Argyle Winery, Inc. v. Telmex Management
Services
Claim Number: FA0202000104480
PARTIES
The
Complainant is Argyle Winery, Inc.,
Dundee, OR (“Complainant”) represented by Devon
J. Zastrow, of Klarquist Sparkman,
LLP. The Respondent is Telmex Management Services, Tortola,
British Virgin Islands (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME(s)
The
domain name at issue is <argylewines.com>,
registered with Intercosmos Media Group,
Inc. ("Intercosmos Media Group").
PANEL
The
undersigned certifies that he has acted independently and impartially and that,
to the best of his knowledge, he has no known conflict in serving as Panelist
in this proceeding.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a complaint ("the Complaint") to the National Arbitration
Forum (“the Forum”) electronically on 6 February 2002; the Forum received a
hard copy of the Complaint on 7 February 2002.
On
6 February 2002, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <argylewines.com>
is registered with Intercosmos Media Group and that the Respondent is the
current registrant of that domain name.
Intercosmos Media Group has verified that Respondent is bound by the Intercosmos
Media Group 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
11 February 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of 4 March 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 postmaster@argylewines.com by e-mail.
A
timely Response (the "Response") was received and determined to be
complete on 12 February 2002.
A
reply (the "Reply") to the Response was received on 15 February 2002
in a timely manner in accordance with the Forum's Supplemental Rule 7.
On 19 February 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Rodney C.
Kyle as Panelist.
RELIEF SOUGHT
The
Complainant requests that the registration of the domain name at issue be
transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant has in its Complaint (wherein, as in the Reply, it is sometimes
referred to as "Argyle Winery" or "Complainant") set out a
preface to its three main categories of contentions ("[a]",
"[b]", and "[c]"), and has then set out those three main
categories of contentions, as follows:
"Trademark/Service
Mark Information (ICANN Rule 3(b)(viii)):
Argyle Winery, Inc. is a nationally
recognized winery based in Dundee, Oregon.
Argyle Winery produces award winning vintages that have earned it the
accolade 'Oregon’s premiere winery.'[1] Argyle Winery has used the 'ARGYLE' trade
name since at least as early as 1990, and, through its wholly owned Dundee Wine
Company, owns a U.S. federal service trademark registration for ARGYLE for
'wine' (Exhibit A).[2] Exhibit B gives representative examples of
Complainant’s use of the names and marks 'ARGYLE' and 'ARGYLE WINERY.'
[5.] FACTUAL
AND LEGAL GROUNDS
This
Complaint is based on the following factual and legal grounds. See ICANN Rule 3(b)(ix).
[a.] The
Accused Domain Name Is Substantially Identical To Complainant’s Famous
Tradename and Service Mark.
ICANN
Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
This is a run-of-the-mill case in
which an opportunistic entity registered a close variation of a famous
tradename as its own, with the intent to benefit from the confusion that would
ensue and/or profit from selling the domain in question back to the rightful
trademark owner. Respondent here chose
to register and use a domain name that is identical to Complainant’s
registered trademark and famous tradename, adding only the word (“wines”) that
is the very goods for which the mark is registered and the name is famous. Respondent’s transparent purpose in doing so
was to divert traffic to its own website, <girlhire.com>.
The
fame and longevity of Complainant’s genuine use of its ARGYLE and ARGYLE WINERY
names and marks is not subject to genuine dispute. See e.g., Exhibits A and B. Neither can there be any question that
Respondent deliberately chose the domain name ARGYLEWINES precisely to simulate
Complainant’s tradename and mark for the purpose of diverting traffic intended
for Complainant’s web site. See Exhibit C (screen captures of
Respondent’s site as of February 2, 2002).
The
infringing <argylewines.com>
web site advertises 'we provide women' and sets forth their job list as 'ceo model executive lover friend associate
fantasy maid secretary date escort host companion guest dinnerdate wife
consultant temp gift & exhibition staff,' promising 'Absolute Discretion
Assured.' Prominently displayed under
'November girl' and 'December girl' are intimate photographs of two women in
erotic, inviting poses (see Exhibit
C). The confusion of these images with
Argyle wines injures the goodwill established by Argyle Winery’s historical
tradition of fine winemaking. As a
result, Complainant’s goodwill in its tradename and mark are being damaged
through lost potential revenue from consumers attempting to access
Complainant’s site, but being diverted to Respondent’s site. Furthermore, customers and prospective customers of Argyle wines are certain
to find the adult content displayed on Respondent's web site unexpected and
inappropriate, and for that reason may entirely abandon their attempts to learn
more about genuine Argyle wines.
[b.] Respondent
Should Be Considered As Having No Rights Or Legitimate Interests In The Domain
Name <argylewines.com>.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶¶
4(a)(ii), 4(c).
(i.)
Respondent has never been commonly known by the name
ARGYLEWINES or
'Argyle.' Respondent did not register
the domain name in question until January 25, 2002, long after Complainant
established a successful and reputable wine business, including but not limited
to its <argylewinery.com> web site.
(ii.)
Respondent is not making any legitimate noncommercial or fair use of
the
domain name. Rather, Respondent Telmex Management
Services’ registration of <argylewines.com>
is not only likely to cause confusion, it is certain to do so, including but
not limited to creating the misimpression that it operates under the auspices
of, or has the approval of, Argyle Winery.
It does not. On information and
belief, Telmex Management Services is merely a pseudonym for <girlhire.com>, vendors of an
online escort service (see Exhibit D, dialog box
opened by clicking on Respondent’s web site).
On information and belief, Telmex Management Services registered the
domain name <argylewines.com>
to capture and redirect traffic intended for the genuine Argyle Winery
website. Argyle Winery, Inc. brings
this Complaint in an effort to right at least part of the harm caused by Respondent
Telmex Management Services’ wrongful acts.
[c.] Why
The Domain Name Should Be Considered As Having Been Registered And Being Used
In Bad Faith.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶¶ 4(a)(iii), 4(b).
(i) As
noted above, Respondent has used <argylewines.com>
to attempt to attract Internet users to Respondent’s web site for its
commercial gain. By using the name
ARGYLEWINES, Respondent has created a likelihood of confusion (including
initial confusion) with the Complainant’s name and mark as to the source,
sponsorship, affiliation, or endorsement of that web site and the products,
services, and material offered or published there. The fact that Respondent
deliberately chose ARGYLEWINES as its name is itself sufficient evidence of
Respondent’s bad faith. See, e.g., Federal Court of Canada v.
Federalcourtofcanada.com, AF-0563 (eResolution Mar. 9, 2001); Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb.
Forum Apr. 2, 2001) ('mnlottery.com' confusingly similar to 'Minnesota State
Lottery'); Bama Rags, Inc. v. Zuccarini, (Nat. Arb. Forum FA 94380) (ordering
transfer of <davemathews-band.com> to owner of mark 'DAVE MATTHEWS
BAND'); Chanel, Inc. v. ESTCO Tech. Group, D2000-0413 (WIPO Sept. 18, 2000)
(<chanelstore.com> and <chanelfashion.com> confusingly similar to
Complainant’s mark CHANEL).
(ii) Respondent’s registration of ARGYLEWINES
was calculated to prey upon a common Internet search strategy. Respondent’s domain name simply replaces
'winery' in Complainant’s name with 'wines,' the product that Complainant
produces. When searching for a product,
an Internet consumer often searches by typing in the name of the desired
product, and adding '.com' to access that vendor’s site. For instance <chevytrucks.com> re-directs the user to a Chevrolet dealer site, <dellcomputers.com> directs the user to the DELL Company web site, and <beringerwines.com> directs the user to the Beringer Vineyards web site. Internet users attempting to access the
Argyle Winery web site would logically believe that <argylewines.com> is a registered affiliate of the
Argyle Winery. Respondent, moreover,
has not demonstrated interest in or prior use of the name 'Argyle' and no
apparent intent to engage in the production or sale of wine. Instead, the clear intent of this choice of
domain names was to divert traffic intended for Argyle Winery to Respondent’s
web site.
(iii) On
information and belief, Respondent has previously engaged in bad faith
registration of domain names for the transparent purpose of diverting traffic.
The WIPO web site http://www.icann.org/udrp/udrpdec.htm lists a recent decision, Digital Channel Partners Ltd. v. Bilham Solutions and Marlies Bilham,
D2000-1246 (WIPO Dec.14, 2000), transferring six domain names away from the Respondent(s) (domain names
registered by the Respondents found identical or confusingly similar to trade
marks to which the Complainant had rights).
In that case, one of the Respondents, Mark Townsend, did business as
Telmex Management Services (the Respondent in the current matter). Mr. Townsend stated in an e-mail to the
Chief Executive of the Complainant, 'as you are well aware my associated
companies and I register hundreds of domains every single day'. The Panelist in that case found over fifty
domain names registered to Mr. Townsend, including some that 'can have no
direct or legitimate link with Mark Townsend (e.g., <TheHyattHotel.com> and <Harvey-Jones.Com>, to
take just two). Thus, Complainant
submits that the registration of <argylewines.com> by Telmex
Management Services is a part of Respondent’s ongoing bad faith registration of
multiple domain names for which it has no legitimate business or personal
rights.
(iv) In
summary, Respondent’s misleading and bad faith conduct has infringed and continues to infringe
Complainant’s trademark and tradename rights, in
violation of the Lanham Act (Chapter 22, Title 15 of the United States Code)[3]
and the principles of the Uniform Dispute Resolution Policy."
B.
Respondent
The
Respondent has in its Response contended, solely by way of pleading, as
follows:
"We reserve all rights to the use of that
domain name and have not at anytime
attempted to pass off as your client.
The domain is not yet in use by the client, as
with all of the domains that
we develop it will point to a random website in
our portfolio until such
times as it has been developed fully.
We are based in the BVI and operate largely
within the EUROPE.
Our client is based in
scotland and is a wine distributor."
and
"We
are able to expand on our clients identity, namely :-
Mr Hamish Carlisle a UK resident is the owner of
Argyle Wines & Co a BVI
registered company with operations in the UK.
They are new wine distributors to the trade
ONLY.
Argyle Wines have commissioned Telmex Management
Services, Inc to create,
develop & maintain
their future website."
C.
Additional Submissions
The Complainant has in its Reply
contended as follows:
"Complainant
received a response from Respondent Telmex Management Service ('Telmex') on
February 12, 2002. Complainant submits
this Additional Submission as an answer to that response.
Respondent’s
sole response to the Complaint has been to allege that Telmex registered the
domain name in dispute for someone else named Argyle. Whether or not this is a fabrication – for no substantiation of
any kind has been submitted, either of the alleged 'client’s' existence or the
alleged service contract – it is insubstantial in comparison to the documented
evidence of Telmex’s bad faith. It is
also inconsistent with the facts, for Telmex has pointed Argyle’s famous name not to a wine store in Scotland, but to a softcore pornography and
escort service site (girlhire.com).
Furthermore,
Ms. Bradbury failed to provide any basis for belief that the use of the website
argylewines.com is now or would ever
be in furtherance to a legitimate use. Specifically, Telmex failed to
substantiate the claim that its 'client' exists, or that it in fact owns a wine
business called Argyle Wines & Co. A mere proposal for a possible
future legitimate has no bearing on past and current conduct or the bad faith
basis for transferring the domain.
The
repeat nature of Telmex’s bad faith must also be considered, as would the
gaping loophole that Telmex’s excuse would be asking this panel to create in
the ICANN UDRP process if mere unsubstantiated allegations such as Telmex’s
were all that is required to prevent transfer to the party whose mark and name
are being so severely tarnished.
Complainant submits that Telmex is a recidivist cybersquatter that has
alleged a straw man company in hopes that a mere claim to a connection to a
company with an alleged intent to produce a product will allow Telmex to keep
its web site.
In
summary, Telmex has failed to rebut any of the evidence of its bad faith, and
has
submitted no
evidence of any legitimate rights in the name.
The domain name ArgyleWines.com should be transferred to the genuine,
documented owner and maker of quality ARGYLE wines, Argyle Winery."
FINDINGS
In view of Complainant’s and Respondent’s contentions
there are three substantive topics to be discussed and decided upon in these
reasons for decision.
Those substantive topics are:
(1) whether under
Policy ¶ 4(a)(i) the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2) whether under
Policy ¶ 4(a)(ii) the Respondent has any rights or legitimate interests in
respect of the domain name; and
(3) whether under
Policy ¶ 4(a)(iii) the domain name has been registered and is being used in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(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.
As
set out below, the Panel finds that all three of the elements listed in the
immediately preceding paragraph have been proven in this proceeding.
Identical or Confusingly Similar
The Panel finds that the domain name at issue is confusingly similar to
Complainant’s ARGYLE mark because it incorporates Complainant’s mark in its
entirety with the term “wines” which are the very goods regarding which the
mark is registered. Moreover, the
addition of a top-level domain name like “.com” is irrelevant for purposes of
determining confusing similarity. For
example, see (i) Prudential Ins.
Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) finding that
the domain name was identical to the complainant’s PRUDENTIAL ONLINE trademark
because the root of the domain name, namely the word "Prudential,"
was identical to the complainant’s mark and that as a result the domain name in
its entirety was confusingly similar to the complainant’s family of marks; (ii) 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; and (iii) Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar.
3, 2000) finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were confusingly
similar to the trademark.
Rights or Legitimate Interests
As in
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) so too in this case: the Respondent has not been commonly known by the
domain name at issue and so does not, on that basis, have "rights or
legitimate interests" in respect of the domain name at issue pursuant to
Policy ¶ 4(c)(ii). Moreover,
Complainant’s ARGYLE mark connotes its well-known vineyard; as a result,
Respondent is presumed not to be commonly known by Complainant’s famous ARGYLE
mark, particularly in combination with “wines”, which is what Complainant is
known for. Similarly, see for example (i)
Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001)
finding sufficient proof that respondent was not commonly known by a domain
name confusingly similar to complainant’s VICTORIA’S SECRET mark because of
complainant’s well established use of the mark; and (ii) Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
finding no rights or legitimate interests in respect of that domain name at
issue where one “would be hard pressed to find a person who may show a right or
legitimate interest” in a domain name containing complainant's distinct and
famous NIKE trademark.
Furthermore, as in AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept.
27, 2000) so too in this case: the Respondent did not even provide evidence of
the existence of its contended client, or of its contended client’s business,
so it cannot be determined to have "rights or legitimate interests"
in respect of the disputed domain name.
Registration and Use in Bad Faith
Furthermore, the Respondent’s selection
of the ARGYLE mark combined with “wines”, the very product Complainant is
famous for, and the lack of evidence that Respondent is in any way affiliated
with wine service indicates that Respondent knew of Complainant’s mark and
business and deliberately registered a confusingly similar domain name to
capitalize on the Complainant’s goodwill.
That is evidence of bad faith. Similarly, see for example Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration.
DECISION
It is the decision of the Panel that the
registration of the domain name at issue be transferred from the
Respondent to the Complainant.
Rodney C. Kyle, Panelist
Dated: March 4, 2002
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[1] Harvey Steiman, The Wine Spectator, September 2000.
[2] Since at least 1999, Argyle Winery has also done extensive business on the Internet, at www.argylewinery.com.
[3] This Panel is empowered to notice appropriate national law. See Rule 15(a). Relevant provisions of Title 15, United States Code include §§ 1125(a), 1125(c), and 1125(d).