Rick D. Hutchinson d/b/a Hutchinson Wines
v. Sherri Fairbairn a/k/a Amphora Wine Merchants
Claim Number: FA0303000149172
PARTIES
Complainant
is Rick D. Hutchinson d/b/a Hutchinson Wines, Healdsburg, CA (“Complainant”) represented by Todd A. Noah of Dergosits & Noah
LLP. Respondent is Sherri Fairbairn a/k/a Amphora Wine Merchants, Birmingham, AL (“Respondent”) represented
by Robert W. Monfore.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <amphorawinemerchants.com>,
registered with Capital Networks Pty Ltd.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 11, 2003; the Forum received a hard copy of the
Complaint as required on March 17, 2003, Capital Networks Pty Ltd. confirmed by
e-mail to the Forum that the domain name <amphorawinemerchants.com>
is registered with Capital Networks Pty Ltd. and that Respondent is the current
registrant of the name. Capital Networks Pty Ltd. verified that Respondent is
bound by the Capital Networks Pty Ltd. 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
March 31, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 21,
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@amphorawinemerchants.com by e-mail.
A
timely Response was received and determined to be complete on April 21, 2003.
On May 5, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. The domain name registered by Respondent,
<amphorawinemerchants.com>, is confusingly similar to
Complainant’s AMPHORA mark.
2. Respondent has no rights or legitimate
interests in the <amphorawinemerchants.com> domain name.
3. Respondent registered and used the <amphorawinemerchants.com>
domain name in bad faith.
B. Respondent made the following
assertions in response:
1. Respondent has not used Complainant’s
mark in any way that violates the activities protected by Complainant’s
trademark registration.
2. Respondent has rights in conformance with
Alabama law to use the name Amphora Wine Merchants as a retail store that is
not in competition with Complainant.
3. Respondent has not acted in bad faith but
sells at the retail level and does no Internet sales inasmuch as it is illegal
to ship wine into or from the State of Alabama. Respondent counters that
Complainant acted in bad faith in bringing this ICANN action after Respondent
and one of its primary wholesalers (International Wines) did not agree to carry
Complainant’s products.
Complainant,
Rick D. Hutchinson d/b/a Hutchinson Wines, holds a federal trademark
registration for the AMPHORA mark (U.S Reg. No. 2,267,740, registered on the
Principal Register of the U.S. Patent and Trademark Office on August 3, 1999).
Complainant filed an intent to use application for the AMPHORA mark on December
15, 1997 (U.S. App. Ser. No. 75/405,471) and first used the mark in commerce
August 31, 1998. Complainant uses the AMPHORA mark in conjunction with its
business of producing and selling wines. Pu rsuant to this business,
Complainant registered the <amphorawines.com> domain name. The stated purpose of Complainant’s mark was
“FOR: WINE, IN CLASS 33 (U.S. CLS 47 AND 49).”
Respondent,
Amphora Wine Merchant, created the <amphorawinemerchants.com>
domain name July 12, 2001, and registered it July 13, 2001, but is not licensed
by Complainant or authorized to use Complainant’s AMPHORA mark for any purpose. Respondent asserts
that she uses the disputed domain name principally for local marketing to
advertise her single store location and that she does no Internet sales since
her company cannot sell or ship wines beyond Alabama.
Complainant
alleges that Respondent sells wine and alcoholic beverages that directly
compete with Complainant’s goods and related services, but Respondent refutes
this claim, asserting that her company sells only at the wholesale level and
does not sell or ship outside of Alabama because it would be illegal for
Respondent to do so.
Complainant
supported its allegations with one exhibit, the registration of its protected
mark. Respondent refuted Complainant’s
allegations with subjective statements to the contrary but presented no
extrinsic proof in support.
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."
Respondent
timely filed a Response but offered no extrinsic proof to support her
subjective statements. The Panel shall
decide this administrative proceeding on the basis of the parties’
representations; however, to the extent that Complainant's representations are
undisputed by extrinsic proof, the Panel, pursuant to paragraphs 5(e), 14(a)
and 15(a) of the Rules, will draw such inferences as the Panel 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 to 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.
Although
Respondent questions the jurisdiction of ICANN in this dispute as it revolves
around a dispute about trade and service marks, the Panel has determined that
it has jurisdiction. See Weber-Stephen
Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000)
(stating, “like any other tribunal, however, this Panel can determine whether
it has jurisdiction only from the facts and arguments presented to it. In this
case, Complainant did allege bad-faith use and registration of the domain name
at issue. Had Complainant proved those allegations, there would be no proper
question as to this Panel’s jurisdiction”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc.,
D2000-0017 (WIPO Mar. 14, 2000) (holding that, “this Panel well recognizes that
its jurisdiction is limited to providing a remedy in cases of ‘the abusive
registration of domain names,’ or ‘Cybersquatting’ . . . Like any other
tribunal, however, this Panel can determine whether it has jurisdiction only
from the facts and arguments presented to it. In this case, Complainant did
allege bad-faith use and registration of the domain name at issue. Had
Complainant proved those allegations, there would be no proper question as to
this Panel’s jurisdiction”).
Complainant
asserts that it has rights in the AMPHORA mark via its registration of the mark
with the U.S. Patent and Trademark Office, its use of the mark in commerce
since August of 1998 and its use of the <amphorawines.com> domain name.
The Panel finds that Respondent’s <amphorawinemerchants.com> domain name is confusingly similar to
Complainant’s AMPHORA mark. See Oki Data Americas, Inc. v. ASD
Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name
incorporates a Complainant’s registered mark is sufficient to establish
identical or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business).
Complainant also argues that actual confusion
between Respondent and Complainant, who both operate in the same field,
strengthens its claim of confusing similarity. See Slep-Tone Entm't Corp.
v. Sounds Choice Disc Jockeys, Inc.,
FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that the “likelihood of
confusion is further increased by the fact that the Respondent and
[Complainant] operate within the same industry”); see also Vivid Video, Inc.
v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14,
2002) (finding that any distinctiveness resulting from Respondent’s addition of
a generic word to Complainant’s mark in a domain name is less significant
because Respondent and Complainant operate in the same industry).
Respondent
also argues that the term AMPHORA is commonly depicted on wine labels, thus
denying Complainant exclusive rights to use the mark. See Coming Attractions, Ltd. v.
Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding
Respondent had the right to register the subject domain name,
comingattractions.com, based upon the generic usage of the term "coming
attractions"); see also Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(finding that Respondent has rights and legitimate interests in the domain name
where “Respondent has persuasively shown that the domain name is comprised of
generic and/or descriptive terms, and, in any event, is not exclusively
associated with Complainant’s business”). This is the most persuasive argument
that Respondent raises with her numerous subjective statements. To an extent the word AMPHORA is commonly
known and used in many areas of art and commerce. It means vessels to hold substances and not just wine. However, Respondent failed to submit any
objective support for her contention and the Panel will not go outside the
record to perfect a claim for Respondent.
Respondent
further urges that Complainant and Respondent operate in different areas,
reducing any opportunity for confusing similarity. See Broadcom Corp. v.
Ayers Int’l Group, Inc., FA 112562 (Nat. Arb. Forum July 24, 2002) (finding
that “where the products of the parties involved are not identical, the likelihood
of confusion issue extends to whether the public would “probably assume” that
the product or service represented by a name is associated with the source of a
different product represented by a similar name or mark”). Respondent defeats
this argument herself. She admits that
their product is the same; she urges that her domain name has benefited
Complainant, and she charges that Complainant is attempting to accomplish
reverse domain hijacking because she refused to carry Complainant’s product.
The
Panel finds that the domain name registered by Respondent is confusingly
similar to Complainant’s protected mark. Accordingly, the Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant’s submission to the Panel asserts
that Respondent has no rights or legitimate interests in the <amphorawinemerchants.com>
domain name. Complainant’s assertions are contested by Respondent’s allegations
in response; therefore, the Panel will not make a presumption that
Complainant’s allegations are true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true). However, the Panel reviewed Respondent’s
subjective statements contradicting Complainant’s allegations, but found that
Respondent submitted no extrinsic evidence to support her claim of right
pursuant to Alabama law. Respondent has not rebutted Complainant’s allegations.
Complainant provided documental proof of valid, subsisting rights in a mark
that is confusingly similar to the domain name in question. Respondent’s
subjective statements to the contrary do not show rights or interests. However, Complainant did not challenge
Respondent’s assertions and the Panel looked to Respondent’s Response to see if
it raised any evidence of circumstances that could substantiate Respondent’s
position that she has rights or interests in the subject domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain name, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Uncontested
circumstances indicate that Respondent uses the disputed domain name to direct
Internet users to Respondent’s website. Respondent did not challenge
Complainant’s assertion that Respondent had no authorization to use
Complainant’s AMPHORA mark in the domain name, which Respondent concedes is for
Respondent’s commercial gain. Further, in refuting bad faith, Respondent
concedes that she knew of Complainant’s rights but has continued to operate
under the AMPHORA mark and refused to carry Complainant’s line of wine. Citing
to unproved Alabama law in support of her rights, Respondent offered no
incorporation papers, no copies of statutes and no evidence of her entity’s
status under Alabama law. These facts permit the inference that Respondent uses
Complainant’s mark to seek commercial gain by attracting Internet users to her
website. Respondent did not establish rights in <amphorawinemerchants.com>
under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also N. Coast
Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website).
Complainant further argues that
Respondent’s appropriation of the AMPHORA mark misleads Internet users and
consumers of Complainant. Such use does not constitute a bona fide use of a
name. See Chip Merch., Inc. v.
Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding the disputed
domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that “[I]t would be unconscionable to find a bona fide offering of services in
a respondent’s operation of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”).
Respondent claims
that her use of “Amphora Wine
Merchants” was in good faith and without prior knowledge of Complainant’s
mark. Even if Respondent were to argue
that she is commonly known by the name “Amphora Wine Merchants” and the
disputed domain name in Alabama, Respondent provided no evidence such as the
scope of her advertising, sales, commercial operation, or “hits” at the site to
show such common knowledge as would create rights or legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii). Nor did she present documents to
show that Amphora Wine Merchants exists or has the sanction of state law. See
VeriSign
Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a
legitimate interest in the domain name since the domain name reflects
Respondent’s company name).
Respondent also argues that it cannot be
a competitor with Complainant and that its fully functional website operates as
a bona fide offering of goods or services, which shows rights or legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(i). See Asphalt
Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Respondent has a
legitimate interest to use a trademark or domain name in which many persons
hold an exclusive right in relation to different goods and services providing
the goods or services are sufficiently far apart from the goods and services of
others so as to distinguish the goods or services of Respondent); see also Graman
USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding Respondent could maintain rights in a similar mark as
Complainant because Complainant and Respondent were not in the same field of
business, and therefore not competitors). Respondent defeats this position with
her admission in this proceeding that she knew of Complainant’s business and
failed to carry Complainant’s product, which is the same type of product that
Respondent wholesales to others.
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent intentionally attempted to attract Complainant’s
consumers to its own commercial website by fostering a likelihood of confusion
between Complainant’s distinctive AMPHORA mark and the domain name registered
by Respondent, <amphorawinemerchants.com>. Complainant maintains that it has
experienced actual confusion in the marketplace as a result of Respondent’s
registration, which may constitute
evidence of bad faith use and registration purusant to Policy ¶ 4(b)(iv). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers
is not required for a finding of trademark infringement, intent to deceive is
strong evidence of a likelihood of confusion"); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse those users into believing that
Complainant is the source of or is sponsoring the services offered at the
site).
The Panel finds that Respondent registered the
disputed domain name to disrupt the business of a competitor, which constitutes
evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See
Mission
Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also SR Motorsports v. Rotary Performance, FA
95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the
domain names were registered for the primary purpose of disrupting the
competitor's business when the parties are part of the same, highly specialized
field).
Further,
the Panel finds that Respondent’s selection of Complainant’s distinctive and
registered AMPHORA mark for use in her domain name evidences bad faith
registration. See Albrecht v.
Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in
bad faith based where there is no reasonable possibility, and no evidence from
which to infer, that the domain name was selected at random, since it entirely
incorporated Complainant’s name); see also Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent urges that since she was not aware of
Complainant’s mark when she registered the disputed domain name and since no
likelihood of confusion is created by her domain name, she rebuts Complainant’s
argument under Policy ¶ 4(b)(iv). Although some support exists for her
proposition, it does not apply to Respondent.
See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000)
(finding that Respondent did not register or use the domain name <metagen.com>
in bad faith where Respondent registered the domain name in connection with a
fair business interest and no likelihood of confusion was created); see also
DJF Assocs., Inc. v. AIB
Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent
has shown that it has a legitimate interest in the domain name because
Respondent selected the name in good faith for its website, and was offering
services under the domain name prior to the initiation of the dispute).
Respondent offered this Panel a subjective statement of her intent that was not
supported by any documentation to show such things as the date and
circumstances of the formation of her business or a filing of documents before
Complainant acquired rights in the AMPHORA mark. Complainant’s rights pursuant to the authority of the USPTO
placed Respondent on inquiry notice of Complainant’s rights to the mark and
those rights preceded her filing of the domain name.
Respondent also contends that she is not and never
intended to be a competitor of Complainant and the Panel assumes that
Respondent believes this intent should rebut Complainant’s argument under
Policy ¶ 4(b)(iii). Although some support for this position exists in the
cases, it would not apply to Respondent here because she is in competition with
Complainant by her own admission that she refused to carry Complainant’s line
of product.
Further,
Respondent rebuts this statement herself by her claim that Complainant is
attempting reverse domain name hijacking with this claim. Respondent contends that Complainant filed
this claim in bad faith to retaliate against Respondent for refusing to carry
Complainant’s product. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on
a claim of reverse domain name hijacking, Respondent must show that Complainant
brought the claim in bad faith despite the knowledge that Respondent has an
unassailable right or legitimate interest in the disputed domain name, or that
Respondent lacks the requisite bad faith registration and use of the disputed
domain name). However, Respondent presented no proof of any such transactions
between these parties and no evidence of the nature of her business to
distinguish it from Complainant’s business.
Further, Respondent concedes that she sells wine, that she advertises it
over a domain name that contains in its entirety Complainant’s mark and that
she refused to carry Complainant’s line of product. The Panel is not persuaded that Respondent has offered sufficient
evidence to rebut Complainant’s allegations and proof of bad faith.
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is ordered that the <amphorawinemerchants.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 19, 2003.
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