national arbitration forum

 

DECISION

 

Constellation Brands Inc. and its wholly owned subsidiary Robert Mondavi Winery v. Cayman Ninety Business c/o Domain Administrator

Claim Number: FA0906001271177

 

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 Cayman Ninety Business c/o Domain Administrator (“Respondent”), Grand Cayman.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <mondaviwinery.com> and <woodbridgewine.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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2009.

 

On June 30, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <mondaviwinery.com> and <woodbridgewine.com> domain names are registered with Rebel.com and that Respondent is the current registrant of the names.  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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@mondaviwinery.com and postmaster@woodbridgewine.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 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

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

 

2.      Respondent does not have any rights or legitimate interests in the <mondaviwinery.com> and <woodbridgewine.com> domain names.

 

3.      Respondent registered and used the <mondaviwinery.com> and <woodbridgewine.com> domain names 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 is also the owner of the WOODBRIDGE mark, registered with the USPTO (Reg. No. 1,495,291 issued July 5, 1988) and the UKIPO (Reg. No. 537,183 issued May 19, 1999).  Complainant uses its ROBERT MONDAVI and WOODBRIDGE marks in conjunction with its WOODBRIDGE 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’s <mondaviwinery.com> and <woodbridgewine.com> domain names were registered on October 2, 2005.  The disputed domain names each resolve to a website featuring sponsored links that further resolve to the websites of Complainant’s competitors and other third-party websites. 

 

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 registrations with the USPTO and the UKIPO for the ROBERT MONDAVI and WOODBRIDGE marks sufficiently convey rights in the marks 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.”).

 

Respondent’s <mondaviwinery.com> domain name incorporates the distinctive portion of Complainant’s ROBERT MONDAVI mark with the addition of the descriptive term “winery” and the affixation of the generic top-level domain (“gTLD”) “.com.”  The term “winery” 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 <mondaviwinery.com> domain name from Complainant’s ROBERT MONDAVI mark.  Thus, the Panel finds that Respondent’s <mondaviwinery.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 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). 

 

Respondent’s <woodbridgewine.com> domain name contains Complainant’s WOODBRIDGE mark in its entirety with the addition of the descriptive term “wine,” describing Complainant’s business, and the affixation of the gTLD “.com.”  For the foregoing reasons the Panel finds that these additions do not sufficiently alter the disputed domain name to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  Therefore, the Panel concludes that Respondent’s <woodbridgewine.com> domain name is confusingly similar to Complainant’s WOODBRIDGE mark under Policy ¶ 4(a)(i).   

 

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 names.  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 names under 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.”).  In the present proceeding, Respondent did not respond to Complainant’s allegations.  Such a failure permits the Panel to make an inference that Respondent lacks rights to or legitimate interests in the <mondaviwinery.com> and <woodbridgewine.com> domain names.  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). 

 

The disputed domain names each resolve to a website featuring sponsored click-through links that further resolve to the websites of Complainant’s competitors as well as several unrelated third-party websites.  The Panel presumes that Respondent is earning click-through fees for each Internet user that is redirected to the sponsored websites.  Thus, the Panel concludes that Respondent’s use of the <mondaviwinery.com> and <woodbridgewine.com> domain names is not connected with 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). 

 

Moreover, Complainant contends that Respondent is not commonly known by either the <mondaviwinery.com> or <woodbridgewine.com> domain names pursuant to Policy ¶ 4(c)(ii).  The pertinent WHOIS information identifies the registrant as “Cayman Ninety Business c/o Domain Administrator,” 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 either the <mondaviwinery.com> or <woodbridgewine.com> domain names under 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 websites resolving from the <mondaviwinery.com> and <woodbridgewine.com> domain names 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 names under Policy ¶ 4(b)(iii).  See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). 

 

Complainant contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar disputed domain names by creating a likelihood of confusion with Complainant’s ROBERT MONDAVI and WOODBRIDGE marks.  The resolving websites to the disputed domain names each contain click-through links that further resolve to the websites of Complainant’s competitors and various third-party websites.  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 names under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also University  of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). 

 

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 <mondaviwinery.com> and <woodbridgewine.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 11, 2009

 

 

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