Winehaven, Inc. v. Discount Glass Co. LLC
Claim Number: FA0908001281224
Complainant is Winehaven
Inc. (“Complainant”), represented by Kyle
T Peterson of Patterson Thuente Skaar & Christensen
P.A., Minnesota, USA. Respondent is Discount Glass Co. LLC (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thewinehaven.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 24, 2009; the National Arbitration Forum received a hard copy of the Complaint August 26, 2009.
On August 25, 2009, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <thewinehaven.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 2009, 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@thewinehaven.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <thewinehaven.com>, is confusingly similar to Complainant’s WINEHAVEN mark.
2. Respondent has no rights to or legitimate interests in the <thewinehaven.com> domain name.
3. Respondent registered and used the <thewinehaven.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Winehaven Inc., produces and sells award-winning wine and wine-related items. Complainant is the owner of the WINEHAVEN mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,179,513 issued August 4, 1998).
Respondent, Discount Glass Co. LLC, registered the <thewinehaven.com> domain name December 12, 2007. The disputed domain name resolves to Respondent’s commercial website selling wine and wine-related products that are in direct competition with Complainant’s business.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel finds appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant submits evidence of its registration for the WINEHAVEN mark with the USPTO (Reg. No. 2,179,513 issued August 4,1998). The Panel concludes that this is sufficient for Complainant to establish rights in the WINEHAVEN mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Complainant contends that Respondent’s <thewinehaven.com> domain name is confusingly similar to its WINEHAVEN mark under Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s WINEHAVEN mark in its entirety with the mere addition of the article “the” and the affixation of the generic top-level domain “.com.” The Panel finds that these modifications do not sufficiently distinguish the disputed domain name from Complainant’s WINEHAVEN mark under Policy ¶ 4(a)(i). Thus, the Panel finds that Respondent’s <thewinehaven.com> domain name is confusingly similar to Complainant’s WINEHAVEN mark pursuant to Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the generic word “the” to the beginning of the domain names fails to make them separate and distinct.”); see also Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO Jul. 7, 2000) (finding that the addition of a generic top-level domain is “not relevant” to determining similarity, since it is required, necessary, and functional).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the <thewinehaven.com> domain name. Upon satisfaction of such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Respondent did not respond to the allegations against it. Thus, the Panel may presume that Respondent lacks rights and legitimate interests in the <thewinehaven.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). However, the Panel will still examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent’s <thewinehaven.com> domain name resolves to Respondent’s commercial website offering wine and wine-related products for sale that are in direct competition with Complainant. The Panel presumes that Respondent profits through the sale of these wine products. Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Furthermore, Complainant asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant as “Discount Glass Co. LLC” and no other information in the record suggests that Respondent is otherwise commonly known by the <thewinehaven.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <thewinehaven.com>
domain name, which was registered on December 12, 2007, redirects Internet
users to Respondent’s commercial website that offers competing wine products
for sale. The Panel finds that this
diversion of Internet users to Respondent’s confusingly similar disputed domain
name disrupts Complainant’s business and thus, constitutes bad faith
registration and use under Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Am. Online, Inc. v. Tapia,
FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet
traffic that seeks out the <aol.tv>
domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s commercial website, resolving from the confusingly similar <thewinehaven.com> domain name, markets wine and wine-related products that are in direct competition with Complainant’s business. The Panel finds that Respondent is using the disputed domain name to generate revenue through its offering of competing services and by confusing Internet users as to Complainant’s affiliation with the disputed domain name and resolving website. Thus, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thewinehaven.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 12, 2009.
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