Constellation Wines U.S. Inc. v. Whois Protection
Claim Number: FA0707001040081
Complainant is Constellation Wines U.S. Inc. (“Complainant”), represented by John
M. Rannells, of Baker and Rannells PA, 575 Route 28,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blackstonewines.com>, registered with Rebel.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July
23, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of August
13, 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@blackstonewines.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default. On
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <blackstonewines.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <blackstonewines.com> domain name.
3. Respondent registered and used the <blackstonewines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Constellation Wines U.S. Inc., produces
Blackstone wines, one of the most successful wine brands in the
Respondent registered the <blackstonewines.com> domain name on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s registration of the
BLACKSTONE mark with the USPTO sufficiently establishes its rights in the mark
under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <blackstonewines.com> domain name is confusingly similar to
Complainant’s BLACKSTONE mark, as it incorporates the entire mark and simply
adds the term “wines.” Because this term
is clearly descriptive of Complainant’s business, its addition to the disputed
domain name does not negate any confusing similarity between the disputed
domain name and Complainant’s mark. In
addition, the inclusion of the generic top-level domain “.com” in the disputed
domain name is irrelevant, as a top-level domain is a required element of all
domain names. Thus, the Panel finds that
the <blackstonewines.com> domain
name is confusingly similar to Complainant’s BLACKSTONE mark pursuant to Policy
¶ 4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names
<caterpillarparts.com> and <caterpillarspares.com> were confusingly
similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because
“the idea suggested by the disputed domain names and the registered trademarks
is that the goods or services offered in association with [the] domain name are
manufactured by or sold by the Complainant or one of the Complainants [sic]
approved distributors. The disputed trademarks contain one distinct component,
the word Caterpillar”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <blackstonewines.com> domain name. Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove this allegation. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complainant raises the presumption that Respondent lacks rights and legitimate interests in the <blackstonewines.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”). However, the Panel will still examine the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c).
Pursuant to Policy ¶ 4(c)(ii), Complainant alleges that Respondent is not commonly known by the <blackstonewines.com> domain name, which indicates that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees, as there is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <blackstonewines.com> domain name. Moreover, Respondent has not been authorized or licensed by Complainant to use the BLACKSTONE mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s lack of rights and legitimate interests is further evidenced by the nature of the website that resolves from the <blackstonewines.com> domain name. The disputed domain name redirects Internet users to a website featuring links to competing third-party websites, and the Panel presumes that Respondent accrues click-through fees when users click on these links. The Panel finds that this does not qualify as 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
As mentioned previously, Respondent is using the <blackstonewines.com> domain name
to redirect Internet users to a website featuring links to Complainant’s
competitors. Such use constitutes a
disruption of Complainant’s business and thus indicates that Respondent
registered and is using the disputed domain name in bad faith under Policy ¶
4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
The Panel presumes that Respondent benefits commercially
when Internet users click on the links displayed on the website that resolves
from the <blackstonewines.com> domain
name. Thus, the Panel finds that
Respondent is capitalizing on the likelihood that users, seeking Complainant’s
business, will be confused as to Complainant’s affiliation with the disputed
domain name. This is further evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns
Corp., FA 93668 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <blackstonewines.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 28, 2007
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