TERRE DA VINO S.P.A v. Divine Earth Group / Terra Divino
Claim Number: FA1310001526725
Complainant is TERRE DA VINO S.P.A (“Complainant”), represented by Richard Whissell of MacRae & Co., Canada. Respondent is Divine Earth Group / Terra Divino (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terradivino.com>, registered with ALPINE DOMAINS INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 28, 2013, ALPINE DOMAINS INC. confirmed by e-mail to the National Arbitration Forum that the <terradivino.com> domain name is registered with ALPINE DOMAINS INC. and that Respondent is the current registrant of the name. ALPINE DOMAINS INC. has verified that Respondent is bound by the ALPINE DOMAINS INC. 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 October 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2013 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@terradivino.com. Also on October 31, 2013, 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.
A timely Response was received and determined to be complete on November 19, 2013.
Complainant’s timely Additional Submission was received and determined to be complete on November 22, 2013.
On November 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a major winery in Piedmont, Italy. It was founded in 1980 and has exported wine, including to North America, since 1998. Complainant registered trademarks for the TERRA DA VINO mark in 2010, 2011 and 2012 in several countries, including Canada and the United States. Complainant also registered the TERREDAVINO mark in the United States in 2012. Complainant owns several domain names including the TERREDAVINO mark registered in 1998, 2002, 2010 and 2011. Complainant contends that Respondent’s <terradivino.com> domain name is confusingly similar to Complainant’s mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and registered and uses the domain name in bad faith.
B. Respondent
Respondent contends that it registered the domain name in 2007, that the term “Terra Divino” means “divine ground” in Italian, has nothing to do with wine and has been used only for purposes of e-mail. Respondent contends that the term is generic and that Complainant has no rights in it. Respondent denies that the disputed domain name is confusingly similar to Complainant’s mark and asserts that it had never heard of Complainant at the time it registered its domain name in 2007. Respondent denies that it registered and uses the disputed domain name in bad faith and accuses Complainant of reverse domain name highjacking.
C. Additional Submissions
In its additional submission, Complainant contends that it used its marks in commerce in the United States for several years prior to 2007 and that its registration of domain names predates the date of Respondent’s registration. Complainant also contends that Respondent made insufficient disclosure of its identity and has provided insufficient information to enable the Panel to credit its vague assertions.
Complainant’s TERREDAVINO mark contains only one different letter than the term “terradivino” in the disputed domain name, and the mark and term are phonetically indistinguishable. No evidence exists that Respondent is commonly known by the disputed domain name. Respondent registered the disputed domain name on September 20, 2007, but merely maintains a website using the name that has never had substantive content, and Respondent merely asserts that substantive content is “coming soon.” Complainant registered domain names incorporating its TERREDAVINO mark as early as 1998 and 2002 and has used its mark in commerce in North America since 1998. Respondent appears to have some relationship with an entity identified as ProxyTech Privacy Services Inc. Registrar Alpine Domains Inc. identified the registrant and billing contact information as:
Divine
Earth Group
Terra Divino
c/o ProxyTech Privacy Services Inc.
P.O. Box 30038 RPO Moncton
Richmond
British Columbia, VTE OA6
CA
Tel. #1.6046286673
Respondent used the name “Leo” in its Response to the Complaint and did not provide any other specific identifying information or details.
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:
(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’s trademark registrations demonstrate its rights in its TERRE DA VINO mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006). In addition, the evidence shows that Complainant acquired common law rights in the mark through its use in worldwide commerce since 1998, coupled with registration of a domain name incorporating its mark as early as 2002. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010). Respondent’s disputed domain name <terradivino.com> is phonetically equivalent to Complainant’s mark and differs from it only in one letter. The use of the top level domain “.com” in the disputed domain name does not affect that analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007). The disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004). Complainant thus has established the first element of its proof.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent thus bears the burden of showing that it does have rights or legitimate interests in the name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent failed to make any allegation relevant to this issue. The record contains no evidence that Respondent is commonly known by the disputed domain name. Respondent’s use of the identifier Divine Earth Group/Terre Divino in its WHOSIS information does not establish that Respondent is commonly known by that identifier. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). Respondent alleges only that it has used the domain name for e-mail purposes. The Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy ¶4(a)(ii). Complainant has thus established the second element of its proof.
Complainant asserts that Respondent’s failure to put the disputed domain name to use on its website for more than six years other than to indicate that substantive content is “coming soon” and to indicate how to contact the owner shows Respondent is attempting to sell the domain name. The Panel finds that this contention is speculative and lacks record support. Complainant has not demonstrated Respondent registered and is using the domain name in bad faith under the illustrative examples of bad faith delineated in Policy ¶ 4(b). Those examples, however, are not exhaustive of evidence of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000).
Past panels have ruled that a respondent’s failure to use a contested domain name over a substantial period of time is suggestive of bad faith registration and use. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006); see also Drinsfield and Ross Ltd. V. N.S. Wolf & Assoc., FA0708001058767 (Nat. Arb. Forum Sept. 25, 2007); see also Pirelli & C.Sp.A. v. Labriz, FA921798 (Nat. Arb. Forum Apr. 12, 2007).
In the present case, Respondent has held the disputed domain name for more than six years under the pretense that its website would soon be activated. The website has remained inactive. Respondent asserts that the domain name is intended to represent the words “divine ground.” No plausible explanation accompanies that assertion. The cursory, vague and combative response provided in its e-mail to Complainant’s counsel from “Leo” undermines the credibility of the response. This circumstance, coupled with the passage of time, absence of evidence of any intent to put the website to bona fide use, and virtual identity of the disputed domain name to Complainant’s mark, lends credence to the likelihood that Respondent has engaged in typosquatting activity. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003).
The panel finds that the evidence is sufficient to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003). Complainant thus has established the third element of its proof. Respondent’s allegation of reverse domain highjacking lacks record support and is without merit. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <terradivino.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: December 6, 2013
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