E. & J. Gallo Winery v. Angel Albanes
Claim Number: FA0208000122152
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
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
web site.
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.
FINDINGS
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.
DISCUSSION
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.
(Ret.), Panelist
Dated: October 7, 2002
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