URS DEFAULT DETERMINATION

Houdini, Inc. v. WhoisGuard, Inc. et al.
Claim Number: FA1905001842055

DOMAIN NAME

<winecountrygiftbaskets.club>
<winecountrygiftbaskets.store>

PARTIES

	Complainant: Houdini, Inc. of Fullerton, CA, United States of America
	Complainant Representative: Lewis Roca Rothgerber Christie LLP David A Plumley of Glendale, CA, United States of America

	Respondent: WhoisGuard, Inc. / WhoisGuard Protected WhoisGuard, Inc. of Panama, Panama, PA

REGISTRIES and REGISTRARS

	Registries: .CLUB DOMAINS, LLC,DotStore Inc.
	Registrars: NameCheap, Inc.,Namecheap

EXAMINER

	The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
	Natalia Stetsenko, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: May 8, 2019
	Commencement: May 16, 2019
	Default Date: May 31, 2019
	Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: The Complainant has established rights in the WINE COUNTRY GIFT BASKETS mark based on U.S. Trademark Registrations Nos. 3,388,836 and 3,388,835 of February 26, 2008, registered for the "mail order catalog and online retail store services featuring gift baskets and gift packages consisting primarily of wine," and "gift baskets and gift packages consisting primarily of wine." The registration and use for the mentioned goods and services are confirmed by relevant TSDR printouts and screenshots from Complainant's website. As follows from the submitted evidence Complainant has been using its trademark at least since December 25, 1988, i.e. decades before Respondent registered the disputed domains.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

The disputed domain name is identical to the Complainant's mark because it incorporates its WINE COUNTRY GIFT BASKETS mark simply adding the gTLDs ".club" and ".store". Adding a gTLD is not relevant in the assessment of identity and confusing similarity. Respectively, the disputed domain names are identical to Complainant's trademark.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

As follows from the submitted evidence, the <winecountrygiftbaskets.store> and <winecountrygiftbaskets.club> domain names are linked to websites that are nearly identical to Complainant's website. Particularly, the Complainant's logo, as well as graphic and promotional materials appear on both Respondent's websites offering goods and services in direct competition with Complainant. Such use cannot, but mislead consumers into thinking that the websites are operated by Complainant, and the goods and services originate from the latter. Not only does Respondent use Complainant's logo and copyrighted material, but there is also no information on both websites that would differentiate Respondent's business from that of Complainant, which creates false impression that the websites to which the domain names resolve belong to Complainant. Previous Panels have found such use not to be bona fide. Therefore, Respondent lacks rights and legitimate interests in the disputed domain names.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

The provided examples of use of the domain names by Respondent serve as clear and convincing evidence of both bad faith registration and use. By using the <winecountrygiftbaskets.store> and <winecountrygiftbaskets.club> domain names, the registered Complainant's mark, logo and copyrighted material without any reservation as to affiliation, Respondent is attempting to profit or is profiting on Complainant's goodwill by creating a likelihood of confusion with Complainant's WINE COUNTRY GIFT BASKETS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web sites and products offered through these websites. Therefore, it is found that Complaint has established bad faith with clear and convincing evidence.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

winecountrygiftbaskets.club
winecountrygiftbaskets.store

Natalia Stetsenko
Examiner
Dated: June 5, 2019

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