E. & J. Gallo Winery v. Domain Administrator / Eighty Business Names
Claim Number: FA1410001583068
Complainant is E. & J. Gallo Winery (“Complainant”), represented by Michael J. Salvatore of Holmes Weinberg, PC, California, USA. Respondent is Domain Administrator / Eighty Business Names (“Respondent”), the Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <galloglass.com>, registered with Rebel.com Corp.
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 electronically on October 2, 2014; the National Arbitration Forum received payment on October 2, 2014.
On October 7, 2014, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <galloglass.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 October 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2014 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@galloglass.com. Also on October 8, 2014, 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 November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the GALLO GLASS common law mark since 1958 to promote glass manufacturing services and products. Respondent’s <galloglass.com> domain name is identical to Complainant’s common law mark.
Complainant also uses the GALLO mark to promote glass manufacturing services and products, specifically in connection with glass mugs and bottles. The GALLO mark has been registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 338,083, filed Sept. 17, 1969, registered May 19, 1970; Reg. No. 3,210,839, filed January 30, 2006, registered Feb. 20, 2007). Complainant registered the <gallo-glass.com domain name on February 25, 2002. The <galloglass.com> domain name is the same as the GALLO mark expect for the descriptive term “glass” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <galloglass.com> domain name. Respondent has never been commonly known by the domain name, as the entity “Eighty Business Names” is the only unique name identified in the domain name’s WHOIS record. Respondent is using the domain name to send Internet users to websites where third-party hyperlink advertisements are promoted.
Respondent has registered and used the domain name in bad faith. Respondent uses the disputed domain name to profit from the likelihood Internet users will mistake Complainant as the source or origin of the content that competes with, and sends Internet users away from, Complainant’s legitimate business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, E. & J. Gallo Winery, uses the GALLO mark to promote wines and champagnes and glass manufacturing services and products, specifically in connection with glass mugs and bottles. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 338,083, filed Sept. 17, 1969, registered May 19, 1970; Reg. No. 3,210,839, filed January 30, 2006, registered Feb. 20, 2007). The effective date of Reg. No. 338,083 for the GALLO mark is September 17, 1969, the filing date of the trademark application.
Complainant has used the GALLO GLASS common law mark since 1958 to promote glass manufacturing services and products and to support the E&J Gallo Winery.
Respondent, Domain Administrator / Eighty Business Names, registered the <galloglass.com> domain name on August 1, 2004. Respondent uses the domain name to send Internet users to websites where third-party hyperlink advertisements are promoted.
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.
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.”).
Complainant has rights in the GALLO mark under Policy ¶ 4(a)(i), effective September 17, 1969, through registration with the USPTO, even though Respondent resides in the Caymans. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also has common law rights in the GALLO GLASS mark under Policy ¶ 4(a)(i), since 1958. See Chandler Horsley v. Fundacion Private Whois / Domain Administrator, FA 1497825 (Nat. Arb. Forum June 12, 2013) (“The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.”).
Respondent’s <galloglass.com> domain name is the same as the GALLO mark expect for the descriptive term “glass” and the gTLD “.com.” The descriptive term “glass” is merely a term descriptive of bottles that GALLO wine is sold in. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Also, Respondent’s <galloglass.com> domain name is identical to Complainant’s GALLO GLASS common law mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not commonly known by the <galloglass.com> domain name under Policy ¶ 4(c)(ii). The WHOIS record shows the registrant as “Eighty Business Names.” See, e.g., St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is using the domain name to send Internet users to websites where third-party hyperlink advertisements are promoted. The resolving website features advertisements such as “Glass Bottles” and “Art Glass.” Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Respondent uses the <galloglass.com> domain name to profit from the likelihood Internet users will mistake Complainant as the source or origin of the content that competes with Complainant. Respondent’s use of the disputed domain name to capitalize on the likelihood of consumer confusion is bad faith registration and use under Policy ¶ 4(b)(iv). See, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <galloglass.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 8, 2014
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