The Trustees of the Williamson Family Trust, comprised of William Williamson and Dawn Williamson, as Trustees v. Domain Administrator / Williamson Orchards & Vineyards
Claim Number: FA1707001740611
Complainant is The Trustees of the Williamson Family Trust, comprised of William Williamson and Dawn Williamson, as Trustees (“Complainant”), represented by Hae Park-Suk of Nixon & Vanderhye, P.C., Virginia, USA. Respondent is Domain Administrator / Williamson Orchards & Vineyards (“Respondent”), represented by Elijah M. Watkins of Stoel Rives LLP, Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <williamsonwine.com> and <williamson.wine>, registered with MarkMonitor Inc.
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.
David L. Kreider as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2017; the Forum received payment on July 19, 2017.
On Jul 20, 2017, MarkMonitor Inc. confirmed by e-mail to the Forum that the <williamsonwine.com> and <williamson.wine> domain names are registered with MarkMonitor Inc. and that Respondent is the current registrant of the names. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 July 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2017 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@williamsonwine.com, postmaster@williamson.wine. Also on July 25, 2017, 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 August 17, 2017.
On August 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider as Panelist.
On August 22, 2017, Complainant made a supplemental submission. Although this Panel did not request the supplemental submission, the Panel has considered the supplemental submission.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, the Trustees of the Williamson Family Trust, comprised of William J. Williamson and Dawn C. Williamson as trustees, owns a United States trademark registration for the mark WILLIAMSON WINES, Registration No. 4688185, for wines, filed on June 27, 2014 and registered on February 17, 2015.
Complainant first used the trademark WILLAMSON WINES in July 2004, in connection with wines, and has been using the WILLIAMSON WINES mark continuously and extensively since this date. Acquired distinctiveness under Section 2(f) is claimed as to the portion of the mark WILLIAMSON, in view of the more than 10-years of substantially exclusive and continuous use of the mark WILLIAMSON. The term WINES has been disclaimed in the registration.
Accordingly, Complainant has established rights in its WILLIAMSON WINES mark through its trademark registration pursuant to Policy ¶ 4(a)(i). A federal registration constitutes prima facie evidence of the registrant’s exclusive ownership of, and exclusive rights in, the registered trademark. Lanham Act, 15 U.S.C. §1057(b).
In addition, Complainant asserts common law rights in the mark WILLIAMSON WINES since at least as early as July 2004, offering wines, wine-tastings, vineyard services, wine and food events, helicopter tastings, and wine-related goods and services under this trademark.
Since March 19, 2003, Complainant has owned, through its Trustee, William (Bill) J. Williamson of Williamson Wines, the domain name <WILLIAMSONWINES.COM>, through which Complainant’s goods and services are promoted and advertised. Over the years, Complainant’s wines have received industry recognition and numerous awards.
All alcohol labels must be registered with the Alcohol and Tobacco Tax and Trade Bureau (“TTB”) Certificate of Label Approval/Exemption (“COLA”) Registry. Presently, with the TTB COLA Registry, Complainant has registered at least 189 Brand Names for WILLIAMSON WINES.
Prior to Respondent’s registration of the earlier disputed domain name WILLIAMSONWINE.COM, on May 24, 2007, Complainant had registered at least 13 COLA registrations already recorded with the TTB COLA Registry. Prior to Respondent’s registration of the earlier disputed domain name WILLIAMSON.WINE, on January 27, 2016, Complainant had registered at least 176 COLA registrations already recorded with the TTB COLA Registry.
[a.] Disputed Domain Names are identical or confusingly similar to
Complainant’s registered and common law trademarks. UDRP Rule
3(b)(ix)(1); UDRP Policy ¶ 4(a)(i).
According to ICANN WhoIs, the disputed Domain Name <WILLIAMSONWINE.COM> was registered on May 24, 2007, with the registrar MarkMonitor. The disputed Domain Name <WILLIAMSON.WINE> was registered on January 27, 2016, with the registrar MarkMonitor. Both names are presently registered to Respondent.
Both disputed domain names, <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE>, are identical or confusingly similar to Complainant’s registered and common law trademark, WILLIAMSON WINES. The literal element of both disputed domain names is “Williamson Wine,” which is identical to, and wholly incorporated within Complainant’s registered and common law trademark WILLIAMSON WINES.
Respondent’s use of the singular form of the generic term WINE does not change the commercial impression of the mark, and is insufficient to avoid a likelihood of confusion. “Past panels have found confusing similarity between a complainant’s mark and a respondent’s disputed domain name where the respondent’s domain name simply lacked the letter “s.” See Ferring B.V. v. John Mastrell / ferringpharmaceutical, FA1508001632792 (Forum Sept. 9, 2015) (the domain name <ferringpharmaceutical.com> was confusingly similar to Complainant’s mark FERRING PHARMACEUTICALS, as it merely uses the singular form of the word “pharmaceuticals” and adds the gTLD.com).
At all times since Respondent obtained both disputed domain names up to the present, both domain names automatically redirect Internet users to Respondent’s official website, <WILLORCH.COM>. Respondent’s official website displays Respondent’s trademark WILLIAMSON ORCHARDS & VINEYARDS.
The literal element of both disputed domain names, “Williamson Wine” does not appear anywhere on Respondent’s official website <WILLORCH.COM>.
Respondent’s goods and services are identical to Complainant’s goods and services, namely, wines, wine-tastings, vineyard and wine-related goods and services.
Complainant respectfully submits that the trademark comprising both disputed domain names, WILLIAMSON WINE, is legally identical and highly similar to a trademark in which Complainant has registered and common law rights. As both disputed domain names are used to automatically redirect to Respondent’s official website featuring identical goods and services, there is a high likelihood of confusion with Complainant. Internet users searching for Complainant, and being automatically redirected to Respondent’s official website, <WILLORCH.COM> will be confused into believing that they have arrived at Complainant’s website.
Accordingly, Complainant requests that this first requirement be resolved in Complainant’s favor.
[b.] Respondent has no rights or legitimate interest in either of the disputed Domain Names. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii).
Respondent has no rights or legitimate interests in either disputed domain names <WILLIAMSONWINE.COM> or <WILLIAMSON.WINE>. Respondent is not presently using and has never used the mark comprising the disputed domain names WILLIAMSON WINE, in connection with a bona fide offering of goods or services.
Both disputed domain names are registered to Williamson Orchards & Vineyards. Respondent is not commonly known by the trademark contained in both disputed domain names, WILLIAMSON WINE. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy 4(c)(ii)); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The fact that Respondent’s surname is also WILLIAMSON does not, in itself, establish that Respondent has a right or legitimate interest in a domain name containing the word “WILLIAMSON,” particularly when it is combined with the word “WINE,” in direct identity to and competition with Complainant’s trademark WILLIAMSON WINES. See Finkl & Sons Co. v. James Finkl, FA1506001623405
(Forum July 22, 2015) (finding Respondent had no rights or legitimate interest in disputed domain name <finklsteel.com> where “there is no evidence supporting that Respondent is commonly known under the association of words ‘FINKL’ and ‘STEEL.’ In fact, it is precisely the association of Respondent’s surname ‘FINKL’ with the word ‘STEEL’ that is problematic because it unequivocally makes reference to Complainant’s mark FINKL STEEL”); see also
Irish Distillers Limited v. James Powers, WIPO Case No. D2010-2008 (“The fact that the Respondent’s surname is “Powers” does not, of itself, establish that the Respondent has a right or legitimate interest in a domain name containing the word “powers.” It is to be noted that the disputed domain name contains, in addition to the word “powers,” the word “whiskey”).
Respondent has never used, and is not presently using, the trademark WILLIAMSON WINE in connection with any active websites to be found at <WILLIAMSONWINE.COM> or <WILLIAMSON.WINE>, or on Respondent’s active website at <WILLORCH.COM>, on or in connection with a bona fide offering of goods or services.
Both disputed domain names automatically redirect visitors to the website <WILLORCH.COM>, on which Respondent’s trademark “WILLIAMSON ORCHARDS & VINEYARDS” prominently appears. The mark comprising the disputed Domain Name, WILLIAMSON WINE, does not appear anywhere on the website <WILLORCH.COM>.
According to the free Internet Archive service, The Wayback Machine, available at <ARCHIVE.ORG>, the earliest captured page of the disputed Domain Name <WILLIAMSONWINE.COM> was on February 8, 2011, and all subsequent captured pages, show visitors being automatically redirected to <WILLORCH.COM>. Complainant submits that “Panels frequently reference the Wayback Machine in order to determine how a domain name has been used in the past. See NKEM, Inc. d/b/a CYMED v. Hangang systems Inc., FA 1701001711761 (Forum March 9, 2017) (finding Complainant has shown the content of a website on a certain date in the past by submitting a printout from the “Wayback Machine” at www.archive.org”); See also CircleBack Lending, Inc. v. Andy Tang, FA1603001667870 (Forum April 28, 2016) (“Evidence from the Internet Archive’s Wayback Machine shows that Complainant has been promoting its services to borrowers and investors through its circlbacklending.com website since at least October 20, 2012).
According to the online service “Redirect Detective,” the disputed Domain Name WILLIAMSONWINE.COM is shown to be permanently redirected to the website located at <WILLORCH.COM>.
Per the ICANN WhoIs records, the disputed Domain Name <WILLIAMSON.WINE> was registered on January 27, 2016. There are no pages yet captured by the Internet Archive Wayback Machine. According to the online service “Redirect Detective,” the disputed Domain Name WILLIAMSON.WINE is shown to be permanently redirected to the website located at <WILLORCH.COM>.
Respondent has never used, and is not presently using, the trademark WILLIAMSON WINE in connection with any wines. None of the bottles of wine featured on Respondent’s website <WILLORCH.COM> show the trademark WILLIAMSON WINE. Rather, Respondent’s wine bottles show the trademark WILLIAMSON VINEYARDS.
Respondent’s “Press Kit” featured at <WILLORCH.COM> includes a “Price List,” “Fact Sheet,” and “Tasting Notes,” all referring “Williamson Vineyards Price Sheet,” “Williamson Orchards & Vineyards Fact Sheet,” “Williamson Orchards & Vineyards,” respectively. Complainant located only one use of the disputed Domain Name <WILLIAMSON.WINE> on the letterhead of the Price Sheet.
Respondent has no legitimate right or interest in the trademark comprising the disputed Domain Names, WILLIAMSON WINE, and has caused Internet visitors to be automatically diverted to Respondent’s own website, to the commercial detriment of Complainant. See Registros Internacionales Aplicados, S.L. v. RAFAEL ESCALAS/AGON SPORT LLC, FA1504001615317 (Forum June 2, 2015) (finding no use of the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use where Respondent’s “resolving website evidently sells products which directly compete with Complainant’s business purposes”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy paragraph 4(c)(i) of the Policy and it is not a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.”).
Complainant respectfully submits that Respondent has no right or legitimate interest in each of the disputed Domain Names, and requests that this second requirement be resolved in Complainant’s favor.
[c.] Respondent registered and is using both disputed Domain Names in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii).
The present facts fall squarely within at least two of the four specifically delineated circumstances set forth in Paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith, namely, that “Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor” and “by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
Respondent has registered the disputed Domain Names and is using the disputed Domain Names in bad faith to automatically redirect Internet visitors to Respondent’s own official website at <WILLORCH.COM>, which offers the identical or highly similar goods as those of Complainant. See Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Forum October 30, 2000) (respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant); Wells Fargo & Company v. Jim Matzen, FA0807001216163 (Forum Aug. 29, 2008) (bad faith registration and use the domain name <bankownedwellsfargo.com> when used to direct Internet users to a site offering financial services competing with those of the Complainant); Respondent failed to meet it obligation imposed under Section 2 of the UDRP Policy requiring that the domain name registrant represents that the registration of the domain name will “not infringe upon or otherwise violate the rights of any third party” and that it is the registrant’s “responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Prior to registering the disputed Domain Name <WILLIAMSONWINE.COM> in May 2007, in a simple Internet search, Respondent would have discovered
Complainant’s use and rights in the trademark WILLIAMSON WINES as well as
Complainant’s website at <WILLIAMSONWINES.COM>, registered since at least as early as March 2003.
Prior to registering the disputed Domain Name <WILLIAMSONWINE.COM> in May 2007, in a simple search of any WhoIs database, Respondent would have discovered Complainant’s domain name <WILLIAMSONWINES.COM>, registered by Complainant since March 2003.
Since all alcohol labels must be registered with the U.S. Department of Treasury COLA registry (“TTB COLA Registry”), it is reasonable to conclude that Respondent is aware of the TTB COLA public registry and online search database. Indeed, Respondent has registered its own Brand Names, including at least five registrations for “Williamson Vineyards,” although it does not own any registrations for “Williamson Orchards & Vineyards,” or “Williamson Orchards” or “Williamson Wine.” Notably, Respondent has not registered any labels for “Williamson Wines.”
Prior to registering the disputed Domain Name <WILLIAMSONWINE.COM> in May 2007, had Respondent conducted a simple search of the TTB COLA registry, Respondent would have discovered Complainant’s 13 (of the 189 current total) COLA registrations for the Brand Name WILLIAMSON WINES that were registered before that date.
Respondent failed to meet its obligations under Section 2 when it registered this disputed Domain Name without investigating and ensuring that its registration of the disputed Domain Name did “not infringe upon or otherwise violate the rights of” Complainant.
At the time Respondent registered the disputed Domain Name <WILLIAMSONWINE.COM>, on May 24, 2007, Respondent did not use WILLIAMSON WINES as a trademark, and knew or should have known of Complainant’s use and rights in the mark WILLIAMSON WINES, for example, through Complainant’s participation in the same channels of trade as Respondent, and within the same geographic region as Respondent.
Both Complainant and Respondent offer identical goods and services, namely, wines, vineyards and wine-related goods and services, and both are offered within the same geographic region. Respondent’s vineyard, in Caldwell, Idaho, is located in the same Pacific Northwest region as Complainant’s vineyard located in Healdsburg, California. The vineyards are separated only by a one-hour airplane flight. From Respondent’s state of Idaho, Complainant’s records show over 100 recorded customers who purchased wines using a credit card, including four credit card purchases from customers from the Respondent’s city of Caldwell, Idaho.
Further through Complainant’s extensive marketing and sales activities, including through Complainant’s own website at <WILLIAMSONWINES.COM>, recognition in the industry, and high revenue figures revenue figures (with a significant increase during the relevant time period) of $150,000 in 2006 and $650,000 in 2007, before Respondent’s registration of the disputed Domain Name <WILLIAMSONWINE.COM> in May 2007, Respondent knew or should have known of Complainant’s trademark WILLIAMSON WINES.
Furthermore, over the years, Complainant has received numerous awards. As both Complainant and Respondent operate in the same Pacific Northwest wine industry, Respondent is likely to have encountered Complainant prior to registering the disputed Domain Name <WILLIAMSONWINE.COM> in 2007.
Respondent is familiar with the San Francisco Chronicle Wine Competition, as evidenced by Respondent’s own entry and awards received from this Competition, and listed on Respondent’s website, <WILLORCH.COM>.
Respondent thus registered in bad faith the disputed Domain Name <WILLIAMSONWINE.COM> in May 2007.
At the time Respondent registered the second disputed Domain Name <WILLIAMSON.WINE>, on January 27, 2016, Respondent had actual and constructive knowledge of Complainant’s use and federally registered rights in the trademark WILLIAMSON WINES, based on Complainant’s ownership of the federal trademark registration for WILLIAMSON WINES, granted on February 17, 2015. At no time whatsoever has Respondent used the terms in the disputed Domain Name WILLIAMSON WINE as a trademark.
Respondent also had actual knowledge of Complainant’s trademark rights to WILLIAMSON WINES prior to registering the disputed Domain Name <WILLIAMSON.WINE> on January 27, 2016. Respondent’s “Vineyard Manager,” and a cousin in the original Williamson Orchards & Vineyards family, Patrick Williamson, visited Complainant’s tasting room on February 4, 2014 and purchased a series of wines, all bearing the WILLIAMSON WINES label. Patrick Williamson spoke with Dawn Williamson, one of the Complainant’s Trustees, and stated that he intended to use the name WILLIAMSON WINES with regard to his wines. The invoice prominently displays Complainant’s trademark WILLIAMSON WINES, and includes Complainant’s website, <WILLIAMSONWINES.COM> at the bottom of the page. See Minicards Vennotschap Onder Firma Amsterdam v. Mosco Studios, Case No. FA1031703 (Forum September 5, 2007) (finding bad faith registration where respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
Respondent thus registered the disputed Domain Name <WILLIAMSON.WINE> in bad faith as it had both actual and constructive notice of Complainant’s use rights in the trademark WILLIAMSON WINES, prior to registering this disputed Domain Name.
Bad faith is further established since Respondent is not commonly known by the trademark comprising both of the Domain Names, WILLIAMSON WINE, and Respondent has never used this trademark to identify Respondent’s goods or services. Respondent has registered and used both of the disputed Domain Names with the primary purpose of diverting potential customers of Complainant to Respondent’s own official website at <WILLORCH.COM>, leading to disruption of Complainant’s business.
Since Respondent’s registration of <WILLIAMSONWINE.COM> in May 2007, and <WILLIAMSON.WINE> in January 2016, Respondent has used the disputed Domain Name singularly for the purpose of redirecting visitors to the domain name <WILLORCH.COM>. No substantive content has been developed in the ten (10) years since the registration date of the earlier disputed Domain Name. See Wells Fargo & Company v. Ryan G Foo / PPA Media Services, FA1605001673631 (Forum June 7, 2016) (finding that no evidence of present use, or demonstrable preparations to use, the website under the disputed domain name, its present, passive use amounts to bad faith); see also, Bite, LLC v. Back9, Inc., WIPO Case No. D2001-0852 (finding that the contested domain name registration together with inactivity for 4 years, constituted bad faith); see also Chernow Communications v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (“A registrant should be given sufficient time to make preparations to use the registered domain name, but the “parking” of a domain name is evidence of bad faith registration and use.”); see also, Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (“While a registrant should be given sufficient time to make preparations to use the registered name, the failure to make such preparations in almost three years since the registration of the domain name at issue, has been held to constitute bad faith registration and use”).
Accordingly, Complainant respectfully submits that Respondent has registered and used both disputed Domain Names in bad faith, and requests that this third requirement also be resolved in Complainant’s favor.
B. Respondent
Respondent notes at the outset of its Response:
“A domain name dispute generally is not an appropriate forum for the resolution of contested intellectual property rights or the determination of disputed facts where matters of credibility are seriously in issue.” Ron Dawson Inc. v. Dennis Grady, FA 103927 (Forum Mar. 8, 2002). Rather, assertions of trademark infringement are “‘entirely misplaced and totally inappropriate for resolution’” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else. See Abbott Laboratories v. Kumar Patel, FA 740337 (Forum Aug. 15, 2006) (citation omitted); accord Tech Traders LLC/David Page v. Insuladd Environmental Products, FA 1738720 (Forum Aug. 3, 2017) (citation omitted).
Because Respondent is conducting a legitimate business with prior rights in trademarks that correspond to the disputed domain names, and because Complainant fails to meet its burden under the Policy, the Complaint should be dismissed and the requested relief denied. Additionally, Respondent respectfully requests that the Panel find that Complainant has acted in bad faith and is engaged in reverse domain name hijacking by initiating and maintaining this dispute.
[a.] Respondent Concedes That the At-Issue Domain Names Are Identical or Similar to a Trademark or Service Mark, but Respondent Challenges
Complainant’s Rights to the Mark. Rule 3(b)(ix)(1); UDRP ¶ 4(a)(i).
Respondent concedes that <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE> are identical or similar to the United States registered trademark WILLIAMSON WINES, Reg. No. 4688185. However, UDRP ¶ 4(a)(i) also requires a showing that the “complainant has rights” in a disputed Mark. As more fully shown below, Respondent has trademark rights superior to those of Complainant. A determination between competing trademark rights is not properly before the Panel. Ron Dawson Inc v. Dennis Grady, FA 103927 (Forum Mar. 8, 2002) (“It is clear that the alleged trademark interest and the subject domain name are identical, but the Administrative Panel is not in a position to resolve the contest over who has the trademark.”).
Moreover, Respondent registered the domain name <WILLIAMSONWINE.COM> on May 24, 2007, almost a full eight years before Complainant received the federal trademark registration for WILLIAMSON WINES. Accordingly, Complainant cannot satisfy its burden under UDRP ¶ 4(a)(i) as to <WILLIAMSONWINE.COM>. See Transpark LLC v. Network Administrator, FA 135602 (Forum Jan. 21, 2003) (finding that since respondent’s domain name registration predated complainant’s rights in its mark by nearly two years, complainant had failed to establish Policy ¶ 4(a)(i)); see also Chum Ltd. v. Kashchum Café, AF-0984 (eResolution Oct. 26, 2001) (finding that complainant’s registration date for its trademark was more than two years after the domain name registration, thus complainant did not have enforceable rights under the Policy); Anthony L. Trujillo and Planetfone, Inc. v. 1Soft Corp., FA 171259 (Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant’s domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”); B&V Associates, Inc. v. Internet Waterway, Inc., FA 147531 (FORUM Apr. 15, 2003) (“‘[T]he Policy . . . was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held.’”
Because Respondent has superior trademark rights (as shown below), and because, at least with respect to <WILLIAMSONWINE.COM>, Respondent’s registration predates Complainant’s Mark by nearly a decade, Respondent respectfully requests that Rule 3(b)(ix)(1) and UDRP ¶ 4(a)(i) be decided in its favor.
[b.] Respondent Has Long Since Had Rights and Legitimate Interests with
Respect to the Domain Names, Which Predate Complainant’s Rights. Rule 3(b)(ix)(2); UDRP ¶ 4(a)(ii).
Lillian Williamson and her husband George Gammon first occupied what is now Williamson Orchards & Vineyards beginning in 1909 under the Homestead Act of 1862. For some 90 years, members of the Williamson family have tended and cultivated the land west of Boise, Idaho — in an area known as the Sunny Slope — transforming the property into a 700-acre fruit orchard. In the early 1960s, the Williamsons opened a fruit stand on their property that grew into a landmark, attracting visitors throughout Idaho and beyond. In 1976, the Williamsons incorporated their business, known in this dispute as “Respondent.” For over a century, Respondent has been well known throughout the community for its cherries, peaches, apples, and other fruits.
In 1998 Respondent planted 28 acres of vineyard and began selling grapes to Ste. Chapelle, Idaho’s oldest and largest winery at the time. By 2001, Respondent had bottled its first vintage of cabernet wine under the common law trademark WILLIAMSON.
Critically, Complainant does not claim common law rights in the trademark WILLIAMSON WINE in connection with “wines, wine-tastings, vineyard services, wine and food events, helicopter tastings, and wine-related goods and services” until at least July 2004. Complainant has no awards for vintages earlier than 2003. Respondent, on the other hand, has been bottling wine since 2001 and received awards for vintages prior to 2004. Respondent’s use of the mark “WILLIAMSON” in connection with wine is senior to Complainant’s use.
Today, Respondent farms over 50 acres of wine grapes, produces about 1,500 cases of wine annually, and sells approximately 85 percent of its bottles of WILLIAMSON wine directly to consumers. Since 1998 — nearly 20 years before Complainant sent notice to Respondent of any dispute — Respondent has been using the mark WILLIAMSON in connection with wine and grape production. According to a February 13, 2017 article in the Idaho Statesman, “the Williamson name is recognized both for grapes and wine.” Thus, for almost two decades Respondent has operated a bona fide business offering goods and services associated with wine using the common law trademark WILLIAMSON. Accordingly, Complainant cannot meet its burden under UDRP ¶ 4(c)(i). See Digital Interactive Systems Corp. v. Christian W c/o KBIG104, FA 708968 (Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
In Wilson Vineyards, Inc. A California Corporation v. Zachary Wilson/Wilson Vineyard, a case strikingly similar to the one at bar, complainant held the trademark for WILSON VINEYARDS. FA 1656048 (Forum Feb. 19, 2016). When respondent registered the domain name <WILSONVINEYARD.COM>, the singular form of complainant’s trademark, complainant brought a UDRP action. In deciding for respondent, the Panel found that respondent had rights and a legitimate interest in the use of the domain name because he ran a legitimate vineyard and his surname was “Wilson.” Thus, complainant failed to meet its burden under Policy ¶ 4(a)(ii). Accord J Vineyards & Winery, L.P. v. David Perelman/Perloff Inc., FA 1515021 (Forum Nov. 9, 2013) (denying relief where complainant owned the J VINEYARDS & WINERY trademark and complainant registered the domain name <JWINES.COM>).
In Bloomberg Finance L.P. v. SEVA Company, respondent, a realtor, used her former surname, “Bloomberg,” to come up with the domain name <BLOOMBERGREALTY.COM>. FA 1282903 (Forum Oct. 23, 2009). Respondent explained that she “ha[d] been known by the ‘Bloomberg’ name for many years in the real estate business,” so she should be allowed to use the domain name even though her actual business name was not “Bloomberg Realty” and she did not hold the trademark for BLOOMBERG REALTY. The Panel agreed, explaining that the respondent was commonly known under the domain name even though it was not technically her name or a d/b/a. Panels have long held that registrants have a legitimate interest in the use of their own names. See G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001)(finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name).
Similarly, in Jeannette Martello v. Cockerell & Associates, complainant had a radio show called SKIN DEEP® with Dr. Jeannette Martello, owned an incontestable U.S. trademark registration for SKIN DEEP, and had been using the mark since 2002. FA 346319 (Forum Dec. 13, 2004). Respondent, a dermatopathology laboratory named Cockerell & Associates, registered the domain name <SKINDEEP.COM> in 1996 to promote its goods and services, but the actual words “skin deep” did not appear anywhere on respondent’s website. In denying complainant’s request to transfer the disputed domain name, the Panel found that because respondent had been operating a bona fide business in dermatopathology years prior to complainant’s trademark registration, complainant could not satisfy UDRP ¶ 4(c)(i) even though “skin deep” was not respondent’s name or trademark and was not specifically mentioned on respondent’s website.
In this case, Respondent is commonly known by <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE> as those domain names are regularly used by consumers interested in learning about Respondent and its WILLIAMSON brand wines. Respondent uses these domain names on its promotional materials. Moreover, despite Respondent’s official name (Williamson Orchards & Vineyards), a sampling of social media postings, consumer review websites, and press coverage reveals that the public regularly refers to “Williamson Wines” or “Williamson Winery” when discussing Respondent. Similarly, Respondent is regularly referenced in both regional and national wine and travel publications as being associated with “wine.” As such, Respondent has a legitimate interest in its use of the domain names.
Respondent respectfully submits that Rule 3(b)(ix)(2) and UDRP ¶ 4(a)(ii) should be decided in its favor.
[c.] Respondent Did Not Register and Is Not Using the Domain Names in Bad Faith. Rule 3(b)(ix)(3); UDRP ¶ 4(a)(iii).
Complainant claims that the circumstances here fall “squarely within at least two of the four” bad faith considerations delineated in the Policy. Specifically, Complainant claims that “Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor” and that Respondent has “intentionally attempted to attract” users away from Complainant’s website. Other than these bald assertions, Complainant offers no direct evidence of Respondent’s intent in selecting the domain names. Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Beginning in February 2005 (four years after bottling its first vintage of WILLIAMSON brand wine) Respondent began registering available domain names using MarkMonitor, an accredited ICANN registrar. Consistent with common business norms, Respondent’s goal was to acquire available domain names that Respondent believed — based on MarkMonitor’s expertise — consumers might utilize when searching for Respondent. There was no intent to interfere with Complainant’s business. In fact, Respondent did not even know Complainant existed when it began registering domain names in 2005. When Respondent registered <WILLIAMSONWINE.COM> in 2007, it still was unaware of Complainant, who did not register for trademark protection until eight years later. As is common in many industries, Respondent registered common misspellings of its name, words associated with its goods and services, and a domain based on Respondent’s geographic location (<SUNNYSLOPE.WINE>).
Complainant argues that because <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE> redirect to <WILLORCH.COM>, Respondent must necessarily be acting in bad faith. Not so. If a respondent has a legitimate interest in the use of a domain name, the issue of bad faith becomes moot. See Lockheed Martin Corporation v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”) Here, Respondent has been associated with wine since 1998, utilizes the domain names in its materials, and is often referred to by the public as “Williamson Wines” or “Williamson Winery.” Respondent’s use, therefore, is legitimate and the issue of bad faith is moot.
Because Respondent has a legitimate interest to the domain names, its redirection is not in bad faith. See, e.g., <WINDOWSXP.COM> redirects to <MICROSOFT.COM>; <TIMES.COM> redirects to <NYTIMES.COM>; <POLO.COM> redirects to <RALPHLAUREN.COM>. Respondent’s reason for redirection to <WILLORCH.COM> is simply a matter of convenience. The <WILLORCH.COM> domain was first registered on February 8, 2005. At that time, Respondent set up its company email using that domain. Respondent purchased the unregistered domain name <WILLIAMSONWINE.COM> in 2007, unaware of Complainant, because it needed a wine-related domain name and
<WILLIAMSONVINEYARDS.COM> was already taken. When .wine gTLDs became available for early registration during the “sunrise period” beginning November 17, 2015, Respondent did not register <WILLIAMSON.WINE> until January 27, 2016. Said another way, Complainant, as the trademark owner, had a “head start” to register <WILLIAMSON.WINE> before Respondent did, but chose not to do so. Respondent intended to transfer its email and systems to <WILLIAMSON.WINE>, but has yet to do so because of other pressing business matters.
Respondent has never offered to sell the domain names to Complainant or any other person for consideration in excess of what Respondent paid. In fact, Respondent has never offered to sell the domain names at all. Respondent has never engaged in a pattern of registering domain names to prevent others from using those domain names, is not attempting to disrupt Complainant’s or any other competitor’s business, and is not intentionally attempting to attract away Complainant’s Internet traffic. Respondent is not acting in bad faith. Complainant is.
Complainant alleges that in February 2014, Patrick Williamson visited Complainant’s tasting room, purchased wine from Complainant, and declared that Patrick Williamson, speaking for Respondent, “intended to use the name WILLIAMSON WINES with regard to his wines.” Not only is Complainant’s story factually inaccurate, but it is also deceptively silent as to Complainant’s response.
In reality, Patrick Williamson visited Complainant’s tasting room in February 2014 during a wine tour. Patrick Williamson spoke to Dawn Williamson, an owner of Complainant, who was kind and gracious to him, a prospective customer. After complimenting Dawn Williamson about her wine — and purchasing several bottles — Patrick Williamson stated that Respondent was using the name WILLIAMSON on its wine and that “we’ll want to work out a deal so we can co-exist,” or words to that effect. Dawn Williamson’s demeanor immediately shifted, and she declared, “you’ll need to talk to my lawyer,” or words to that effect. Patrick Williamson never said that he “intended” to use the name WILLIAMSON for Respondent’s wine, as Respondent had already been using WILLIAMSON for wine since 2001 (some 13 years at the time) when it bottled its first vintage. Respondent heard nothing more from Complainant until it was served with a copy of the Complaint over three years later on July 2017.
Five months after the tasting room encounter in February 2014, Complainant filed for the trademark WILLIAMSON WINES on June 27, 2014, with full knowledge that Respondent was already using the mark WILLIAMSON in connection with wine. In May 2017, Beverly Williamson visited Complainant’s tasting room, spoke to a kind employee, and made two different credit card purchases: one for wine and one for jelly. Patrick Williamson has referred other people with the surname “Williamson” to Complainant’s tasting room and products, telling them if “they are ever in Sonoma” to go “look them up,” or words to that effect. Respondent is not trying to unfairly compete with Complainant.
Ironically, Complainant is engaging in conduct similar to that of which it complains. Williamson Orchards and Vineyards uses the common law mark WILLIAMSON VINEYARD, and owns the domain names <WILLIAMSONVINEYARD.COM> and <WILLIAMSONVINYARD.COM>. Complainant, however, owns the registration for <WILLIAMSONVINEYARDS.COM>, the plural version of Respondent’s principal trademark. Complainant has “parked” this domain name and does not use it. In other words, Complainant is engaged in similar conduct with respect to <WILLIAMSONVINEYARDS.COM> that Complainant has filed a complaint against Respondent for its use of <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE>. That is bad faith. See UDRP ¶ 4(b)(i)-(iv).
“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge[.]” See Arjen Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002). In this case, Complainant knew of Respondent’s superior use of the mark WILLIAMSON in connection with wine. Respondent registered the domain name <WILLIAMSONWINE.COM> nearly a decade before Complainant sought federal trademark protection. Nevertheless, Complainant registered WILLIAMSON WINES with the USPTO, brought this action against Respondent, and maintains the registration for <WILLIAMSONVINEYARDS.COM>, the plural version of Respondent’s principal trademark and nearly the same conduct on which Complainant bases its Complaint.
Such conduct is indicative of bad faith and sufficient grounds for this Panel to find reverse domain name hijacking. See, e.g., Tupelo Honey Hospitality Corporation v. Reggie King, FA 1732247 (Forum July 6, 2017) (finding as “fatal” the undisputed fact that “Complainant knew when it initiated the action that Respondent’s registration of the domain name predated its First Use . . . by almost two years,” resulting in a finding of reverse domain name hijacking); Labrada Bodybuilding Nutrition, Inc. v. Mike Glisson, FA 250232 (Forum May 28, 2004) (finding reverse domain name hijacking where complainant used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name”). Complainant has failed to meet its burden under Rule 3(b)(ix)(3) and UDRP ¶ 4(a)(iii).
Additionally, Respondent respectfully requests a finding that the Complaint was brought in bad faith, that Complainant is attempting reverse domain name hijacking, and that such conduct by Complainant constitutes an abuse of the administrative proceeding pursuant to Rule 15(e).
The Complaint recites that all alcohol labels must be registered with the U.S. Department of Treasury COLA registry (“TTB COLA Registry”). Complainant’s Exhibit 16 reflects COLA registrations by Complainant, under the “WILLIAMSON WINES” brand name, in May of 2004. This is consistent with the USPTO registration for Complainant’s WILLIAMSON WINES trademark, and with the allegations set out in the Complaint, which recite that the mark’s first use in commerce was “at least as early” as July 2004. Moreover, Complainant’s Trustee, Bill Williamson, registered the domain name <WILLIAMSONWINES.COM> on March 19, 2003, through which Complainant’s goods and services are promoted and advertised.
Exhibit 15 to the Complaint reflects COLA registrations by Respondent under the “WILLIAMSON VINEYARDS” brand name beginning in July of 2004, about the same time as Complainant’s earliest COLA registrations for its wines.
Respondent’s evidence from the public record shows that “the family behind Williamson Orchards” closed its Idaho fruit stand in 1998, when the Williamson family planted 28 acres of vineyards for its winery. The sworn declaration of Respondent’s Beverly Williamson, dated August 16, 2017, avers that “Williamson” bottled its first vintage of cabernet in 2001, and that beginning in February 2005, the family business began registering available domain names for use in its wine business using MarkMonitor “to acquire available domain names that Williamson believed - based on MarkMonitor’s expertise – consumers might utilize when searching for Williamson and its products.”
Abundant evidence has been put of record in these administrative proceedings reflecting the numerous industry awards and accolades bestowed upon the wines produced by Complainant’s vineyard and those produced by Respondent’s vineyard, respectively.
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.
It is common ground between the parties that the disputed Domain Names <WILLIAMSONWINE.COM> and <WILLIAMSON.WINE> are identical or similar to Complainant’s United States registered trademark WILLIAMSON WINES, Reg. No. 4688185.
Respondent correctly notes, however, that UDRP ¶ 4(a)(i) also requires a showing that the “complainant has rights” in the disputed Marks. Respondent asserts that “Respondent has trademark rights superior to those of Complainant” and that “[a] determination between competing trademark rights is not properly before the Panel.” Ron Dawson Inc v. Dennis Grady, FA 103927 (Forum Mar. 8, 2002) (“It is clear that the alleged trademark interest and the subject domain name are identical, but the Administrative Panel is not in a position to resolve the contest over who has the trademark.”).
As is noted in “Findings” above, the U.S. Department of Treasury COLA registry public record supports both Claimant’s and Respondent’s evidence that each was using the “Williamson” name in connection with their respective winery businesses as least as early as 2004. Further, this Panel accepts Respondent’s evidence that Respondent launched its winery business under its “Williamson” family name in 1998, and began marketing its first “Williamson” cabernet some years later, in 2001.
The Panel finds that Complainant has rights in the disputed Marks and that UDRP ¶ 4(a)(i) is satisfied.
Respondent is the current registrant of <williamsonwine.com> and <williamson.wine>. Respondent asserts that its <williamsonwine.com> and <williamson.wine> are not confusingly similar to Complainant’s WILLIAMSON WINES mark because Respondent is commonly known by the disputed domain names. Respondent’s surname is “Williamson” and the singular form of the word “wine” is representative of Respondent’s legitimate business. Panels have found that a person who registers a variant of their full name has rights and legitimate interests in the domain name. See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001).
The Panel finds merit in Respondent’s evidence that Complainant has no awards for vintages earlier than 2003, and that Respondent, on the other hand, has been bottling wine since 2001 and received awards for vintages prior to 2004. Respondent asserts that its use of the mark “WILLIAMSON” in connection with wine is senior to Complainant’s use. Complainant acknowledges that the disputed Domain Name <WILLIAMSON.WINE> appears on the letterhead on the Respondents’ Price Sheet for its wines.
In its supplemental submission, Complainant asserts that Respondent’s failure to adduce evidence of COLA registration in connection with Respondent’s purported marketing of a cabernet wine in 2001 under the mark “WILLIAMSON VINEYARDS”, requires a conclusion that Respondent did not lawfully use any mark that includes WILLIAMSON that predates Complainant’s first COLA label approval on May 5, 2004. Complainant’s supplemental submission includes evidence of various industry awards and accolades received by Complainant for its wines predating 2004.
The evidence adduced in these proceedings is, at best, equivocal. On balance, however, the Panel prefers the Respondent’s evidence and decides that Respondent is using the disputed domain names for a bona fide offering of goods and services under Policy ¶ 4(a)(ii).
Having concluded that Respondent has rights or legitimate interests in the <williamsonwine.com> and <williamson.wine> domain names pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel finds the Respondent’s evidence of purported reverse domain name hijacking by the Complainant to be unpersuasive and makes no finding as to this claim.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <williamsonwine.com> and
<williamson.wine> domain names REMAIN WITH Respondent.
David L. Kreider, Panelist
Dated: August 23, 2017
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