ABC Liquors, Inc. v.
Claim Number: FA0906001266499
Complainant is ABC Liquors, Inc. (“Complainant”), represented by Allison
R. Imber, of Allen, Dyer, Doppelt, Milbrath &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abcfinewinesandspirits.com>, registered with Compana, Llc.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On June 5, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <abcfinewinesandspirits.com> domain name is registered with Compana, Llc and that the Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 June 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 2009 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.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The Complainant has used, since at least as early as May 1994, the service mark ABC FINE WINE & SPIRITS (U.S. Trademark Reg. No 2,038,392), in relation to “wine storage services,” “entertainment exhibitions in the nature of wine and beer tastings,” and “wine consulting and retail store and cocktail lounges featuring liquor, wine, beer, and related gift items.”
Complainant first submits that the domain name at issue, <abcfinewinesandspirits.com>, is
confusingly similar to its registered service mark on the ground that the
domain name wholly incorporates the service mark. This fact alone is, according
to the Complainant, sufficient to establish confusing similarity for the
purposes of the Policy. Paccar Inc.
v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000); Quixtar
Investments Inc. v. Dennis Hoffman, D2000-0253 (WIPO
Complainant also argues that confusion arises from the fact that the
Respondent’s domain name differs
from its mark only by the inconsequential addition of an “s” at the end of the
word “wine,” which is not enough to mitigate a likelihood of confusion. See
La Caixa D’Estalvis I Pensions de Barcelona
v. José Antonio Bernal, D2006-1637 (WIPO
4. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the latter is a “typosquatted version” of its service mark. Complainant contends that Respondent is a notorious “cyber-squatter” and “typo-squatter”, this case being but another example of his questionable activities.
5. The Respondent, in the opinion of the Complainant, uses the domain name to display a series of hyperlinks that advertise competitor providers of alcohol and bar related products and services. This is a well-known tactic that Respondent has engaged in numerous times and for its own commercial gain. Therefore, it is not a legitimate use.
6. In addition, the Respondent has no rights or legitimate interests in the domain name because, according to the Complainant, it is not commonly known by this name. On this matter, the Complainant refers to the ownership pages of the Respondent’s website, which do not indicate that the Respondent is generally known by the domain name at issue. Moreover, the Complainant argues that it is highly unlikely that this would be the case since it has a registered trademark for essentially the identical name and has not given Respondent permission to use it (see Exhibit D, true and correct copies of DomainTools and BudgetNames.com information for <abcfinewinesandspirits.com>).
Complainant further states, in support of the alleged absence of rights or legitimate
interests, that the Respondent is not using the domain name in connection with a
bona fide offering of goods or services or as a fair use, since it is using it to offer hyperlink advertisements for
goods and services closely related and confusingly similar to those offered by
the Complainant itself. According to the Complainant, not only is this activity
likely to cause consumer confusion, but it is intended to divert consumers from
the Complainant’s legitimate website, the Respondent “presumably receiv[ing]
click-through fees for each redirected Internet user.” Babe Ease, LLC v.
8. The Complainant, in alleging that the Respondent uses the domain name without colour of right and illegitimately, submits that there are over 140 domain name disputes filed against the Respondent (see Exhibit E, true and correct copies of search pages for Texas International Property Associates named as respondent from National Arbitration Forum and World International Property Organization).
9. Thirdly, the Complainant submits that the Respondent registered and used the domain name in bad faith. In support of this allegation, the Complainant reiterates that the Respondent notoriously practices “typosquatting”, an activity which in itself constitutes evidence of bad faith registration and use. Zone Labs, Inc. v. Zuccarini, Case No. FA 190613 (Nat. Arb. Forum Oct. 15, 2003).
10. In light of the fact that the Complainant was using its mark for more than eleven years before the registration by the Respondent of its domain name, and considering the Respondent’s alleged “well-documented history of cybersquatting,” the Complainant is of the opinion that this choice of domain name was not random or accidental. This assertion is also based on the fact that <abcfinewinesandspirits.com> is neither a generic nor a specific term.
11. The Complainant further asserts that the Respondent’s failure to provide any substantive response to the cease-and-desist letter that was sent to him, as well as the fact that the Respondent was unreachable, are indicators of its bad faith (see Exhibit F, comprising Complainant’s cease-and-desist letter to Respondent; responsive e-mail from firstname.lastname@example.org; and Complainant’s follow-up letter to Respondent regarding its lack of response).
Complainant finally denounces what is referred to in numerous cases involving
the Respondent as a “pattern of bad faith registration and use” (see amongst others Big Green
Egg, Inc. v.
1. The Respondent agrees to the relief requested by the Complainant and asserts that it will, upon order of the Panel, transfer the domain name at issue <abcfinewinesandspirits.com>. It nonetheless states that this consent to transfer should not be interpreted as “an admission of the three elements of 4(a) of the Policy” but rather as “an offer of a unliteral (sic) consent to transfer.”
2. According to Texas International Property Associates - NA NA, where the Respondent has made an offer to transfer, there are three ways the Panel could proceed, these three alternatives being identified in The Cartoon Network LP, LLLP v. Mike Morgan, D2005-1132 (WIPO Jan. 5, 2006) :
(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claims, see Williams-Sonoma Inc. v. EZ-Port, D2000-0207 (WIPO May 8, 2000); Slumberland France v. Chadia Acohuri, D2000-0195 (WIPO June 14, 2000;
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis, see Qosina Corporation v. Qosmedix Group, D2003-0620 (WIPO Nov. 10, 2003); Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Jan. 19, 2001); and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right, Koninklijke Philips Electronics N.V. v. Mangeware, D2001-0796 (WIPO Oct. 25, 2001), or because there is some reason to doubt the genuineness of the Respondent’s consent, Societe Francaise du Radiotelephone-SFR v. Karen, D2004-0386 (WIPO Jul. 22, 2004), Eurobet UK Limited v. Grand Slam Co., D2003-0745 (WIPO Dec. 17, 2003).
3. The Respondent further states that the Panel should opt for the first alternative and grant the Complainant an immediate transfer without discussing the merits. The Respondent finds an expeditious decision to be more suited to the facts of the case, as both parties agree upon a transfer. Furthermore, the Respondent evokes arguments of judicial economy as well as Section 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), both of which, according to the Respondent, support an immediate transfer. Williams-Sonoma, Inc. v. EZ-Port, supra; Citigroup Inc. v. Texas International Property Associates – NA NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008).
4. The Respondent therefore requests that the Panel order an immediate transfer of the disputed domain name. It also requests that it should be given the opportunity to prepare a more formal response if the Panel decides that further analysis is required.
The Panel shall first address the issue of whether or not its decision
should include a discussion on the facts supporting the claims. As it appears
from its response, Respondent has not contested the transfer of the disputed
domain name to Complainant but instead agrees to it. In cases such as this, the Panel may decide
that an analysis under the Policy is not required and order an immediate
transfer, as it did in Boehringer Ingelheim Int’l GmbH v. Modern Ltd.
– Cayman Web Dev., FA 133625 (Nat. Arb. Forum
However, alternatively, it may be decided that this expeditious
approach would be a way for cybersquatters to avoid adverse findings against
them. This is the reason why the Panel, in Graebel Van Lines, Inc. v.
Having reached that conclusion, the Panel further states that the Respondent will not be given more time to prepare a more extensive response. In accordance with Section 5 of the Rules, the Respondent was already given twenty (20) days from the date of the commencement of the proceedings to submit such a response. Had the Respondent wanted to appropriately and fully reply to the Complaint, it would have had more than enough time to do so.
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 and is being used in bad faith.
Complainant asserts its rights in the ABC
FINE WINE & SPIRITS mark through its registration of the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,038,392). The Panel finds that
this registration adequately establishes Complainant’s rights in the asserted
mark for the purposes of Policy ¶ 4(a)(i).
The Panel furthers states that the <abcfinewinesandspirits.com> domain name is confusingly similar to the ABC FINE WINE & SPIRITS mark as per Policy ¶ 4(a)(i). None of the minor differences (i.e.,
omission of spaces, addition of the generic top-level domain “.com,”
substitution of the ampersand with an equivalent “and,” addition of an “s” to
the WINE element) noticed between the domain name and the trademark is of sufficient
weight to eliminate any risk of confusion. See Bond & Co.
Jewelers, Inc. v.
Having reached the above conclusions, the Panel therefore finds that Complainant met its first burden of proof regarding Paragraph 4(a)(i) of the Policy.
The Panel is of the view that the Complainant made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden of proof consequently shifts to the Respondent to demonstrate its rights or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the domain name at issue lists Respondent as
“Texas International Property
Associates - NA NA.” The Panel thus agrees with the Complainant’s contention
that the Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii). See
The Complainant provided no evidence of the fact that the Respondent displays an advertising website that promotes its competitors.
The Panel adheres to
the Complainant’s view that the disputed domain name is a typosquatted version
of Complainant’s mark, the only modification of importance that was made by the
Respondent being the addition of an “s” at the end of the word “WINE.”
Furthermore, the Panel finds the Respondent to be a typosquatter, and infers
from this conclusion the Respondent’s lack of rights and legitimate interests as
per Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292, (Nat. Arb. Forum Sept. 19, 2003) (finding that
the respondent lacked rights and legitimate interests in the disputed
domain names because it “engaged in the practice of typosquatting
by taking advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft Corp. v.
The Respondent neither confirmed nor denied Complainant’s arguments with regards to Policy ¶ 4(a)(ii). Consequently, it failed to meet its burden of proof under the same section.
The Panel is therefore of the view that the Complainant successfully met its second burden of proof as per Policy ¶ 4(a)(ii).
argues that Respondent is a recidivist in the field of typosquatting, as showed
by numerous other UDRP proceedings wherein the disputed domain names were
transferred from the Respondent to the respective complainants in those
cases. See, e.g., PC
Connection, Inc. v.
It appears to the Panel that the Respondent, by using the domain name, is attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. This conclusion evidences the Respondent’s registration and use of domain name in bad faith as per Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
The evidence indicates that the
Respondent knew or must have known about the Complainant and its trademark
rights. The Panel infers from this
finding yet another evidence of the Respondent’s bad faith registration and use
under Policy ¶ 4(a)(iii). See Yahoo!
Finally, having stated that
Respondent practices typosquatting, the Panel agrees with the Complainant’s
assertion that this conclusion supports the fact that the Respondent has
engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
The Panel is consequently of the opinion that the Complainant has met its third and final burden of proof required under that Policy ¶ (a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abcfinewinesandspirits.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
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