national arbitration forum

 

DECISION

 

Constellation Brands Inc. and its wholly-owned subsidiary Robert Mondavi Winery v. Top Business Names

Claim Number: FA0906001270471

 

PARTIES

Complainant is Constellation Brands Inc. and its wholly-owned subsidiary Robert Mondavi Winery (“Complainant”), represented by John M. Rannells, of Baker and Rannells PA, New Jersey, USA.  Respondent is Top Business Names (“Respondent”), Grand Cayman.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <robertmondaviwine.com>, registered with Rebel.com.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.

 

On June 29, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <robertmondaviwine.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com has verified that Respondent is bound by the Rebel.com 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 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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@robertmondaviwine.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <robertmondaviwine.com> domain name is confusingly similar to Complainant’s ROBERT MONDAVI mark.

 

2.      Respondent does not have any rights or legitimate interests in the <robertmondaviwine.com> domain name.

 

3.      Respondent registered and used the <robertmondaviwine.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Constellation Brands Inc. and its wholly-owned subsidiary, Robert Mondavi Winery, (collectively, “Complainant”) are the owners of the ROBERT MONDAVI trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,349,883 issued July 16, 1985) and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,300,726 issued October 20, 1989).  Complainant uses its ROBERT MONDAVI mark in conjunction with its wine, vineyard services, and wine club based out of Napa Valley, California.  Complainant’s wines have won numerous accolades, awards, and high ratings, garnering a prominent national and international reputation. 

 

Respondent registered the <robertmondaviwine.com> domain name on March 27, 2009.  The resolving website features click-through links that further resolve to websites of Complainant and those of Complainant’s competitors in the wine industry.      

 

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registration with the USPTO and the UKIPO for the ROBERT MONDAVI mark sufficiently conveys rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i).  See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). 

 

Complainant contends that Respondent’s <robertmondaviwine.com> domain name is confusingly similar to its ROBERT MONDAVI mark pursuant to Policy ¶ 4(a)(i).  The disputed domain name incorporates Complainant’s mark in its entirety with the omission of the space between the words, the addition of the descriptive term “wine,” and the affixation of the generic top-level domain “.com.”  The term “wine” clearly relates to Complainant’s goods and services and thus, is descriptive of Complainant’s business.  The Panel finds that these alterations fail to sufficiently distinguish Respondent’s <robertmondaviwine.com> domain name from Complainant’s ROBERT MONDAVI mark.  Thus, the Panel finds that Respondent’s <robertmondaviwine.com> domain name is confusingly similar to Complainant’s ROBERT MONDAVI mark under Policy ¶ 4(a)(i).  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

For the purposes of a Policy ¶ 4(a)(ii) analysis, corresponding to the factors listed in Policy ¶ 4(c), Complainant must first make a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain name.  The Panel finds that Complainant has done so in this proceeding.  Once Complainant satisfies this burden, the Respondent then has the burden to show that it has relevant rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c).  In the present proceeding, Respondent did not respond to Complainant’s allegations.  Such failure permits the Panel to make an inference that Respondent lacks rights to or legitimate interests in the <robertmondaviwine.com> domain name.  However, the Panel chooses to review the record to determine whether evidence in the record would tend to suggest that Respondent has such rights or legitimate interests pursuant to Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The disputed domain name resolves to a website displaying various click-through links resolving to Complainant’s website and the websites of Complainant’s competitors in the wine industry.  Respondent presumably receives compensation for each redirected Internet user that clicks on one of these links.  The Panel finds that Respondent’s attempt to profit by using a confusingly similar domain name is not indicative of either a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). 

 

Furthermore, Complainant contends that Respondent is not commonly known by the <robertmondaviwine.com> domain name under Policy ¶ 4(c)(ii).  The WHOIS information identifies the registrant as “Top Business Names,” and the Panel has no other information to rely upon in the record with respect to this element of the Policy.  Therefore, the Panel finds that Respondent is not commonly known by the <robertmondaviwine.com> domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Some of the links appearing on the website resolving from the <robertmondaviwine.com> domain name promote wine businesses that compete with Complainant.  The Panel finds that this potential for disruption to Complainant’s business provides evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). 

 

Complainant contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar disputed domain name by creating a likelihood of confusion with Complainant’s ROBERT MONDAVI mark.  The disputed domain name’s resolving website contains click-through links that further resolve to the websites of Complainant and Complainant’s competitors.  The Panel presumes that Respondent is profiting from such use through the accrual of click-through fees.  Thus, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a website with links to the products of the complainant and to complainant’s competitors); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).   

 

Complainant has satisfied Policy ¶ 4(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 <robertmondaviwine.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated: August 6, 2009

 

 

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