Vinotemp International Corporation v. American Wine Essentials
Claim Number: FA0112000102740
Complainant is Vinotemp International Corporation, Rancho Dominguez, CA (“Complainant”) represented by Marvin H. Kleinberg, of Kleinberg & Lerner, LLP. Respondent is American Wine Essentials, Milpitas, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winemate.com>, registered with NamesDirect.com, 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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 5, 2001.
On December 11, 2001, NamesDirect.com, Inc. confirmed by e-mail to the Forum that the domain name <winemate.com> is registered with NamesDirect.com, Inc. and that Respondent is the current registrant of the name. NamesDirect.com, Inc. has verified that Respondent is bound by the NamesDirect.com, Inc. 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 December 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Respondent’s <winemate.com> domain name is identical to Complainant’s WINE-MATE registered trademark.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent registered and used the domain name in bad faith.
No Response was received.
Complainant registered its WINE-MATE trademark (Reg. No 1,994,725) on the Principal Register of the United States Patent and Trademark Office on August 20, 1996. Moreover, Complainant has been using the WINE-MATE mark in association with its services and wine storage goods since June of 1987.
Respondent registered the disputed domain name on April 18, 1999, well after Complainant registered the WINE-MATE trademark. Complainant and Respondent are direct competitors in Complainant’s primary business of selling wine storage products such as wine cellars and racks.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has demonstrated it has rights in the WINE-MATE trademark through its registration of the mark on the Principal Register of the United States Patent and Trademark Office and through commercial use.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Rights or Legitimate Interests
Respondent’s failure to provide a Response indicates that Respondent has no rights or legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Moreover, given the competitive relationship between Complainant and Respondent, it is likely Respondent registered the disputed domain to disrupt Complainant’s business and profit from the resulting confusion by Internet users. This indicates that Respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).
The Panel has found that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <winemate.com> be hereby transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: January 16, 2002
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