DECISION

 

Tassel Ridge Winery, LLC v. Rome Uata

Claim Number: FA2401002080417

 

PARTIES

Complainant is Tassel Ridge Winery, LLC ("Complainant"), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is Rome Uata ("Respondent"), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <candleglow.info>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 23, 2024.

 

On January 24, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <candleglow.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2024 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@candleglow.info. Also on January 25, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 15, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant has continuously used the CANDLEGLOW mark in commerce since at least as early as December 4, 2006. Complainant is the owner of United States Patent and Trademark Office ("USPTO") Registration No. 3448995 for the CANDLEGLOW mark in connection with "Wine". The domain name <candleglow.info> was first registered on January 11, 2024 and is identical to Complainant's CANDLEGLOW mark.

 

Respondent has no legitimate right or interest in the <candleglow.info> domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the CANDLEGLOW mark in a domain name or in any manner. Furthermore, it does not appear that Respondent is commonly known by the domain name as the WHOIS listing does not identify Respondent's identity.

 

Respondent's domain name <candleglow.info> does not display any content aside from third-party links to unknown websites. Using the domain as a source of click-through revenue constitutes bad faith. Respondent was on constructive notice of Complainant's trademark under 15 U.S.C. § 1702¹.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the CANDLEGLOW mark and the <candleglow.info> domain name is identical or confusingly similar to such mark;

-       Complainant has not fully argued or presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name; and

-       Complainant has not met its burden of proving, by a preponderance of the evidence, that the disputed domain name was registered and is used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant claims rights in the CANDLEGLOW mark through registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Complainant has submitted a copy of its USPTO trademark registration certificate and so the Panel finds that Complainant owns rights to the CANDLEGLOW mark.

 

Next, Complainant asserts that the disputed domain name is identical to its mark but for the addition of the ".info," TLD which fails to distinguish the domain name from the mark. The Panel agrees and finds that the <candleglow.info> domain name is identical or confusingly similar to the CANDLEGLOW mark.

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Complainant asserts that Respondent is not commonly known by the disputed domain name and further states that it has not authorized Respondent to use the mark. The Panel notes that WHOIS information is often reviewed when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use complainant's mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as verified to the Forum by the concerned Registrar and then communicated to Complainant, lists the registrant as "Rome Uata" and there is no evidence to suggest that Respondent is known otherwise. Further, Complainant states that "Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the CANDLEGLOW mark in a domain name or in any manner." Respondent has not filed a Response or made any other submission in this case and so there is no ground upon which the Panel can find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

The Complaint makes no mention of Policy ¶¶ 4(c)(i) or (iii), either directly or by inference. Nevertheless, the Panel will analyze these provisions and consider whether the evidence indicates that Respondent has any rights or legitimate interests based on its making a bona fide offering of goods or services, or its making a legitimate noncommercial or fair use of the disputed domain name. Complainant's evidence consists of a screenshot of the <candleglow.info> web page which appears to be a typical pay-per-click site. Where the Respondent uses a domain to display a pay-per-click page with monetized links to third-party products or services, Panels often find that respondents fail to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) where the links are competing with the complainant or the asserted mark is well-known and users will inevitably associate the disputed domain name with the mark. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business). Also see Universal City Studios LLC v. Moniker Privacy Services, FA 2051532 (Forum July 31, 2023) (the Panel agrees that "Respondent has diminished the public's capacity to associate the famous UNIVERSAL Marks with the quality products and services offered by Complainant."). However, it has been noted in many decisions that the operation of a pay-per-click website with monetized links to third-party sites may, under certain circumstances, be a bona fide use of a domain name. See, e.g., Airtango AG v. Privacydotlink Customer 2290723 / Gustavo Winchester, D2017-2095 (WIPO Dec. 11, 2017) ("Acquiring domain names simply in order to trade them at a profit or to exploit them for pay-per-click revenue is not, of itself, objectionable in the absence of any targeting of the complainant."); Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005) (Where Respondent uses a pay-per-click page, "[t]he crucial factor is that the Complainant has not produced any evidence that the Respondent targeted the Complainant.").

 

Here, Complainant provides a screenshot of the <candleglow.info> resolving website which features monetized links titled "Candel", "Ordering Blinds", and "Retail Blinds". As noted in the Complaint and the submitted USPTO trademark registration, Complainant is in the wine business. This appears to have no connection with the subjects mentioned in Respondent's pay-per-click page and so the it does not appear to be competing with Complainant in any discernable way. Further, Complainant has not made any assertion nor provided any evidence regarding the reputation of its CANDLEGLOW mark. While it submits a copy of its trademark registration certificate, this does not serve as evidence of how the mark is advertised, marketed, or promoted by Complainant, or how it is perceived by the public. As such, the Panel cannot conclude that the mark is well-known and that users seeing the <candleglow.info> domain name will likely associate it with Complainant or its products bearing the mark.

 

Although the Respondent has not participated in these proceedings to explain its actions, the Panel finds that the Complainant has not met its threshold burden of presenting a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii) or otherwise under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent had prior knowledge of its CANDLEGLOW mark based on constructive knowledge that derives from its USPTO trademark registration of the mark. In support, it provides a copy of the registration certificate and cites the United States statute of 15 U.S.C. § 1057(b). However, constructive knowledge is disfavored under the Policy unless it can be reliably demonstrated that both parties are subject to a national jurisdiction that applies such principle of law. See Leite's Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (where both parties reside in the United States, the Panel found that "under 15 USC §1072, registration of Complainant's mark constitutes constructive notice of the mark."). Here, the WHOIS record, as revealed by the concerned Registrar, shows Respondent's postal address as being located in New South Wales, Australia. As such, there is no evidence that it is subject to the laws of the United States of America, including the cited statute relating to constructive notice of trademark rights.

 

This leaves open the question of whether Respondent had actual knowledge of the CANDLEGLOW mark at the time that it registered the <candleglow.info> domain name. Complainant does not address this issue² and, as noted above, the monetized links at Respondent's pay-per-click page do not relate to the Complainant's field of business in the wine industry. In an effort to give the Complainant the benefit of the doubt, the Panel conducted a Google search of the term "candleglow". No mention was made of Complainant or of wine in the first page of results but other results on the page showed use of the term in relation to cosmetics, candle companies, a shade of paint, a song, flooring, furniture hardware, and carpet, amongst others. Based on the lack of reputational evidence submitted by Complainant and the results of the Panel's own limited research, the Panel cannot conclude that Respondent had prior knowledge of the asserted CANDLEGLOW mark or that it registered the <candleglow.info> domain name in bad faith.

 

Complainant further argues that, "[f]irst, inactively holding a domain name is generally considered evidence of bad faith under Policy ¶ 4(b)(iii)" and "[s]econd, using the domain as a source of click-through revenue constitutes bad faith under Policy ¶ 4(b)(iv)." These are presumptions, however, and typically only apply where a preponderance of the evidence shows that a respondent specifically targets a complainant's mark with its disputed domain name and intends to cause confusion therewith. Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, D2021-2901 (WIPO Dec. 13, 2021) ("for bad faith registration and use to be made out, a degree of targeting of the Complainant or its mark by the Respondent must be evident from the record, or at the very least that there must be sufficient grounds to infer that the Respondent had the Complainant or its trademark in mind when the disputed domain name was created"). Where there is no evidence of targeting, and a likelihood of confusion³ is otherwise tenuous, bad faith may not be presumed.

 

A recent decision that it nearly on all-fours with the present situation is E Group BV v. Justian de Frias, D2023-5032 (WIPO Jan. 14, 2024). In that case the Complainant, based in the United Kingdom, provides "energy saving consumer products" under the mark ECOSAVERS and the disputed <ecosavers.com> domain name resolves to a parking page displaying pay-per-click advertisements. The Panel noted the lack of reputational evidence and the existence of many third parties using a similar mark in various jurisdictions. In denying the claim, the Panel stated:

 

The Complainant has not provided evidence showing its reputation and the extent of its business. Thus, it cannot be said that the Complainant's mark is well-known and that a presumption of bad faith applies, or that the Complainant's mark is unique to it. Furthermore, there is no evidence that the Complainant's mark has been used or is known at all in the Respondent's jurisdiction of the Cayman Islands, and there is nothing in the case file directly indicating that the Respondent was aware or should have been aware of, or targeted the Complainant.

 

Id. Here, the Panel finds the logic of this decision strongly applicable to Respondent's use of the <candleglow.info> domain name. Complainant has not provided evidence of its mark's reputation, the pay-per-click links on Respondent's website do not relate to the wine business, and Respondent is located in Australia and there is no evidence that the US-based Complainant's mark has a reputation in that country.

 

In light of the above, the Panel finds that Complainant has not met its burden of proving, by a preponderance of the evidence, that the disputed domain name was registered and is used in bad faith under Policy ¶¶ 4(b)(iii), 4(b)(iv), or otherwise under Policy ¶ 4(a)(iii).

 

DECISION

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 <candleglow.info> domain REMAIN WITH Respondent.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: February 18, 2024