Opus.es : Seemingly generic #domain lost in #UDRP due to serving wine PPC ads

Opus is the Latin word for work of art, but in the world of trademarks and brands it all depends on use.

The registrant of the domain Opus.es found out via the UDRP process that displaying PPC ads about wine constitutes trademark infringement.

Opus One Winery LLC filed the UDRP at the WIPO, to protect its OPUS trademarks that are related to wine. The Respondent did not seem to understand what was going on exactly, and their response was minimal. From our understanding, they intended to use the domain Opus.es as a “hack” that forms the plural of the word opus, “opuses.”

Unfortunately for them, the parking ads at Sedo were all about wine and the sole panelist at the WIPO ordered the domain to be transferred to the Complainant.

WIPO Arbitration and Mediation Center
EXPERT DECISION
Opus One Winery LLC v. Domraider
Case No. DES2020-0043

1. The Parties

The Claimant is Opus One Winery LLC, United States of America, represented by Elzaburu, Spain.

The Respondent is DomRaider, France.

2. The Domain Name and the Registrar

The Lawsuit is aimed at the disputed domain name <opus.es>.

The Registry of the aforementioned domain name in dispute is Red.es. The Registrar of the domain name in dispute is OVH Hispano.

3. Procedural Iter

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2020. On October 19, 2020, the Center sent Red.es a request for registration verification by email at relation to the disputed domain name. On October 20, 2020, Red.es sent the Center by email, its response confirming that the Respondent is the person listed as the registrant, providing in turn the administrative, technical and billing contact details.

The Center verified that the Complaint met the formal requirements of the Regulation of the extrajudicial dispute resolution procedure for domain names under the country code corresponding to Spain (“.ES”) (the Regulation).

In accordance with Articles 7a) and 15a) of the Regulations, the Center formally notified the Demand to the Respondent, starting the procedure on October 21, 2020. In accordance with Article 16a) of the Regulations, the deadline for answering the Demand was set for November 10, 2020. On October 26, 2020, the administrative and technical contact person sent the Center an email in English, which was answered by the Center on November 4, 2020. Respondent did not answered the Lawsuit. The Center notified the Respondent of the beginning of the Expert appointment process on November 11, 2020.

The Center appointed Reyes Campello Estebaranz as Expert on November 16, 2020, receiving the Declaration of Acceptance and Impartiality and Independence, in accordance with article 5 of the Regulations. The Expert considers that his appointment follows the rules of procedure.

4. Factual Background

The Claimant is an American wine company that has been involved in the production of wines since 1982 and has been marketed internationally since 1985 (including Europe and Spain). The Claimant promotes and markets its wines, through physical stores and the Internet, its fundamental tools being the websites of authorized online stores in the sector, as well as its own official website under the domain name <opusonewinery.com> (registered on October 21, 1998), which includes specific sections in different languages ​​for the various markets in which it operates, including a section in Spanish.

The Claimant operates under a set of trademarks that consent to or consist of the name “opus”, specifically, OPUS, OPUS ONE and MAGNUM OPUS, (collectively the “OPUS trademarks”), being the owner of international registration numbers, of the which are sufficiently representative for the purposes of this proceeding:

The European Union Trademark No. 800391 OPUS, registered on September 14, 1999, in class 33;

International Trademark No. 877324 OPUS, registered on February 8, 2006, in class 33, designating, among other jurisdictions, the European Union;

The European Union Mark No. 3263076 OPUS ONE, registered on February 8, 2005, in class 33;

The International Trademark No. 878328 OPUS ONE, registered on February 8, 2006, in classes 33, 41 and 43, designated among other jurisdictions the European Union; Y

The European Union Mark No. 2625804 MAGNUM OPUS, registered on August 14, 2003, in class 33.

The domain name in dispute was registered on December 10, 2019 and is linked to a domain parking web page that contains various links to third party pages, as well as a link to the web page “www.sedo.com” which offers its possible transfer by auction for a minimum price of EUR 500. In particular, one of the links to third party pages in the disputed domain name is directly associated with the name of the Claimant and with the products offered by the Claimant : “BUY OPUS ONE WINE – WINE DELIVERY MADE EASY”.

5. Arguments of the Parties

A. Claimant

The Claimant maintains in the Complaint that:

Due to the good work and establishment in the international market for nearly forty years, the wines marketed by the Claimant and its OPUS brands are internationally well-known.

The domain name in dispute fully reproduces the main element of the Claimant’s corporate name, which consists exclusively or principally of the OPUS brands, being confused with these well-known brands of world prestige.

The Respondent has no legitimate rights or interests over the disputed domain name. The domain name in dispute does not correspond to the name of the Respondent, furthermore, given the international and national notoriety of the OPUS trademarks, it is unlikely that the Respondent will be able to claim any type of right or legitimate interest.

The disputed domain name has been registered and is being used in bad faith. Given the notoriety of the OPUS trademarks, it can be presumed that the Respondent was aware, when it registered the disputed domain name, that it was appropriating a trademark and thereby hindering the Claimant’s position. After practically a year has elapsed since its registration, the domain name in dispute is subject to passive possession, linked to a domain parking web page where a link is included that offers its possible transfer by auction with a minimum price of EUR 500, as well as other links to third party websites that include some specialized in the marketing of wine or alcoholic beverages unrelated to the Claimant.The domain name in dispute is used in bad faith with the intention of attracting traffic to the web page of promotional links, trying to take undue advantage of the reputation achieved by the Claimant.

The Claimant cites several decisions adopted by virtue of the Regulation and the Uniform Policy for the resolution of controversies in matters of domain names (hereinafter “Policy”), which it considers applicable to the case and requests the transfer of the domain name in dispute.

B. Respondent

The Respondent did not respond to the Claimant’s allegations. However, on October 26, 2020, the administrative and technical contact person, after receiving the Written Notice, sent the Center an email in English requesting information to understand the situation. The Center responded to the request on November 4, 2020, requesting that it forward the notice of the Lawsuit and its attachments to the registrant of the disputed domain name (i.e., DomRaider). No additional communication was received by the Center.

6. Discussion and conclusions

In accordance with Article 2 of the Regulations, in order to consider that the registration of a domain name is speculative or abusive, the applicant must prove the cumulative concurrence of the following requirements:

1) That the domain name is identical or similar to the point of creating confusion with another term on which the plaintiff claims to have Prior Rights; Y

2) That the defendant lacks rights or legitimate interests over the domain name; Y

3) That the domain name has been registered or used in bad faith.

The resolution of the present case is carried out based on the statements and documents provided by the parties, taking into consideration the Regulations themselves and the doctrine emanating from the decisions adopted within the framework of their application, as well as the doctrine emanating from the decisions adopted in application of the Policy, given the similarities of the Regulation with the Policy, and the Synopsis of the opinions of the expert groups on certain issues related to the UDRP Policy, third edition (“ Synopsis prepared by WIPO 3.0 ”).
A. Identity or similarity to the point of causing confusion with another term over which the Claimant claims to have Prior Rights

First, it must be examined whether the Claimant holds Prior Rights within the meaning of the Regulations. As such, article 2 of the Regulation considers, among others, the names of entities validly registered in Spain, trade names, registered trademarks or other industrial property rights protected in Spain.

The Claimant has proven to be the owner of several trademarks that contain or consist of the denomination “opus”, which are registered in the European Union or internationally with effects in the European Union, being valid in Spain. Consequently, the Expert considers that the Claimant holds Prior Rights for the purposes of the Regulations on the name “opus”.

The distinctive used by the Claimant as a trademark to identify itself in the market and carry out its activity (in the OPUS brand) or the main element of the logo used by the Claimant (in the OPUS ONE and MAGNUM OPUS brands), is reproduced in an identical way and in full in the disputed domain name, without adding any other element, except the country code top-level domain (“ccTLD”) “.es”, which due to its technical nature is irrelevant in the analysis of the first budget of the Regulation. The domain name in dispute is therefore identical to the OPUS trademark and confusingly similar to the OPUS ONE and MAGNUM OPUS trademarks, which constitute the Claimant’s Prior Rights, considering, therefore, that the Expert has fulfilled the first requirement contained in Article 2 of the Regulation.

B. Legitimate rights or interests

The analysis of whether the Respondent has legitimate rights or interests over the domain name in dispute must be based on the allegations and evidence presented by both parties, with the Claimant being the one who bears the burden of proving that the Respondent lacks legitimate rights or interests. . However, given the difficulty of this negative test, it constitutes a consolidated principle in relation to the test of this requirement, that it is enough for the plaintiff to prove prima facie the absence of legitimate rights or interests, since the defendant will have the opportunity to prove otherwise with the relevant allegations or evidence. This has been indicated by numerous decisions adopted within the framework of the Policy and Regulation. See in this regard section 2.1 of theSynopsis produced by WIPO 3.0 .

The evidence presented by the Claimant proves prima facie the absence of legitimate rights or interests over the domain name in dispute on the part of the Respondent and the Respondent has not replied to the Claimant, having provided no evidence that disproves the prima facie evidence presented. by the Claimant, a circumstance that must be assessed together with the others in the case, not determining in itself a decision favorable to the Claimant’s claims.

By not replying to the Complaint, no evidence has been provided by the Respondent regarding any possible use or preparations for the use of the disputed domain name in connection with a good faith offer of products or services or a legitimate use. and loyal or non-commercial thereof. The Expert notes that, despite the fact that the registration of the disputed domain name took place about a year ago, the disputed domain name does not contain content, being linked to a domain parking web page that includes Pay- Per-Clik (“PPC”) to third-party web pages, as well as a link to the Sedo platform that offers the possible transfer of the disputed domain name by auction, for a minimum price that exceeds its registration costs (EUR 500).

The Expert has also been able to verify that one of the links to which the disputed domain name redirects refers directly to the Claimant: “BUY OPUS ONE WINE – WINE DELIVERY MADE EASY”. According to section 2.9 of the Synopsis prepared by WIPO 3.0 , the Experts have considered that the use of a domain name to host a parked page that includes PPC links does not represent a bona fide offer when such links compete with or are They take advantage of the plaintiff’s brand reputation or mislead Internet users.

These circumstances lead the Expert to conclude that the allegations and prima facie evidence presented by the Claimant have not been disproved by the Respondent or by the circumstances of the case, and the second requirement required by Article 2 of the Regulations must be considered fulfilled.

C. Bad faith registration or use of the domain name

The third requirement that must be met in order to consider that there is a speculative or abusive registration of a domain name is that it has been registered or used in bad faith.

In relation to this third element or requirement, the standard of proof applicable both in the cases of the Policy and the Regulation is the “balance of probabilities” or “preponderance of the evidence”, the Expert being prepared to draw certain inferences in light of the facts and particular circumstances of the specific case. See sections 3.3 and 4.2 of the WIPO Synopsis 3.0 .

The circumstances of this case point, in a balance of probabilities, to the registration and use of the domain name in dispute in bad faith:

(i) the OPUS brands are well known within the meaning of the Regulation and Policy in the wine sector at the international level;

(ii) the Claimant operates at an international level, including the European Union, promoting and marketing its products both through physical stores and, mainly, through specialized online sales platforms of the sector belonging to third parties and on its own page web (under the domain name <opusonewinery.com>), which contains a specific section in Spanish;

(iii) the domain name in dispute is linked to a Sedo domain parking web page, which includes PPC links to third-party pages, one of which is directly associated with the name of the Claimant and with the products offered by the Claimant: “BUY OPUS ONE WINE – WINE DELIVERY MADE EASY”;

(iv) on the same parking page to which the disputed domain name is linked, a link is included that offers its possible transfer by auction with a minimum price that exceeds its normal registration costs (EUR 500);

(v) the Respondent has not replied to the Demand, not having accredited any type of right or legitimate interests over the domain name in dispute, nor having refuted the Claimant’s allegations of bad faith.

These circumstances determine that, on a balance of probabilities, the Expert considers that the Respondent knew or should have known about the existence of the Claimant’s OPUS brands, pointing to the Claimant’s well-known brands when it proceeded to register the domain name in dispute. , in order to prevent the Claimant from registering its trademark under the ccTLD “.es” and to obtain some type of economic profit derived from the registration, by its possible transfer to the Claimant or a third party, or by the use of the name domain name to host promotional PPC links to third party web pages from which some kind of financial gain is presumably derived for the Respondent.

The Expert considers, therefore, that there are circumstances in this case that allow concluding the existence of bad faith in the registration and in the use of the domain name in dispute, considering that the Respondent, knowing the existence of the OPUS trademarks, proceeded to the registration of the domain name in dispute pointing to these, with the intention of obtaining an economic profit (derived from the transfer of the domain name in dispute or the creation of a false association and confusion with the Claimant’s brands). The third condition established in article 2 of the Regulation is thus deemed fulfilled.

7. Decision

For the reasons stated, in accordance with article 21 of the Regulations, the Expert orders that the domain name <opus.es> be transferred to the Claimant.

Reyes Campello Estebaranz
Expert
Date: November 26, 2020

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