Constellation Wines
Claim Number: FA0703000948436
PARTIES
Complainant is Constellation Wines
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonewine.com>, registered with
Compana,
LLC.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 28, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 3, 2007.
On April 4, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <blackstonewine.com> domain name is
registered with Compana, LLC and that
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 April 6, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 26, 2007 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@blackstonewine.com by e-mail.
A Response was received electronically on April 26, 2007, but it did
not appear that the entire Response was received in hard copy format. Therefore, the National Arbitration Forum has
deemed the Response deficient pursuant to Supplemental Rule 5(a). In the interests of justice, the deficient
Response will nonetheless be considered as though it had been properly filed.
On April 30, 2007, Complainant filed an Additional Submission with the
National Arbitration Forum. Thereafter,
Respondent filed an Objection and Reply to Complainant’s Additional Submission.
On May 2, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as sole Panelist
in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is a well-known purveyor of wines and related goods and
services.
Complainant has used the trademark BLACKSTONE for its winery products
continuously in commerce for at least 16 years.
The BLACKSTONE mark is registered with the United States Patent and
Trademark Office (“USPTO”) (registry number 2,651,528, issued November 19,
2002.)
Respondent’s domain name is confusingly similar to Complainant’s
registered trademark.
Respondent is not affiliated with Complainant and has not been licensed
or otherwise authorized to use Complainant’s mark in a domain name.
Respondent uses the subject domain name to attract Internet users to a
website featuring links to a variety of commercial sites in exchange for
referral fees.
Respondent registered its domain name with at least constructive
knowledge of Complainant’s prior rights in the BLACKSTONE mark.
Respondent has no rights or legitimate interests with respect to the
subject domain name.
Respondent both registered and uses its domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
Complainant’s BLACKSTONE mark, as applied to wine, is a generic
descriptive designation not entitled to trademark protection.
Respondent legitimately uses the subject domain name as an advertising
portal with which to provide to consumers access to a broad range of commercial
services.
Complainant has failed to prove that Respondent has registered and uses
the subject domain name in bad faith.
C. Additional Submissions
Complainant’s Additional Submission contends, among other things, that:
Complainant’s BLACKSTONE trademark is not a generic term for wine.
The BLACKSTONE mark is also not geographically or otherwise merely
descriptive of Complainant’s goods.
Respondent’s website offers Internet users the opportunity to purchase
online the products of Complainant’s competitors.
Respondent’s Additional Submission contends, among other things, that:
Complainant’s Additional Submission is outside the scope of the
applicable Rules and Supplemental Rules.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is
being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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:
i.
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
ii.
Respondent
has no rights or legitimate interests in respect of the domain name; and
iii.
the
domain name has been registered and is being used in bad faith.
Complainant and Respondent have each filed an unsolicited Additional Submission. In its Additional Submission, styled an Objection and Reply, Respondent voices objection to Complainant’s Additional Submission as being outside the applicable Rules and Supplemental Rules because it was not requested by the Panel. It is true that Rule 12, by its terms, contemplates the filing of what it describes as “further statements” solely at the discretionary request of the presiding panel. However, a majority of panels which have considered the issue, have permitted the filing of unsolicited additional submissions, particularly where both parties have made such submissions. This practice presumably proceeds on the policy basis that, in such circumstances, each party has, by its own unsolicited filing, waived objection to the filing of the other. Here, consistent with both the majority practice and its evident rationale, both sides have made an additional submission. And, while there is little in either of those submissions that represents new matter, we have, in the interests of justice, elected to accept and consider both for whatever value they may have. We also note in passing that Respondent’s Response was not filed in perfect compliance with Rule 5(a). Everything else equal, therefore, Respondent cannot be heard to complain of a non-prejudicial procedural irregularity by its opponent.
Complainant has adequately demonstrated its rights in its registered BLACKSTONE
trademark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering those marks with the USPTO); see
also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that a complainant’s federal trademark registrations for the marks CHEAPTICKETS
and CHEAPTICKETS.COM were adequate to establish its rights in the mark pursuant
to Policy ¶ 4(a)(i)).
Further, we find unpersuasive Respondent’s
argument to the effect that Complainant’s BLACKSTONE mark, as applied to wine,
and taken as a whole, is geographically or otherwise impermissibly descriptive
and therefore ineligible for protection under the Policy. We also find the sources cited by Respondent
in support of this proposition inapposite.
Accordingly, we turn to the question of confusing similarity.
On this point, we note that the disputed domain name employs Complainant’s registered trademark in its entirety, and merely adds the descriptive term “wine” and the top-level domain “.com.” These additions are insufficient to distinguish the mark from the domain name for purposes of Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> domain name from the DURACELL mark); see also Reed Elsevier Inc. v. Christodoulou, FA 97321 (Nat. Arb. Forum June 26, 2001) (finding that the domain names <legallexis.com> and <legallexus.com> were confusingly similar to a complainant’s LEXIS mark because the term “legal” describes the type of services offered under the LEXIS mark).
We thus find that Complainant has
satisfied its obligations of proof under Policy
¶ 4(a)(i).
Under this head, Complainant must first make out a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to
Respondent to show that it does in fact have such rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make out a prima facie case that a respondent lacks rights or
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to a 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’s website at the <blackstonewine.com> domain name features links and advertisements to goods and services unrelated to Complainant. Respondent does not deny this. Nor does it deny Complainant’s allegation that it receives click-through revenue for each consumer it diverts to competing websites through these links. In these circumstances, Respondent’s conduct cannot be described as a use in connection with 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with that complainant’s business did 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a complainant was not 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)).
Consistent with this result, there is no evidence in the record to indicate, and Respondent does not contend, that it is commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii).
There being no other pertinent evidence in the record before us, we have no basis for concluding other than that Respondent has no rights or interests sufficient to satisfy Policy ¶ 4(a)(ii).
Accordingly, we find
that Complainant has adequately met its burden under that provision of the
Policy.
We are persuaded from the facts of
record that Internet users seeking information on Complainant’s wines offered under
the BLACKSTONE trademark will likely be confused as to whether Complainant is
the possible source or sponsor of Respondent’s website. We therefore conclude that Respondent is
taking advantage of the likelihood of confusion between the <blackstonewine.com>
domain name and the BLACKSTONE mark in order to profit from the goodwill
associated with the mark, which demonstrates bad faith registration and use
under Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching
for a complainant to its own website and likely profited from click-through
fees); see also The Univ. of
In addition, it appears that Respondent registered the <blackstonewine.com>
domain name with at
least constructive knowledge of Complainant’s rights in the trademark BLACKSTONE by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly similar
domain name despite such constructive knowledge is, without more, evidence of
bad faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002); see also
For these reasons, we find that Complainant
has satisfied the proof requirements of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <blackstonewine.com> domain name be TRANSFERRED
forthwith from
Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 16, 2007
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