Silver
Oak Wine Cellars L.P. v. Domains a/k/a Best Domains
Claim
Number: FA0301000143678
Complainant
is Silver Oak Wine Cellars L.P., Oakville, CA, USA (“Complainant”)
represented by Bonnie J. Barnish, of Owen Wickersham &
Erickson. Respondent is Domains a/k/a Best Domains, Bronx, NY, USA
(“Respondent”).
The domain name at issue is <silveroakwinery.com>,
registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
(the "Forum") electronically on January 27, 2003; the Forum received
a hard copy of the Complaint on January 30, 2003.
On January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum
that the domain name <silveroakwinery.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. 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 February 4, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of February 24, 2003 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@silveroakwinery.com by e-mail.
Having received no Response from Respondent, using the same
contact details and methods as were used for the Commencement Notification, the
Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2003, pursuant to Complainant's request to have the
dispute decided by a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative
Panel (the "Panel") finds that the 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 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 name be transferred from
Respondent to Complainant.
A. Complainant makes the
following assertions:
1.
Respondent’s
<silveroakwinery.com> domain name is confusingly similar to
Complainant’s SILVER OAK mark.
2.
Respondent
does not have any rights or legitimate interests in the <silveroakwinery.com>
domain name.
3.
Respondent
registered and used the <silveroakwinery.com> domain name in bad
faith.
B. Respondent failed to
submit a Response in this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for SILVER OAK (Reg. No. 1,221,150, registered December 21,
1982) related to Complainant’s wine. Complainant also holds international
trademark registrations related to wine, spirits and liquors. Complainant manages a website at
<silveroak.com> that provides information and updates with regards to
Complainant’s winemaking operation.
Respondent
registered the disputed domain name on April 3, 2002. Respondent is using the <silveroakwinery.com>
domain name to redirect Internet traffic to <abortionismurder.org>, which
features graphic pictures of allegedly aborted fetuses. Complainant’s
submission also reveals that Respondent has exhibited a pattern of registering
infringing domain names that redirect users to the <abortionismurder.org>
website. Complainant claims that none of Respondent’s challenged registrations
of domain names have been found to be legitimate.
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.
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
has established rights in the SILVER OAK mark through registration with the
USPTO.
Respondent’s
<silveroakwinery.com> domain name is confusingly similar to
Complainant’s mark because the disputed domain name incorporates the entire
mark and simply adds the descriptive term “winery” and the top-level domain
name “.com.” The addition of the term
“winery” does not prevent Complainant’s trademark from remaining the dominant
feature of the disputed domain name. See Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark).
Moreover,
the addition of a top-level domain adds no distinct characteristics because
top-level domains are a requirement for every domain name on the Internet. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Therefore, the Panel finds that the Complainant has
established Policy ¶ 4(a)(i).
Respondent
has not submitted a Response in this proceeding. Thus, the Panel may accept Complainant’s reasonable allegations
and inferences as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption
that Complainant’s allegations are true unless clearly contradicted by the
evidence).
Furthermore,
the Panel may presume that Respondent lacks any rights or legitimate interests
in the disputed domain name because of Respondent’s failure to respond. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because the Respondent never submitted a response nor provided the Panel
with evidence to suggest otherwise).
Respondent
is using the <silveroakwinery.com> domain name to redirect
Internet traffic to <abortionismurder.org>, a website that features
pictures of allegedly aborted fetuses.
Capitalizing on
Complainant’s mark to divert Internet users seeking Complainant’s website to
content unrelated to Complainant is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or
fair use of a domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that,
because Respondent's sole purpose in selecting the domain names was to cause
confusion with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
Respondent
has not come forward with any evidence to establish that it is commonly known
by SILVER OAK WINERY or <silveroakwinery.com>. Thus, Respondent has failed to establish
that it has any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Great
S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>).
Therefore, the Panel finds that the Complainant has
established Policy ¶ 4(a)(ii).
When
Complainant became aware of the website at the disputed domain name, it
telephoned the phone number listed on the Whois database. The person who answered the phone offered to
sell the domain name for $549 and instructed Complainant to visit
<jimfox.com> to process the sale.
Registration of a domain name primarily for the purpose of selling it to
the owner of the trademark is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith
where Respondent offered domain names for sale); see also Pocatello Idaho
Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith
is some accompanying evidence that the domain name was registered because of
its value that is in some way dependent on the trademark of another, and then
an offer to sell it to the trademark owner or a competitor of the trademark
owner").
Furthermore,
Respondent has made a practice of registering domain names that signify the
trademarks of others. Engaging in a
pattern of the registration of domain names to prevent the owner of the
trademark from reflecting the mark in a corresponding domain name is evidence
of bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks); see also
Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum
Apr. 6, 2001) (finding that where the Respondent has registered over 50 domain
names that correspond to different well-known trademarks, evidence of a pattern
exists).
Therefore, the Panel finds that the Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <silveroakwinery.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Dated: March 10, 2003
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