Constellation Wines U.S., Inc. and Constellation Brands, Inc. v. George Popescu
Claim Number: FA1112001419289
Complainant is Constellation Wines U.S., Inc. and Constellation Brands, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, USA. Respondent is George Popescu (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net>, registered with GoDaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 9, 2011.
On December 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wildhorsewine.com, postmaster@wildhorsewine.net, postmaster@wildhorsewinebar.com, and postmaster@wildhorsewines.net. Also on December 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names are confusingly similar to Complainant’s WILD HORSE mark.
2. Respondent does not have any rights or legitimate interests in the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names.
3. Respondent registered and used the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Constellation Wines U.S., Inc., is a wholly owned subsidiary of Complainant, Constellation Brands, Inc. As this relationship is adequate to establish a sufficient nexus or link between the Complainants, the Panel will treat the Complainants as a single entity in this proceeding and allow them to bring this Complaint jointly. The Complainants will be collectively referred to as “Complainant” for the rest of this decision. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its WILD HORSE mark (Reg. No. 1,483,753 registered April 5, 1988). Complainant uses its WILD HORSE mark in connection with the marketing and sale of its wines.
Respondent, George Popescu, registered the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names no earlier than April 11, 2011. The disputed domain names resolve to parked websites that contain hyperlinks resolving to unrelated third parties.
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.
Complainant argues that it owns rights in its WILD HORSE mark under Policy ¶ 4(a)(i) and attaches a copy of its trademark registration with the USPTO (Reg. No. 1,483,753 registered April 5, 1988). Based on this trademark registration, the Panel agrees with Complainant and holds that Complainant owns rights in the WILD HORSE mark for the purposes of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names are confusingly similar to Complainant’s WILD HORSE mark because all of the disputed domain names contain Complainant’s WILD HORSE mark without the space, descriptive terms relating to Complainant’s wine business, such as “wine,” “wines,” or “winebar,” and the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel determines that the addition of the descriptive terms fails to adequately distinguish the disputed domain names from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel further deems the removal of the space and the addition a gTLD irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); 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)). Thus, the Panel concludes that Respondent’s <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names are confusingly similar to Complainant’s WILD HORSE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names. However, the Panel will examine the record to determine whether Respondent has rights 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant argues that Respondent is not commonly known by the disputed domain names. Complainant contends that the WHOIS information, which identifies “George Popescu” as the registrant of the disputed domain names, indicates that Respondent is not commonly known by the domain names. Complainant asserts that Respondent is not affiliated with Complainant and that Respondent is not licensed or otherwise authorized to use Complainant’s WILD HORSE mark. Based on the evidence, Complainant presents, the Panel concludes that Respondent is not commonly known by the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names in accordance with Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names because Respondent simply parked the disputed domain names. Complainant provides screen shots of the websites resolving from the disputed domain names, and the Panel determines that Respondent uses the disputed domain names to host hyperlinks resolving to unrelated third parties. Complainant accuses Respondent of receiving a fee or commission each time an Internet user clicks on one of the hyperlinks. The Panel believes this accusation to be true. Thus, the Panel determines that Respondent’s use of the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent’s registration and use of the disputed domain names are part of Respondent’s attempt to prevent Complainant from having a presence on the Internet. Complainant contends that Respondent owns a competing winery in California, USA, called “Cielo Estate Winery.” Based on Respondent’s registration of four disputed domain names in this case and Respondent’s status as a competing wine marker and seller, the Panel determines that Respondent registered and uses the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names in bad faith for the purposes of Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s SONY marks and (2) the respondent registered multiple domain names which infringed upon the complainant’s mark). The Panel notes that Complainant also provided a list of domain names registered by Respondent that contain third party marks. As these domain names are not a part of this case and a UDRP panel has not made a determination about those domain names under the Policy, the Panel chooses to ignore the registration of the other domain names in its analysis under the Policy.
Complainant further alleges that Respondent registered and uses the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names in an attempt to commercially benefit by creating Internet user confusion as to Complainant’s source, endorsement, affiliation, and sponsorship of the disputed domain names and resolving websites. Complainant asserts that Respondent receives a commission or fee each time an Internet user clicks on a hyperlinks. As the Panel previously found that the disputed domain names are confusingly similar to Complainant’s mark and that Respondent does indeed receive a commission or fee, the Panel holds that Respondent is guilty of Policy ¶ 4(b)(iv) bad faith registration and use of the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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)).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the WILD HORSE mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel determines that Respondent did have actual notice of Complainant’s rights in the WILD HORSE mark because Respondent is a competitor of Complainant and operates a winery within the same state as Complainant. Consequently, the Panel finds further evidence that Respondent registered and uses the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wildhorsewine.com>, <wildhorsewine.net>, <wildhorsewinebar.com>, and <wildhorsewines.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 14, 2012
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