Constellation Brands U.S. Operations, Inc. and Constellation Brands, Inc. v. Alice White / xoxoAliceWhite
Claim Number: FA1512001650830
Complainant is Constellation Brands U.S. Operations, Inc. and Constellation Brands, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey. Respondent is Alice White / xoxoAliceWhite (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xoxoalicewhite.com>, registered with Tucows 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2015; the Forum received payment on December 3, 2015.
On December 04, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <xoxoalicewhite.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows 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 December 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2015 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@xoxoalicewhite.com. Also on December 10, 2015, 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 January 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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" 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has registered the ALICE WHITE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,200,594, registered Oct. 27, 1998). The mark is used on or in connection with the sale of wine. The <xoxoalicewhite.com> domain name is confusingly similar to the ALICE WHITE trademark because the domain name contains the entire mark and differs only by the addition of the letters “xoxo” (which Complainant argues is descriptive), and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering of goods or services, or a legitimate or noncommercial fair use because the domain name resolves to adult-oriented content.
3. Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business in bad faith. Respondent also registered the domain name with actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent’s Contentions
1. Respondent failed to submit a response in this proceeding.
1. Respondent’s <xoxoalicewhite.com> domain name is confusingly similar to Complainant’s ALICE WHITE mark.
2. Respondent does not have any rights or legitimate interests in the <xoxoalicewhite.com> domain name.
3. Respondent registered or used the <xoxoalicewhite.com> domain name 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:
(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.
In view of 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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers 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.”).
Complainant has registered the ALICE WHITE trademark with the USPTO (Reg. No. 2,200,594, registered Oct. 27, 1998). The mark is used on or in connection with the sale of wine. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <xoxoalicewhite.com> domain name is confusingly similar to the ALICE WHITE trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the letters “xoxo” (which Complainant argues is descriptive), and the gTLD “.com.” It is well-established that the gTLD “.com” is incapable of distinguishing a domain name from the trademark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the domain name contains the entire mark in addition to random letters. See L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition). Thus, the Panel finds that the <xoxoalicewhite.com> domain name is confusingly similar to the ALICE WHITE trademark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known as the <xoxoalicewhite.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ALICE WHITE mark in domain names. The Panel notes that “Alice White” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <xoxoalicewhite.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant alleges that the domain name resolves to a webpage that displays adult-oriented material. The Panel notes Complainant’s attached Exhibit 7, which displays adult-oriented material. Therefore, the Panel declines to grant Respondent rights under Policy ¶¶ 4(c)(i) and (iii). Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by using the domain name to direct Internet users to a webpage displaying adult-oriented material. The Panel again notes that the resolving webpage does contain such adult-oriented content. See Compl., at Attached Ex. 7. While panels have yet to find such behavior to amount to bad faith under Policy ¶ 4(b)(iii), they have found it to consist of generic bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Further, Complainant asserts that its trademark registration for the ALICE WHTIE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xoxoalicewhite.com> domain name be TRANSFERRED from Respondent to Complaint.
John J. Upchurch, Panelist
Dated: January 15, 2015
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