Chateau Lafite Rothschild v Privacy Service Provided by Withheld for Privacy

WIPO Case No. D2022-1039

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Chateau Lafite Rothschild v. Privacy Service Provided by Withheld for Privacy
ehf / Brian Woods, Famers

Case No. D2022-1039

1. The Parties

The Complainant is Chateau Lafite Rothschild, France, represented by Plasseraud IP, France.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Brian Woods, Famers,

United States of America (“United States” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <lafite-fr.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2022.

On March 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 4, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the the due date for Response was May 11, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on May 12, 2022.

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The Center appointed David Perkins as the sole panelist in this matter on May 17, 2022. 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

4.A Complainant

4.A.1 The Complainant runs the Château Lafite Rothschild wine estate, commonly called “Lafite”, which is a

very famous and prestigious French wine estate. It was established in the 18th century and is located at an Annex to the Amended Complaint.

4.A.2 The Amended Complaint provides details of the Complainant’s worldwide trade mark registrations

consisting in whole, or in part, of LAFITE. They include the following:

Country	Registration	Mark	Classes of	Date of
No.	Goods &	Registration
Services
International	649854	LAFITE	33 and 34	January 19, 1996
(“IR”)*
European	000108639	CHATEAU LAFITE	33 and 34	June 9, 1998
Union	ROTHSCHILD
IR**	395875	CHATEAU LAFITE	1-42	November 28, 1972
ROTHSCHILD
IR ***	764270	Device mark featuring inter	14 and 33	July 23, 2001
alia, the mark LAFITE and a
capital ‘R’
France	1,656,313	The same	33	April 17, 1991
European	002107696	The same	33	February 27, 2001
Union
China	22248378	LAFITE	33	January 28, 2018
China	18325901	Device mark featuring the	33	December 21, 2016
mark LAFITE and a capital ‘R’
IR ****	1547958	Device mark featuring the	16 and 20	June 9, 2020
words ‘GRAND VIN DE
LAFITE ROTSCHILD’
IR*****	1338730	GRAND VIN DE LAFITE	31	January 31, 2017
ROTSCHILD
United States	1,200,616	CHATEAU LAFITE	33	July 6, 1982
of America	ROTHSCHILD
United States	1,758,650	Device mark featuring, the	33	March 16, 1993
of America	mark LAFITE and a capital ‘R’

* IR 649854 covers 20 countries, including the USA.
** IR 395875 covers 19 countries.
*** IR 764270 covers 8 countries.

**** IR 1547958 covers the European Union and 5 other countries including the USA.

***** IR1338730 covers the European Union and 5 other countries.

The Respondent’s given address is in California, USA.

4.A.3 The Amended Complaint states that the Complainant is the registrant of numerous domain names

including the term “Lafite” alone or in combination with other elements. Those domain names include for

example:

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<lafite.com>, <lafite.fr>, <lafite.wine>, <chateaulafite.com>, <chateau-lafite.com>, <chateaulafite.fr>,
<lafiterothschild.asia>, <lafiterothschild.com>, <lafite-rothschild.com>, <lafiterothschild.eu>,

<lafiterothschildwine.com>, and <rothschildchateaulafite.com>.

The earliest of the above, <lafite.com>, was registered on January 20, 1997.

4.A.4 The Complainant also conducts its business on the Internet through its website at “

which is available in multiple languages including French and English. The Amended Complaint explains

that the <lafite.com> domain name is used as the Complainant’s official email address.

4.A.5 Annexed to the Amended Complaint is an email exchange in March 2022 in which the Respondent

used the disputed domain name as an email addressed to one of the Complainant’s clients purporting to be
from a member of the Complainant’s accounting department requesting payment to a (purportedly) new bank

account. This attempted fraud was discovered when that client emailed the individual in the Complainant’s

accounting department to check the accuracy of the new bank account.

4.B Respondent

4.B.1 In the absence of a Response, what is known of the Respondent is contained in the Amended

Complaint and its Annexes.

4.B.2 The disputed domain name was registered on March 10, 2022. The fraudulent email described in

paragraph 4.A.5 above was sent the same day.

5. Parties’ Contentions

5.A Complainant

Identical or Confusingly Similar

5.A.1 The Complainant cites three cases decided under the Policy in which its LAFITE trade mark has been

held to be known for wine worldwide and to be both well known and widely known.

5.A.2 The Complainant states that the disputed domain name incorporates its LAFITE trade mark in its
entirety and is, consequently, confusingly similar to that trade mark. The Complainant cites section 1.11 of

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in support of its case that addition of a generic Top-Level Domain (“gTLD”) is to be disregarded when

assessing confusing similarity. By way of illustration, the Complainant cites five cases decided under the

Policy in which Panels have found confusing similarity when the disputed domain name has merely included

a hyphen and the letters “fr”.

Rights or Legitimate Interests

5.A.3 First, the Complainant says that it has not licensed or otherwise authorised use by the Respondent of

the LAFITE trade mark.

5.A.4 Second, there is no evidence that the Respondent has been commonly known by the disputed domain

name.

5.A.5 Third, the Complainant says there is no evidence of any fair, noncommercial or bona fide use of the
disputed domain name. In that respect, the Complainant points to the fraudulent use of the disputed domain

name described in paragraph 4.A.5 above. Additionally, the Complainant asserts that use of the disputed

domain name on a pay-per-click (“PPC”) parking page linking it to promoting products competing with its

LAFITE wines does not create a right or legitimate interest in the disputed domain name. By way of

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illustration, the Complainant cites three decisions under the Policy where such use has been held to be

neither a legitimate noncommercial nor fair use of the Complainant’s domain name.

Registered and Used in Bad Faith

5.A.6 First, the Complainant says that, given the distinctiveness, fame and repute of its LAFITE trade mark, registration of the disputed domain name cannot be a mere coincidence. The Complainant cites decisions under the Policy in which it has been held that incorporation of a well known trade mark into a domain name

supports a finding of bad faith registration.

5.A.7 Second, the Complainant explains that, for a number of reasons, the Respondent’s details given for

registration of the disputed domain name are more than likely inaccurate, probably fanciful. For example,
the postal address is that of the well known Farmers Insurance company in the United States. But the
telephone number given is not that of Farmers Insurance, nor does it have the area code of California - the

purported address of the Respondent - but is the area code for Bermuda. Still further, the Respondent gives

its organisation as “Famers”, a misspelling of “Farmers” as in Farmers Insurance. From the Complainant’s

enquiries, the Respondent does not appear to be an official agent of Farmers Insurance. Providing such
fictitious information is, the Complainant says, evidence of bad faith, citing section 3.2.1 of the WIPO

Overview 3.0 and two illustrative decisions under the Policy.

5.A.8 Third, the Complainant points to the fraudulent use of the disputed domain name described in

paragraph 4.A.5 above.

5.A.9 Fourth, referring to section 3.6 of the WIPO Overview 3.0, the Complainant couples that use to the

Respondent’s use of a privacy service to hide his identity as further evidence of bad faith.

5.A.10 Fifth, the Complainant points to the bad faith use of the disputed domain name as a PPC link to

competitor products: paragraph 5.A.5 above.

5.A.11 Sixth, although the disputed domain name is currently inactive, the Complainant asserts that all the
factors constituting passive use are present on the facts of this case. These are that the LAFITE trade mark
is globally well known, that the Respondent not only concealed its identity through a privacy service but also

provided inaccurate identity and contact information, that because of its closeness to the LAFITE trade mark

the disputed domain name carries a high risk of implied affiliation with the Complainant’s prior rights and

that, given the fraudulent use described in paragraph 4.A.5 above, any good faith use of the disputed domain

name is clearly implausible.

5.A.12 In sum, the Complainant’s case is that the Respondent’s conduct plainly falls fair and square within

paragraph 4(b)(iv) of the Policy.

5.B Respondent

As noted above, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to
succeed in an administrative proceeding

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

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

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

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the

Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain

name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found

by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They
are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence

relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant clearly has rights in the LAFITE trade mark which is a highly distinctive and well known

trade mark.

6.6 For the reasons summarised in paragraph 5.A.2 above, the disputed domain name is confusingly similar

to that mark.

6.7 Consequently, the twin requirements of paragraph 4(a)(i) of the Policy are met.

Rights or Legitimate Interests

6.8 There is no evidence that the Respondent could demonstrate any of the grounds in paragraph 4(c) of the

Policy to establish rights or legitimate interests in the disputed domain name. The Complainant’s case

summarised in paragraphs 5.A.3 to 5.A.5 above is well made out and, accordingly, the Complainant

succeeds under paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.9 Again, the Complainant’s case summarised in paragraphs 5.A.6 to 5.A.12 is well made out. The

evidence of bad faith registration and use of the disputed domain name falls fair and square within

paragraph 4(b)(iv) of the Policy.

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 disputed domain names <lafite-fr.com> be transferred to the Complainant.

/David Perkins/

David Perkins

Sole Panelist
Date: May 31, 2022