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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J.-E. Borie SA v. Jonathan Obadia

Case No. D2007-0445

 

1. The Parties

The Complainant is J.-E. Borie SA, Chвteau Ducru-Beaucaillou, Saint-Julien-Beychevelle, France, represented by S.E.L.A.R.L. Eric Agostini et Associйs, France.

The Respondent is Jonathan Obadia, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ducru-beaucaillou.com> (the “Disputed Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2007. On March 26, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center of April 4, 2007 relating to the language of the proceedings (given that the Complaint was filed in French and that the language of the registration agreement was English), the Complainant filed an English translation of the Complaint on April 26, 2007. On May 3, 2007 the Center notified the Complainant that the Complaint was administratively deficient given that the registrant of record was not the person/entity specified in the Complaint. The Complainant subsequently filed an amended version of the Complaint on May 3, 2007 properly identifying the Respondent as the registrant of the Disputed Domain Name.

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 Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2007. The Response (in the form of an email) was filed with the Center on May 15, 2007.

The Respondent stated in his Response sent to the registrar of the Disputed Domain Name (Tucows) and to the Center on May 15, 2007 as follows:

“[…]

WITHOUT PREJUDICE

I have informed the complainant that as they have successfully demonstrated the extraordinary lengths that they are prepared to go in their attempts to acquire the domain name I am more than happy to transfer the disputed domain to them as soon as they advise me of their details.

The domain is of little or no interest to me and I will be happy to transfer it to them in full and final settlement of this matter.

As such, please can you advise the best method in achieving this now that a Registrar Lock has been placed on it.

[…]”

In another email also dated May 15, 2007 sent to the Complainant’s counsel, the Respondent stated as follows:

“Dear Mr Agostini,

WITHOUT PREJUDICE

It is apparent that your client wishes to gain control over the domain name ducru-beaucaillou.com and I now appreciate that it is of great importance to them.

Accordingly I am happy to consider transferring the domain to their control. I wish to point out that I have sought no financial gain from owning this domain name and would transfer it to your client without any costs as a gesture of goodwill. As a connoisseur of Bordeaux wines I have no wish to stand in the way of the Chateau in promoting their wines.

[…]

Please can you be so kind enough to forward me details of how your client wishes to proceed with regards to transferring ownership.

Yours sincerely

Jonathan Obadia”

The Complainant’s counsel replied to the Respondent by an email of June 13, 2007 as follows:

“Dear Mr Obadia

WITHOUT PREJUDICE

Please accept my apologies for not coming back to you earlier with respect to the ducrubeaucaillou.com [sic] issue, but I was waiting to get in touch with you during the suspension period.

I understand that you want to transfer the disputed domain name to Chвteau Ducru-Beaucaillou. My Client is favourable to an amicable settlement and would appreciate if you would take the necessary steps to allow the transfer.

The holder’s name should be Jean-Eugиne Borie SA, with address […]

The best solution would be for you to draft a letter in these terms to the WIPO Arbitration Center, with copies to all parties involved, and we would respond with another letter stating that we agree with the arrangement and wish to settle the case.

We would appreciate if this matter were resolved by the 22^nd of June, otherwise we will ask for the re-institution of the procedure.

With best regards

Eric AGOSTINI

[address]”

The Center notified the Parties by email of May 16, 2007, that if the parties wanted to settle the dispute, a request for suspension of the proceedings should by made by the Complainant.

The Complainant filed a request to suspend the proceedings on June 1, 2007, upon the receipt of which the Center notified the parties on June 4, 2007 of the suspension of the proceedings until July 4, 2007.

Further to a request of the Complainant to reinstitute the proceedings on July 9, 2007, these proceedings were reinstituted on July 11, 2007.

The Center appointed Jacques de Werra as the sole panelist in this matter on July 18, 2007. 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 is the owner of a renowned wine estate in the French Bordeaux region which is exploited under the name “Chвteau Ducru-Beaucaillou”.

The wine of the Chвteau Ducru-Beaucaillou enjoys a worldwide recognition and reputation as resulting from its classification as a second classified growth (“2иme Cru Classй”) in the historical 1855 classification of the Mйdoc wines and as evidenced by the fact that it is very frequently referred to in both specialized wine-related publications and general publications in France and abroad.

The Complainant is the owner of the following trademarks protecting the names CHВTEAU DUCRU BEAUCAILLOU and DUCRU BEAUCAILLOU for goods in class 33 (essentially for wines):

- French trademark CHATEAU DUCRU BEAUCAILLOU (word and design trademark), n° 1’337’065, registered on January 6, 1976;

- French trademark DUCRU-BEAUCAILLOU (word trademark), n° 1’606’546, registered on July 27, 1990;

- International trademark CHATEAU DUCRU BEAUCAILLOU (word and design trademark), n° 485 276, registered on June 5, 1984;

- US trademark CHATEAU DUCRU BEAUCAILLOU (word trademark), n° 1’314’917, registered on January 15, 1985.

The Complainant is the owner of the domain names <ducrubeaucaillou.fr> and <chateauducrubeaucaillou.fr> (both registered on December 22, 1999), <chateau-ducru-beaucaillou.com> (registered on September 23, 2004), <chateau-ducrubeaucaillou.eu> (registered on April 7, 2006) and <ducru-beaucaillou.eu> (registered on June 7, 2006), all of which are used in relation with the wine estate CHВTEAU DUCRU-BEAUCAILLOU.

The Complainant sent letters to the Respondent (who was the contact person of the previous registrant of the Disputed Domain Name before the Respondent became the registrant of record of the Disputed Domain Name) on November 30, 2005 and January 31, 2007, by which the Complainant requested the transfer of the Disputed Domain Name. These letters remained unanswered.

The Complainant’s counsel (acting in his own name without disclosing that he was acting upon instruction from the Complainant) contacted the Respondent by email of December 20, 2006, and asked him whether the Respondent would “sell (or rent) this domain name [i.e. the Disputed Domain Name] and what would be your conditions”.

By email of December 20, 2006, the Respondent answered as follows:

“I may consider selling the domain however renting the domain to you is not an option, the domain was initially registered in relation to an online wine project which is currently on hold.

I will have to contact the Chateau [i.e. the Complainant] before I make a decision to transfer it to a third party. […]”.

By email of December 21, 2006, the Complainant’s counsel offered a sale price of around USD 4’000.- for the Disputed Domain Name and the Respondent replied by an email of same date: “I have had previous correspondence with the Chateau who have expressed an interest in acquiring it, I am obliged to offer it to them at the price you have offered if they are not in a position to proceed then I am happy to accept your offer”.

Based on the uncontradicted assertions of the Complainant, the Respondent however never contacted the Complainant regarding a potential sale of the Disputed Domain Name.

The Disputed Domain Name was registered on September 23, 2003, and was used to lead visitors to the website “www.register1.net” which offers various Internet services (including domain name registration services) and is operated by Serverstream Ltd. Serverstream Ltd. is connected to the Respondent (the Respondent was the listed contact person of Serverstream Ltd – which was the registrant of record of the Disputed Domain Name before the Disputed Domain Name was transferred to the Respondent personally). However, it appears that the Disputed Domain Name was deactivated around the time these proceedings were initiated by the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on the registration and use of its trademarks and domain names containing the words “Ducru Beaucaillou” and asserts that the Disputed Domain Name is identical or at least nearly identical to them.

The Complainant contends that the lack of a legitimate interest of the Respondent with respect to the Disputed Domain Name is shown by the facts that the Complainant’s DUCRU BEAUCAILLOU name and trademark enjoy worldwide recognition and that the Respondent could not have registered the Disputed Domain Name in good faith. In addition, the lack of legitimate interest is evidenced by the fact that the Complainant has not licensed or otherwise permitted the Respondent neither to use its trademark DUCRU BEAUCAILLOU nor to apply for any domain name incorporating this mark (such as the Disputed Domain Name) and that there is no relation between the Complainant and the Respondent.

The Complainant further alleges that the Respondent has never used the Disputed Domain Name in good faith, since it only profited from the goodwill attached to it in order to attract Internet users to a commercial website (before the Disputed Domain Name was deactivated). The Respondent even considered the possibility of selling the Disputed Domain Name to a third party and alleged that it had been registered with respect to a wine-related project that never materialized (according to the Complainant, this latter assertion is false, since the Complainant never agreed to such a project). Consequently, the Complainant considers that the Respondent wanted to take undue advantage of the reputation of the “Ducru Beaucaillou” name and of the goodwill attached to it.

B. Respondent

In an email sent to the Complainant’s counsel on May 15, 2007, the Respondent rejected the accusation of bad faith by stating that he had been entrapped by the Complainant’s counsel into leading negotiations for the sale of the Disputed Domain Name and that his intention was not to enter into some kind of auction for selling the Disputed Domain Name. In that same email and in another email of same date sent to the registrar of the Disputed Domain Name and to the Center, the Respondent however appears to have agreed to transfer the Disputed Domain Name to the Complainant at no cost.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

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

In this case, no settlement was reached between the parties (which could have lead to the termination of the proceedings pursuant to paragraph 17 of the Rules), in spite of the suspension of the proceedings which was requested by the Complainant on June 1, 2007.

However, the Respondent made statements in the two emails that he sent to the Complainant and to the registrar and the Center respectively on May 15, 2007, by which he agreed to transfer the Disputed Domain Name to the Complainant.

In his email to the registrar and to the Center, the Respondent stated indeed as follows:

“I have informed the complainant that as they have successfully demonstrated the extraordinary lengths that they are prepared to go in their attempts to acquire the domain name I am more than happy to transfer the disputed domain to them as soon as they advise me of their details.

The domain is of little or no interest to me and I will be happy to transfer it to them in full and final settlement of this matter.”

A similar inclination to transfer the Disputed Domain Name to the Complainant is also shown in the Respondent’s email sent to the Complainant’s counsel on May 15, 2007.

It has been found in a number of previous decisions made by other panels that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (of the Policy). See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 which is cited and followed by Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; see also Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.

In this case, the statements made by the Respondent in his emails of May 15, 2007 clearly constitute a “genuine unilateral consent to transfer” the Disputed Domain Name to the Complainant. As a result, it is not necessary in this case for this Panel to apply the paragraph 4(a) elements of the Policy for the purpose of deciding on the issue of the transfer of the Disputed Domain Name to the Complainant. The Panel finds that the unilateral agreement of the Respondent to transfer the Disputed Domain Name to the Complainant constitutes a sufficient ground for this Panel to order such transfer.

However, one issue must still be addressed with regard to the two emails of May15, 2007, in which the Respondent stated his agreement to transfer the Disputed Domain Name to the Complainant were sent with the notice “without prejudice”. The question arises as to whether the statements made by the Respondent in these emails by which he agreed to transfer the Disputed Domain Name to the Complainant can validly be used by this Panel as a basis for a decision of transfer of the Disputed Domain Name.

This Panel has thus to decide whether these materials marked by the Respondent as “without prejudice” can be admitted and considered in these proceedings.

As noted by the Panel in HSBC Holding plc v. Chaudry Cheema, WIPO Case No. D2006-0295, “6.3. The ‘without prejudice’ doctrine is a rule which in some jurisdictions (including England) bars the evidential admissibility of correspondence or discussions between the parties which is conducted with a view to settlement of a dispute. The basis for the rule (at least in English law) lies in public policy and encouraging parties to be able to have a full and open dialogue without fear that matters that are said during such a dialogue will then be used in evidence.”

Decisions of previous panels have taken different views on the extent to which the ‘without prejudice’ doctrine is applicable in UDRP proceedings. This Panel notes in particular the strong reasons plead for its non application in The Vanguard Group Inc v. Emilio Sa, WIPO Case No. D2001-1453, and the view expressed by the panel in that case, that the majority of decisions which have addressed the issue have come down against the application of privilege to ‘without prejudice’ communications. Subsequent decisions have referred to this decision and have consequently refused to apply this doctrine in UDRP proceedings. See McMullan Bros., Limited and others v. Web Names Ltd, WIPO Case No. D2004-0078 and HSBC Holding plc v. Chaudry Cheema, WIPO Case No. D2006-0295.

In this case, this Panel similarly finds that the ‘without prejudice’ doctrine is not applicable and that the unilateral agreement of the Respondent to transfer the Disputed Domain Name to the Complainant as expressed in his emails of May 15, 2007, can be validly considered in these proceedings. One significant reason for this is that the statements at issue do not appear to refer to any confidential information disclosed by the Respondent in the context of settlement discussions but rather express a unilateral agreement of the Respondent to transfer the Disputed Domain Name . As a result, the policy goal of the “without prejudice” doctrine which is to protect a party against the undue disclosure of confidential statements made in the course of settlement discussions is not at issue in this case. In addition to this, the “without prejudice” doctrine is not applicable here because the statements at issue were not only made inter partes but were also communicated to third parties by the Respondent himself (i.e. to the Center and to the registrar of the Disputed Domain Name). See Nabor B.V. Stanhome S.P.A. v. Organization Francisco Vicente, WIPO Case No. D2000-0757 (in which the Panel noted that the document at issue was not inter partes correspondence and therefore that the Respondent’s claims for exclusion could not be sustained).

 

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ducru-beaucaillou.com> be transferred to the Complainant.

---

Jacques de Werra
Sole Panelist

Dated: August 1, 2007