ii), 4(c)(iii)

There is no evidence that the Respondent is commonly known by the disputed domain name, within the meaning of paragraph 4(c)(ii) of the Policy. As the Complainant contends, the Respondent is known as Frontier Wines. The Respondent also appears to be known by other names, as noted above. None of these names bear any similarity to the domain name.

There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name, within the meaning of paragraph 4(c)(iii) of the Policy. On the contrary, the Respondent has used the domain name in connection with its website that offers wine for sale.

Paragraph 4(c) is stated to be ‘without limitation’ - other circumstances might demonstrate rights or a legitimate interest. There is no evidence of any.

The Panel therefore finds that the Respondent has no right or legitimate interests under paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy contains three elements, which together provide that evidence of the bad faith registration and use of a disputed domain name can be found where:

“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website…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 your website or location.”

The Respondent clearly knew of the Complainant’s mark when it registered the disputed domain name corresponding to the Complainant’s PENFOLD GRANGE trademark. The Respondent offers, among others, the Complainant’s Penfold Grange wine for sale on its website. It follows that the Respondent intentionally attempted to attract Internet users by using the disputed domain name.

The Respondent operates its website for commercial gain.

The disputed domain name is entirely identical to the Complainant’s mark. The likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, is therefore obvious.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <penfoldsgrange.net> be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: January 19, 2005