Tasting Station, Inc. v. Limnistics, Inc.
Claim Number: FA1212001477066
Complainant is Tasting Station, Inc. (“Complainant”), represented by Jeffrey K. McGinness, Iowa, USA. Respondent is Limnistics, Inc. (“Respondent”), represented by John Somers, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winestyles.com> ("the Domain Name"), registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2012; the National Arbitration Forum received payment on December 21, 2012.
On December 26, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2013 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@winestyles.com. Also on December 27, 2012, 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.
A timely Response was received and determined to be complete on January 15, 2013.
Pursuant to Rule 12 of ICANN's UDRP the Panelist requested further evidence by 8, February 2013 as to any demonstrable preparations by the Respondent to use the Domain Name and the nature of any offering of goods and services prior to the dispute by the Respondent.The Respondent responded on February 8, 2013. The Complainant made an additional submission in response on February 13, 2013.
On January 23, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant is the exclusive licensee of five registered US marks for the wordmark WINESTYLES or logo marks containing the same for wineor services related to wine and is in the business of servicing franchisees of businesses using those marks. Use in commerce for retail services associated with wine is recorded back to January 2002.
Respondent has not used the Domain Name in connection with a bona fide offering of goods and services, has never been commonly known by the Domain Name and is not making a legitimate non commercial or fair use of the Domain Name.
The Domain Name has been registered and is being used in bad faith. The Respondent registered the Domain Name two months after Winestyles Inc. (the owner of the registered trade marks exclusively licensed to the Complainant) filed its incorporation documents and began offering franchises under the WINESTYLES name. Attempts to acquire the Domain Name for a fair market value have failed. The Respondent has registered the Domain Name to prevent reflection of the WINESTYLES mark in a corresponding domain name or to disrupt the Winestyles' business.
B. Respondent
The Respondent's contentions can be summarised as follows:
The Respondent is a small privately held company using the Domain Name purely as an Internet address. The site when it becomes active will not promote goods and services which will cause confusion with the Complainant's registered marks.
The Domain Name was acquired in good faith for future use in Respondent's considerable consultation work in the wine industry. It was registered in November 2002 by the Respondent who is a wine industry expert having worked in all areas of the wine business and, in particular, in developing wine styles for the domestic and international markets.
The Respondent did not register the Domain Name to interfere with the Complainant's business.
The term 'winestyles' is ubiquitous in the wine industry used for generations.
At the time of registration the Respondent had no knowledge of any company known as Winestyles Inc. The Respondent first became aware of Winestyles Inc seven months after registration of the Domain Name when he received an e mail on June 19, 2003 saying retail wine stores were opening suggesting that the stores had not opened yet. The Respondent declined the request made. The Respondent then received a demand letter and a telephone call and an e mail seeking resolution of the matter, but nothing further had been received.
The Respondent has received between 10-20 offers for the Domain Name none traceable to the Complainant or companies affiliated with it. The Respondent has never sold a domain name to anyone.
C. Additional Submissions
Respondent's additional submission can be summarised as follows:
The Respondent is bound by non disclosure agreements with his clients and his work, products, methods and initiatives are confidential.
Complainant's additional submission can be summarised as follows:
Respondent does not explain why it has taken him over ten years to develop the site if it was truly acquired in good faith.
The Complainant's business is still active
Claimant does not dispute that the phrase "wine styles" is common in the industry. What is not common is the Complainant's exclusive licensing arrangements in the WINESTYLES mark.
While Respondent purports to have a valid purpose for the Domain Name he has not provided any explaination how any website he may develop in the future associated with the wine industry could not cause confusion in the marketplace.
The Complainant is the exclusive licensee of five registered US marks for the wordmark WINESTYLES or logo marks containing the same for wine or services related to wine and is in the business of servicing franchisees of businesses using those marks. Use in commerce for retail services associated with wine is recorded back to January 2002.
The Respondent registered the Domain Name two months after Winestyles Inc. (the owner of the registered trade marks exclusively licensed to the Complainant) filed its incorporation documents and began offering franchises under the WINESTYLES name.
The Respondent is a consultant in the wine industry. He says his work is confidential and has not given details of any specific plans for the Domain Name but asserts that it will not be used to promote goods and services which will be confused with the Complainant.
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 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 Complainant is the exclusive licensee of US registered trade marks for WINESTYLES for, inter alia wine and related services going back to 2004. A trade mark registration with the USPTO is sufficient for a Complainant to establish rights in WINESTYLES as a trade mark under the Policy. (See Trip Network Inc. v Alviera FA 914943 (Nat. Arb.Forum Mar 27, 2007) determining that the complainant's trade mark registrations with the USPTO were adequate to establish its rights in the mark pursuant to the Policy) As exclusive licensee of such a registration the Panel holds that the Complainant has rights in the WINESTYLES trade marks.
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name is identical to the Complainant’s WINESTYLES registered trade mark. The Panelist finds that the Domain Name is identical for the purposes of the Policy to the Complainant’s registered trade mark WINESTYLES and, as such, satisfies para 4(a) (i) of the Policy. See ABT Elecs Inc. v Ricks, FA 904239 (Nat. Arb. Forum Mar 27, 2007) ("The Panel also finds that the ..domain name is identical to the Complainant's ..mark since addition of a generic top level domain ("gTLD") is irrelevant when conducting a Policy s4(a)(i) analysis."
Rights or Legitimate Interests
The Complainant has indicated that it has not endorsed the Respondent in any way and the Respondents business has no connection with the Complainant. The Respondent does not appear to have been commonly known by a name equivalent to the Domain Name prior to its registration.
The Respondent claims that he is merely using a generic or descriptive term and had never heard of the Complainant's business established two months before the registration of the Domain Name, but explains that he is an expert in the wine field. On the balance of probabilities, taking into account the evidence the Panel finds it hard to believe that the Respondent was not aware of the secondary meaning of the term WINESTYLES two months after the Complainant's business was established whether through trade press or contacts through his extensive experience of working in all aspects of the wine industry. Use of a domain name which is identical to a trade mark of a complainant with secondary meaning in the same field of activity in question when the user is "focusing" on that field of activity as a specialism is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Respondent claims that the name will not be used to promote goods and services that could be confused with the Complainant. The Respondent was given the opportunity to give further details and to provide evidence of demonstrable preparations to use the Domain Name but declined to do so. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the domain name at the time of registration but did not furnish any evidence in support of this claim) Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
As such the Respondent has failed to rebut the Complainant's assertion that the Domain Name was registered following the establishment of the Complainant's business and to show that it has any rights or legitimate interest in the Domain Name.
Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
(iii) you have registered to domain name primarily for the purpose of disrupting the business of a competitor.
The Respondent says it has worked in all aspects of the wine industry and is an expert in the same, but has been very mysterious about its plans for the Domain Name which is has not used since registration. The Expert believes that as an expert in the industry is is highly likely that the establishment of the Complainant's business came to the attention of the Respondent who registered the Domain Name a matter of two months afterwards. Whilst the Respondent claims the Domain Name will not be used to promote goods and services which will cause confusion with the Complainant's business it is difficult to envisage how this could be the case if the name is used in the wine industry. Unfortunately the Respondent has declined to explain further and, therefore the Expert is left with the suspicious timing of the registration, the non use and the refusal to give further details why the Domain Name was registered. In these crcumstances the Expert holds that it is likely that it was registered to disrupt the business of a competitor.
As such the Panel holds that the Respondent has registered and used the Domain Name in bad faith under Paragraph 4 of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <winestyles.com> domain name be TRANSFERRED from Respondent to Complainant..
Dawn Osborne, Panelist
Dated: February 25, 2013
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