Société Civile Agricole Chateau Margaux v. Goldman Williams

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Société

Civile Agricole Chateau Margaux v. Goldman Williams Ltd

Case No.

D2001-1147

1. The Parties

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.

2. The Domain Name and

Registrar

The domain name in issue

is <chateaumargaux.org>.

The Registrar is Tuscows

Inc., 96 Mowat Avenue, Toronto, Ontario M6K3M1, Canada.

3. Procedural History

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).

4. Factual and Legal

Background

A. The Name and Trademark

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.

B. The Complaint

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.

C. The Response

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

A. Identical or Confusingly

Similar Domain Name

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.

B. Rights or Legitimate

Interests of Respondent

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.

C. Domain Name Registered

and Used in Bad Faith

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.

6. Decision

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