DECISION

 

Vinotemp International Corporation v. American Wine Essentials

Claim Number: FA0112000102740

 

PARTIES

Complainant is Vinotemp International Corporation, Rancho Dominguez, CA (“Complainant”) represented by Marvin H. Kleinberg, of Kleinberg & Lerner, LLP.  Respondent is American Wine Essentials, Milpitas, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <winemate.com>, registered with NamesDirect.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 5, 2001.

 

On December 11, 2001, NamesDirect.com, Inc. confirmed by e-mail to the Forum that the domain name <winemate.com> is registered with NamesDirect.com, Inc. and that Respondent is the current registrant of the name.  NamesDirect.com, Inc. has verified that Respondent is bound by the NamesDirect.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@winemate.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

 

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.”  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 any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

Respondent’s <winemate.com> domain name is identical to Complainant’s WINE-MATE registered trademark.

 

Respondent does not have any rights or legitimate interests in the disputed domain name.

 

Respondent registered and used the domain name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Complainant registered its WINE-MATE trademark (Reg. No 1,994,725) on the Principal Register of the United States Patent and Trademark Office on August 20, 1996.   Moreover, Complainant has been using the WINE-MATE mark in association with its services and wine storage goods since June of 1987.

 

Respondent registered the disputed domain name on April 18, 1999, well after Complainant registered the WINE-MATE trademark. Complainant and Respondent are direct competitors in Complainant’s primary business of selling wine storage products such as wine cellars and racks.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

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

 

(1) 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

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

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

 

Identical and/or Confusingly Similar

Complainant has demonstrated it has rights in the WINE-MATE trademark through its registration of the mark on the Principal Register of the United States Patent and Trademark Office and through commercial use.

 

The disputed domain is identical to Complainant’s WINE-MATE trademark because the addition of a top level like “.com” and a hyphen to the domain is not relevant when determining if the two are identical.  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name <info-space.com> is identical to Complainant’s INFOSPACE trademark.  The addition of a hyphen and .com are not distinguishing features”); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Because Respondent’s domain name incorporates Complainant’s trademark in its entirety and provides services and products similar to those of Complainant, the likelihood of an Internet user becoming confused as to the affiliation and association of the domain name with Complainant’s business makes them confusingly similar.   See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

 

            The Panel finds that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

The Panel is permitted to make all inferences in favor of Complainant when Respondent fails to submit a Response.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

Respondent’s failure to provide a Response indicates that Respondent has no rights or legitimate interests.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Respondent’s use of the infringing domain name to advertise and sell its competing services and wine storage products does not grant it rights or legitimate interests because this is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).  Moreover, Respondent’s use of a domain name identical to Complainant’s mark to sell competing products reveals Respondent’s attempt to divert Internet users to its site through confusion as to its affiliation with Complainant’s wine storage business.  This activity is not a bona fide offering of goods.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

 

Respondent, known as American Wine Essentials, is not believed to be, nor has it provided any evidence that it is commonly known by either the WINE-MATE mark or the <winemate.com> domain name.  As a result, Respondent is not presumed to have rights pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Because Respondent operates in the same business as Complainant, and is not commonly known by Complainant’s trademark or the domain name, Respondent’s use of a domain name identical to Complainant’s mark is likely to be an attempt to divert Complainant’s customers to Respondent’s competing services.  This activity is not considered a noncommercial or a fair use pursuant to Policy ¶ 4(c)(iii).  As a result, Respondent is considered not to have rights or legitimate interests in the domain.  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

           

Registration and Use in Bad Faith

Because Respondent offers goods and services in the same specialized field as Complainant and uses Complainant’s name in its entirety in the disputed domain name, it is impossible for Respondent not to have created a false impression of association with Complainant’s business.  As a result, under the totality of the circumstances, Respondent is determined to have registered and used the disputed domain name in bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

 

Moreover, given the competitive relationship between Complainant and Respondent, it is likely Respondent registered the disputed domain to disrupt Complainant’s business and profit from the resulting confusion by Internet users.  This indicates that Respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

The Panel has found that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <winemate.com> be hereby transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

 

Dated: January 16, 2002