ABC Liquors, Inc. v.
Claim Number: FA0906001266499
PARTIES
Complainant is ABC Liquors, Inc. (“Complainant”), represented by Allison
R. Imber, of Allen, Dyer, Doppelt, Milbrath &
Gilchrist, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abcfinewinesandspirits.com>,
registered with Compana, Llc.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
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 postmaster@abcfinewinesandspirits.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.”
2.
The
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
3.
The
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>).
7.
The
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
texasipa@gmail.com; and Complainant’s follow-up letter to Respondent regarding
its lack of response).
12.
The
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.
B. Respondent
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.
FINDINGS
DISCUSSION
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.
Domain Registration
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).
Complainant
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!
Inc. v.
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.
Forum
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).
DECISION
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
Dated
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