E. & J. Gallo Winery v. Angel Albanes
Claim Number: FA0208000122152
Complainant is E. & J. Gallo Winery, Modesto, CA (“Complainant”) represented by Steven M. Weinberg. Respondent is Angel Albanes, San Jose, CA (“Respondent”) represented by Angel Albanes.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gallo.us>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 20, 2002; the Forum received a hard copy of the Complaint on August 20, 2002.
On August 21, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <gallo.us> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on September 10, 2002.
Timely additional submissions were submitted by Complainant on September 16, 2002, and by Respondent on September 20, 2002.
On September 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr., (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <gallo.us> domain name is identical to Complainant’s registered GALLO Marks.
2. Respondent does not have any rights or legitimate interests in the <gallo.us> domain name.
3. Respondent registered or used the <gallo.us> domain name in bad faith.
contends to have a legitimate interest in using the domain name <gallo.us> for a Spanish newsletter website, with “awakening issues for
the Hispanic community in the USA.”
Respondent contends that the term “gallo” is a nonexclusive
generic-Spanish word that he has the right to use for his Spanish newsletter
C. Additional Submissions
Complainant contends that Respondent has already created a web site under the <gallo.us> domain name which is devoted entirely to wine. Respondent while conceding that a wine directory appears on the parking page for the web site, contends that the Registrar automatically placed the domain name on a parking page containing the wine directory and that Respondent had nothing to do with creating the wine directory for the web site.
Complainant, E. & J. Gallo Winery (“Gallo”), is a family-owned and operated business,
with its headquarters in the Central California community of Modesto. It was founded in
1933 by two brothers, Ernest and Julio Gallo.
The Winery is the largest wine-producing organization in the world. Although all of its
bottling and shipping takes place in Modesto, it has large wineries in Sonoma, Fresno and
Livingston, California. Three of these wineries are the three largest wineries in the
world. The Winery presses about one third (1/3) the total annual grape harvest of
California. The wines bearing the GALLO trademarks are the largest selling brands of
wine in the United States – and probably in the world.
Complainant’s wines have been honored with awards in competitions in the United States and around the world. In 1997, Complainant was named “Winery of the Year” by Wine and Spirits magazine. In 1998, the Winery was awarded “International Winery of the Year” at the 1998 Vinitaly International Wine Competition in Verona, Italy and “Winery of the Year” at the 1998 VinItaly International Wine Competition in Verona, Italy and “Winery of the Year” at the 1998 San Francisco International Wine Competition. In addition, the Winery has received other awards for its GALLO brands in the 1998 London International Wine and Spirits Competition, and 1998 Japan International Wine Challenge, as well as being awarded triple gold medals at the San Francisco International Wine Fair. Complainant was the first winery in the long history of this competition to achieve this distinction. In 1999, Complainant was named “Winery of the Century” at the Los Angeles County Fair. In that same year, Complainant won the Prix d’Excellence at the 1999 Challenge International du Vin and the Chardonnay Trophy at the International Wine Challenge in London. Complainant’s wines continue to be honored internationally. In 2000 and 2001, Complainant’s Winery was again awarded “Winery of the Year” at VinItaly.
Complainant’s flagship trademarks are GALLO and ERNEST & JULIO GALLO (collectively referred to hereafter as the “GALLO Marks”). The GALLO Marks were used on the first shipment of wine sold by Complainant in 1933, and have been continuously used ever since that time. The GALLO Marks are used either alone or in combination with other words such as GALLO Livingston Cellars, GALLO Classic Burgundy, ERNEST & JULIO GALLO, GALLO OF SONOMA, etc. Over four billion bottles of wine bearing the GALLO Marks have been sold throughout the world.
The GALLO Marks have been used in the United States since 1933, and have been used in eighty-one countries elsewhere in the world since the 1960’s.
Currently, Complainant owns thirteen (13) federal registrations for trademarks for wines and other products, which include the name “Gallo” in the United States, the earliest of which dates back to 1953. The GALLO Marks are also registered in the individual states of the United States and in 120 other countries throughout the world.
Complainant has always been the industry leader in advertising and promotion. During the 1934 - 2001 period, it spent over $600 million (U.S.) advertising and promoting GALLO brand wines throughout the world. Complainant also has consistently invested multi-millions of dollars in advertising its products internationally. For example, in the year 2002, Complainant will spend over $27 million in advertising its brands internationally.
Respondent, Angel Albanes, is of Hispanic origin, and his primary language is Spanish. In Spanish the term “gallo” is a very popular generic word. The Spanish word “gallo” as defined by the American Heritage Spanish/English Dictionary means rooster, false note, boss, chief, valiant, fire engine, serenade, second hand object. Respondent was drawn to the word “gallo” because in his culture the rooster is associated with “awakening,” i.e., “A rooster with its crowing in the early hours of the morning announces a new day.”
Respondent’s Spanish language newsletter would be devoted to his “dream of bringing awakening issues to the Hispanic communities in the USA” and would have nothing related to wine. Respondent claims to have not yet developed the <gallo.us> domain name for a Spanish language newsletter because of financial difficulties and problems with his computer. Although Respondent has communicated to several people his intentions to create a Spanish newsletter web site, he has not shown any preparations to do so.
After having registered the <gallo.us> domain name, the Register automatically placed the domain name on a parking page which has a wine directory. The web site has no indication of a Spanish language newsletter.
Other businesses with an Internet
presence have the term “gallo” in their name.
The top level domains <gallo.net>, and <gallo.org> are being
used by a business other than Complainant; other top level domains such as
<gallo.tv>, <gallo.nu>, and <gallo.cc> are held by parties
other than Complainant.
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.”
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the GALLO Marks by registration and subsequent continuous use.
Respondent's domain name <gallo.us> is identical or virtually identical to and confusingly similar to Complainant’s four (4) federally registered trademarks for the mark GALLO. It also is identical to Complainant’s trading name and the name by which its is best known, i.e., GALLO. Further, it is virtually identical to Complainant’s principal domain name, <gallo.com>.
Because the addition of a top-level domain, such as “.us,” is required of domain name registrants, it is inconsequential when conducting a Policy ¶ 4(a)(i) “confusingly similar” analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”).
Respondent contends that the term “gallo” is generic and non-exclusive. However, Complainant’s registration of a trademark with the United States Patent and Trademark Office establishes a presumption of the exclusive right to use based on registration. 15 U.S.C. 1057 (b); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO April 22, 2000).
The GALLO Marks have been the subject of four (4) significant judicial decisions in the United States. In all four cases, the courts held that the GALLO Marks are extremely strong and are entitled to the broadest degree of protection. See E. & J. Gallo Winery v. Gallo Cattle Co., 12 U.S.P.Q.2d 1657, 1667 (E.D. Cal. 1989), affirmed 967 F.2d 1280 (9th Cir. 1992) ("The GALLO brand is universally known both nationally and in California, and has become an extraordinarily strong and distinctive mark...." The Court enjoined the use of GALLO on cheeses); see also E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N.D. Cal. 1991) (The Court found that the GALLO Marks had "virtually universal recognition," that they had "virtually unparalleled strength," and that they were a "mighty fortress" of a trademark in the United States); see also E. & J. Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403 (E.D.Cal. 1994) (the Court enjoined a Mexican company from selling playing cards, board games, confetti, party streamers and poker chips. The Court found that over 60 years of extensive use and advertising had made Gallo's famous marks "extraordinarily strong and distinctive," and that the defendants' use of GALLO would destroy the distinctiveness and commercial value of the marks); see also E. & J. Gallo Winery v. Spider Webs, Ltd., 129 F. Supp 1033 (S.D. Tex. 2001), aff'd, 286 F.3d 270 (5th Cir. 2002) (the Court invoked the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. 1125 (d)(1) and enjoined the defendants from using the domain name Ernestandjuliogallo.com. The Court also enjoined use of the domain name under the Texas anti-dilution law, finding that Gallo’s marks were well-known and that defendants’ use of GALLO was likely to destroy the distinctiveness and commercial value of the marks).
The fame of GALLO Marks has been found by two UDRP decisions. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO November 12, 2000) (“When Respondent registered the Domain Name “winegallo.com” it knew or should have known of the existence of the E &J Gallo Winery and the famous GALLO Marks.”); see also E. & J. Gallo Winery v. Missy Rosar, D2002-0104 (WIPO April 3, 2002).
The fame of the GALLO Marks has also been recognized outside of the United States. In Gallo Winery v. Mighty Corp., No. 93-850, the Regional Trial Court of Makati City Branch 57 (Philippines) issued a decision in December 1998 ordering Mighty Corporation to cease and desist from using Complainant’s registered and well-known GALLO trademark and from committing other acts of unfair competition against the Gallo Winery by manufacturing and selling their cigarettes in the domestic or export markets under the GALLO trademark. In so ordering, the Court held that the GALLO Marks were “internationally well known” and entitled to broad protection.
The Panel finds that the GALLO mark is distinctive of Complainant’s services and is famous worldwide.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. Respondent has failed to submit any evidence showing preparations to use the domain name. A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect to the domain name at issue.” See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Respondent has neither prior rights in the name, nor is he affiliated with Complainant, nor is he otherwise authorized to use Complainant’s mark. See Anheuser-Busch Incorporated v. Gilinda Rogers A/K/A Gilinda Granger, D2001-0134 (WIPO April 4, 2001) (finding that Respondent has "no rights or legitimate interest in the disputed domain names, other than to trade off the goodwill of the Complainant").
There is no evidence that suggests Respondent is the owner or beneficiary of a trademark or service mark indicating rights in the <gallo.us> domain name under Policy ¶ 4(c)(i). Additionally, Respondent has failed to proffer any evidence that would suggest it is commonly known by the domain name pursuant to Policy ¶ 4(c)(iii). Therefore, there is no connection between the domain name and Respondent. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in the domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent has used Complainant’s GALLO mark to divert Internet users to a web site that also lists a wine directory. It is irrelevant whether Respondent or the Register created the wine directory on the site. Respondent has permitted the Register to park the domain name and list the wine directory on the same site. Therefore, Respondent’s opportunistic use of Complainant’s mark in a domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii). Furthermore, because Respondent is misleadingly diverting potential consumers of Complainant’s GALLO product to a competing website, Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).
Respondent contends that he has legitimate rights to the domain name <gallo.us> since the same term can be used for different purposes. See Nutisystem.com, v.Easthaven, Ltd., CPR012 (CPR Institute for Dispute Resolution October 11, 2000) (“the scope of complainant’s trademark rights is insufficient to bar respondent from acquiring legitimate rights in the same term when used for different purpose”). However, because the GALLO mark is famous worldwide, the scope of Complainant’s trademark rights bars Respondent from acquiring legitimate rights in the same term when used for a different purpose. See Mastercard Int’l Inc. v. Mr. Greg Tieu, DBIZ2002-00124 (WIPO June 29, 2002) (Panel’s finding that “the MASTERCARD mark is distinctive of the Complainant’s services and is famous worldwide. . . . distinguishes this case from Nutrisystem.com, Inc. v. Easthaven, Ltd. . . . because the mark MASTERCARD is famous worldwide, the scope of the Complainant’s trademark rights extends beyond the classes of services with respect to which the mark is registered and is sufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose”); see also E. & J. Gallo Winery v. Pasatiempos Gallo, S.A., supra.; see also E. & J. Gallo Winery v. Spider Webs, Ltd, supra.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Policy paragraph 4(b) provides a listing of various instances where the conduct of Respondent would constitute evidence of registration or use in bad faith. However, this list is not an exhaustive representation of bad faith conduct and numerous other examples of bad faith behavior have been articulated by previous Panel decisions. The Panel may look at the “totality of circumstances” in determining if Respondent’s conduct reached the threshold of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
When Respondent registered the domain name at issue he certainly knew or should have known of the existence of Complainant’s Winery and the famous GALLO Marks. Complainant has been using the GALLO Marks since as early as 1933. The GALLO Marks are used in connection with one of the most popular brands of wine in the United States, and probably the world. Complainant is based in California, where Respondent resides, and has been producing and selling wines there for almost 70 years. See Document Techs. v. International Elec. Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge of Complainant’s mark at the time of registration of the domain name suggests bad faith); see also Anheuser-Busch Inc. v. Gilinda Rogers A/K/A Gilinda Granger, D2001-0134 (WIPO April 4, 2001) (the registration and use of domain names with the intent to lead ordinary consumers to an illegitimate website by creating confusion as to 'source, sponsorship, affiliation, or endorsement' demonstrates bad faith).
Complainant’s GALLO Marks are listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the marks or any confusingly similar variation thereof. Respondent’s registration of a domain name, despite knowledge of Complainant’s preexisting rights, indicates bad faith registration pursuant to Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also 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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
The continued use of the domain name <gallo.us> by Respondent is likely to cause confusion among consumers both as to ownership of the trademark and sponsorship of the website. See Lin Television v. Home in USA, Inc. D2000-0257 (WIPO June 2, 2000) (relevant public is not just Complainant's advertiser, but includes all consumers who recognize the marks as identifying Complainant); see also E. & J. Gallo Winery v. Spiderwebs, Ltd., supra.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Dispute Resolution Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <gallo.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: October 7, 2002
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