Ornellaia e Masseto Società Agricola Srl v. STEIN, THOMAS
Claim Number: FA1208001456929
Complainant is Ornellaia e Masseto Società Agricola Srl (“Complainant”), represented by Cecelia Perry of McGlew and Tuttle, P.C., New York, USA. Respondent is STEIN, THOMAS (“Respondent”), represented by Sean P. McMahon of Ostrolenk Faber LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masseto.com>, registered with Network Solutions, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2012; the National Arbitration Forum received payment on August 7, 2012.
On August 7, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <masseto.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2012 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@masseto.com. Also on August 7, 2012, 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 September 10, 2012.
An additional submission was sent by Complainant on September 17, 2012. In response, Respondent sent an additional submission on September 24, 2012.
On September 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus 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
a. Policy ¶ 4(a)(i)
i. Complainant holds trademark registrations for MASSETO with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,793,812 registered September 21, 1993 and duly renewed). See Complainant’s Exhibit A.
ii. Complainant uses its MASSETO mark in connection with the sale of wine.
iii. The <masseto.com> domain name is identical to Complainant’s MASSETO mark.
b. Policy ¶ 4(a)(ii)
i. Respondent owns no trademark registrations or applications for the <masseto.com> domain name.
ii. Respondent’s name is not MASSETO and Respondent does not operate a business under this name.
iii. Respondent does not currently make an active use of the <masseto.com> domain name. See Complainant’s Exhibit B.
iv. Respondent previously used the disputed domain name to resolve to a website that offered wine advertisement hyperlinks. See Complainant’s Exhibit B.
c. Policy ¶ 4(a)(iii)
i. Respondent offered to sell the <masseto.com> domain name to Complainant in exchange for 10 cases of MASSETO wine per year for the next ten years following Complainant’s letter. See Complainant’s Exhibit D.
ii. The value of the wine is greater than Respondent’s out-of-pocket registration costs.
iii. Respondent’s failure to make an active use of the <masseto.com> domain name is evidence of bad faith registration and use. See Complainant’s Exhibit B.
iv. Respondent had actual and constructive knowledge of Complainant’s rights in the MASSETO mark.
B. Respondent
a. Policy ¶ 4(a)(ii)
v. Respondent intends to offer its own line of footwear under the name “Masseto,” based on the town Masseto, Italy.
vi. Respondent registered the <masseto.com> domain name on March 3, 2000 for that purpose.
vii. Respondent filed an intent-to-use application with the USPTO for the MASSETO mark in connection with footwear. See Respondent’s Exhibit A-1.
viii. Respondent prepared samples of shoes that it would develop under the MASSETO mark. See Respondent’s Exhibit A-2.
b. Policy ¶ 4(a)(iii)
ix. Respondent’s offer was simply meant to get Complainant to go away and that such an offer, 12 years after registering the disputed domain name, is not evidence of bad faith registration.
x. Respondent has made demonstrable preparations to use the <masseto.com> domain name in connection with its footwear.
xi. The hyperlinks found on the resolving website for a short period of time were a part of the “Under Construction” page that Respondent contracted with Network Solutions to provide.
xii. Respondent did not know that the hyperlinks advertisements were provided on the website and immediately asked Network Solutions to change it once Respondent became aware of the hyperlinks.
C. Additional Submissions
Both parties filed additional submissions.
In its additional submissions, Complainant argues, among other things, that Respondent was not prepared to use the domain name with bona fide offering of goods. In addition, the filing of a trademark application is not proof of intent to use the trademark and the domain name. Claiming to be willing to develop a business of footwear in the future is not tantamount to a good faith holding of the domain name. Furthermore, Respondent is still responsible of the pay per click website even if he claims that the links were not the result of his own selection.
Respondent, in his additional submission, argues that the validity of his intent to use trademark application should not be discussed in the present procedure. He also argues that Complainant has not managed to prove that the domain name is identical/similar to its trademark, that Respondent lacks legitimate interest and that the domain name was registered and is being used in bad faith. In particular, Complainant has not managed to demonstrate that Respondent had actual knowledge of the trademark Masseto when the domain name was filed.
Complaint owns the registered trademarks MASSETO in the United States.
Respondent filed an intent to use trademark application after the filing of the complaint.
Respondent is not affiliated with Complainant and had not been authorized to use the MASSETO mark in any capacity.
Respondent registered the disputed domain name after Complainant acquired trademark rights in MASSETO.
The <masseto.com> domain name resolves to a web page indicating that the website is under construction. It previously resolved towards a parking website.
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.
The Panel finds that Complainant sufficiently established its rights in the MASSETO trademark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,793,812 registered September 21, 1993, duly renewed).
The Panel notes that Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s MASSETO mark. This alteration to Complainant’s mark does not remove the <masseto.com> domain from the realm of identicality under Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001).
Therefore, Respondent’s domain name is identical to the Complainant’s mark 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 contends that Respondent owns no trademark registrations or applications for the <masseto.com> domain name. Complainant argues that Respondent’s name is not MASSETO and Respondent does not operate a business under this name. The Panel notes that the WHOIS information lists “STEIN, THOMAS” as the registrant of the <masseto.com> domain name. In light of this evidence, the Panel concludes that Respondent is not commonly known by the <masseto.com> domain name for the purpose of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent does not currently make an active use of the <masseto.com> domain name and that Respondent failed to demonstrate any active use of the identical <masseto.com> domain name, which is evidence that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Furthermore, Respondent previously used the disputed domain name to resolve to a website that offered wine advertisement hyperlinks. Based on the screenshots provided by Complainant, the Panel notes that the website hosted hyperlinks, entitled “Wine,” “Red Wine,” “White Wine,” “Country Wine,” etc., that resolved to pages hosting hyperlinks to Complainant’s competitors websites in the wine industry. Consequently, Respondent’s use of the <masseto.com> domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Microsoft Corp. v. Maylin, FA 1457509 (Nat. Arb. Forum Sept. 12, 2012); see also H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the Respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel deems that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel takes note of the fact that Respondent claims to be willing to dedicate the disputed domain name to a footwear website. This being said, Respondent did not provide much evidence of this footwear project.
Finally, the Panel finds that the intent-to-use application of Respondent with the USPTO for the MASSETO mark in connection with footwear does not demonstrate any legitimate interest since it was filled after the filling of the Complaint.
As a conclusion, the Panel deems that Respondent has not managed to prove legitimate interest or rights justifying the disputed registration.
Respondent asserts that he had no actual or constructive knowledge of Complainant’s right in the MASSETO mark when he registered the disputed domain name. Nevertheless, Respondent provided the Panel with assertion that he has frequently travelled to Italy, in Tuscany. The Panel finds that it is likely that Respondent, while travelling frequently to a region where a fine wine maker is located, knew the Masseto wine when the domain name was registered. Even if the Panel takes into consideration that the disputed domain name was registered more than a decade ago, the Panel deems that it is likely that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Furthermore, the disputed domain name directed towards a parking website containing commercial links in the wine field. While Respondent claims that it did not receive any commercial gain from the website, whereas commercial gains are usually generated by parking links, and that he ignored the existence of the parking website, the Panel finds that Respondent is nevertheless responsible for the content of the resolving website under Policy ¶ 4(a)(iii). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Complainant alleges that Respondent offered to sell the <masseto.com> domain name to Complainant in exchange for 10 cases of MASSETO wine per year for 10 years. This is confirmed by Respondent. Complainant contends that the value of the wine is greater than Respondent’s out-of-pocket registration costs. The Panel finds Complainant’s estimation realistic in consideration of the market value of the wine. Consequently, the total amount of the offer, approximately 440,000 dollars, exceeds the registration costs for the disputed domain name. The Panel takes note of Respondent’s assertion that his offer was made to discourage Complainant. The Panel thinks that he could have simply refused Complainant’s request to transfer if he found it unjustified instead of making a specific request expressing a will to negotiate a high price transfer. Had Complainant wanted to negotiate, it was indeed forced to make a very high counteroffer in consideration of the high first offer. In the end, the price of the domain name was due to be far higher than Respondent’s out of pocket expenses related to the domain name. In addition, Respondent did not mention the alleged footwear project in his response by e-mail, which makes it even more questionable today.
Consequently, the Panel concludes that Respondent registered and used the <masseto.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <masseto.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: 01/10/2012
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