Opus One Winery LLC v. Nicole Legler
Claim Number: FA2003001890266
Complainant is Opus One Winery LLC (“Complainant”), represented by Cliff Kuehn of Dergosits & Noah, LLP, United States. Respondent is Nicole Legler (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opus1.org>, registered with 1&1 IONOS SE.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2020; the Forum received payment on April 3, 2020. The Complaint was submitted in both Spanish and English.
On March 31, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <opus1.org> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@opus1.org. Also on April 8, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Spanish. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
a. to conduct this proceeding in English would not be unfair to Respondent, because Respondent has demonstrated an ability to understand and communicate in English.
b. Respondent’s website located at the disputed domain name is entirely in English.
c. the disputed domain name is rendered in English.
d. Respondent’s email address (mail@sailing-events.com) is also in English.
e. Respondent’s website offers Internet users the option of viewing the site in English or Spanish.
f. Complaint would be put to undue translation expense and delay if Spanish were to be the language of the proceeding.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant produces and sells wine.
Complainant holds a registration for the OPUS ONE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,341,372, registered June 11, 1985, and renewed as of December 27, 2014.
Respondent registered the domain name <opus1.org> on or about December 13, 2019.
The domain name is confusingly similar to Complainant’s OPUS ONE mark.
Respondent is not licensed or otherwise authorized to use Complainant’s OPUS ONE mark.
Respondent has not been commonly known by the domain name.
Respondent does not use the domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use.
In fact, Respondent does not employ the domain name to offer either goods or services.
Instead, Respondent, for its commercial gain in the form of click-through fees, uses the domain to display at a resolving webpage sponsored links that divert internet traffic to other webpages offering wine in competition with the business of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent knew of Complainant’s rights in the OPUS ONE mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the OPUS ONE trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a UDRP complainant had established rights in marks where those marks were registered with a national trademark authority).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Spain). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <opus1.org> domain name is substantively identical and confusingly similar to Complainant’s OPUS ONE trademark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the substitution of the numeral “1” for the phonetically identical word “one” plus the addition of the generic Top Level domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity and confusing similarity under the standards of the Policy. See, for example, Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to a UDRP complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.). See also Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of a UDRP complainant and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, Respondent’s deletion of the space between the terms of Complainant’s mark in creating the domain name is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces,
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <opus1.org> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <opus1.org> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the OPUS ONE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Nicole Legler,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent, for its commercial gain in the form of click-through fees, uses the domain to display at a resolving webpage sponsored links that divert internet traffic to other webpages offering wine in competition with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that a respondent failed to provide evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name that resolved to a website offering hyperlinks to the websites of enterprises operating in competition with the business of a UDRP complainant).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s <opus1.org> domain name, which we have found to be substantively identical and confusingly similar to complainant’s OPUS ONE trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Plain Green, LLC v. wenqiang tang, FA1621656 (Forum July 1, 2015) (finding that a respondent’s use of a disputed domain name to profit by featuring third-party hyperlinks on a resolving webpage constituted bad faith registration and use of that domain name under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the OPUS ONE mark when it registered the <opus1.org> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s mark, and therefore bad faith registration of a confusingly similar domain name] through the name used for the domain and the use made of it.
See also University of Rochester v. Park HyungJin, FA1587458 (Forum December 9, 2014):
[T]he Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the … mark in the … domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <opus1.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 5, 2020
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