Wente Bros. v. I S / ICS INC
Claim Number: FA1707001739664
Complainant is Wente Bros. (“Complainant”), represented by Jon Ishibashi, California, USA. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wentevineyard.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2017; the Forum received payment on July 12, 2017.
On July 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wentevineyard.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2017 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@wentevineyard.com. Also on July 17, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Since 1996, Complainant has used WENTEVINEYARDS.COM as its primary web site to advertise its wines, and other goods and services. Complainant has trademark registrations for WENTE and WENTE VINEYARDS. Respondent’s registration of WENTEVINEYARD.COM is a clear infringement of Complainant’s US and foreign trademarks because except for one letter, Respondent’s registration is identical to Complainant’s domain name, having dropped the plural “s” at the end of the domain name.
Respondent is blatantly using its website to sell wine and wine related goods and services. Merely using the singular rather than Complainant’s plural spelling is a clear attempt to confuse the public.
Respondent’s website also uses the entire word WENTE which is Complainant’s registered trademark.
Respondent’s infringement is a clear case of “typo-squatting” especially since Respondent’s website offers to sell the rights to the web site.
b. Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
The sale of wine is a highly regulated industry in the US and in other countries. Respondent has no licenses to operate a vineyard or to sell wine.
Respondent has no registered trademarks or right to use WENTE or WENTE VINEYARD.
According to Paperless Inc. v. ICS Inc., FA1507001629515 (Forum Aug. 17, 2015), Respondent is a well-known serial cyber squatter and has over 100 prior UDRP cased decided against it; and Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. See also State Farm Mutual Automobile Insurance Co. v. ICS INC, FA1701001711918 (Forum Jan. 11, 2017 ), and Perkins Coie LLP v. ICS INC., FA1601001655419 (Forum Feb. 4, 2016)
Respondent has registered the domain name to disrupt Complainant’s business per Policy ¶4(b)(iii). Specifically, Respondent used the disputed domain name for a website that features sponsored-link advertisements for websites advertising and promoting wines and wine related services that directly compete with Complainant’s business and wine products and services.
c. Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Complainant became aware of Respondent’s registration of WENTEVINEYARD.COM and sent an email demanding that Respondent cease using the WENTEVINEYARD.COM domain name on March 29, 2017 and April 24, 2017.
Complainant never received a response to its demand.
As indicated above, Respondent is a known cyber squatter.
With no registered trademarks and no license to operate a winery or to sell wine; Respondent is clearly acting in bad faith by using the unregulated ability to register domain names to mislead the public, falsely generate viewing statistics or search engine data.
Respondents offer to sell the web site is another clear indication that it is acting in bad faith as a squatter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 registered its WENTE and WENTE VINEYARDS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,535,670, registered Apr. 18, 1989; Reg. No. 2,128,552, registered Jan. 13, 1998). The WENTE VINEYARDS mark was also registered with the European Union Intellectual Property Office (“EUIPO”), formerly known as Office for Harmonization in the Internal Market (registration #8288474). Registration with the USPTO and/or EUIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant has rights in the WENTE VINEYARDS mark under Policy ¶4(a)(i).
Respondent’s <wentevineyard.com> domain name is identical or confusingly similar to Complainant’s <wentevineyards.com> domain name because it merely deletes the “s” before the gTLD. Deletion of a single letter is not sufficient to distinguish Complainant’s mark from the disputed domain name. They are confusingly similar. See Wells Fargo & Company v. Xiangsheng Zhou, FA 1576852 (Forum Oct. 17, 2014) (finding that the removal of the letter “s” in the <wellfargo.net> domain name failed to differentiate it from the complainant’s WELLS FARGO trademark, thus resulting in a finding of confusing similarity under Policy ¶4(a)(i)). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Deleting a space does not distinguish a mark from a domain name because spaces are prohibited characters in a domain name. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Respondent’s <wentevineyard.com> domain name is confusingly similar to Complainant’s WENTE VINEYARDS domain name.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed nor otherwise authorized Respondent to use its WENTE VINEYARDS mark in any fashion. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name under Policy ¶4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by <wentevineyard.com> under Policy ¶4(c)(ii).
Complainant claims Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the site displays hyperlinks that compete with Complainant’s business. Using a domain name to resolve to a website containing advertising links to competing products is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). A screenshot of the <wentevineyard.com> resolving website shows that the website contains competitive hyperlinks for “Wine Online,” “Wine Vineyards,” and “Wine Tasting.” Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name.
Complainant claims Respondent lacks rights and legitimate interests in the <wentevineyard.com> domain name due to Respondent’s offer to sell the domain to the public. A general offer to sell a disputed domain name to the public is evidence that a respondent lacks rights and legitimate interests in a domain name. See Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).”). Complainant provided a screenshot of the disputed domain name’s resolving website, which displays a message the domain is for sale and Internet users may “click here to buy now”. The Panel must conclude Respondent lacks rights and legitimate interests in the <wentevineyard.com> domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain name in bad faith because Respondent offered to sell the disputed domain name to the public. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). A screen shot of the <wentevineyard.com> resolving website displaying a message the domain name was for sale was provided to the Panel. It seems clear Respondent registered and used the domain name in bad faith due to its general offer to sell the domain name.
Complainant claims Respondent is a known serial cybersquatter because Respondent was involved in a myriad of previous cases involving bad faith registration (which must, therefore, constitute bad faith under the UDRP). See State Farm Mutual Automobile Insurance Company v. ICS INC., FA1701001711918 (Forum Feb.14, 2017); see also Perkins Coie LLP v. ICS INC, FA1601001655419 (Forum Feb. 4, 2016). There are a couple of problems with this position. First, Complainant has not been prevented from reflecting its mark in a domain name. Policy ¶4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” That standard has not been met in this case. Losing over 100 prior cases does not automatically mean Respondent should lose this case (although this certainly creates the impression Respondent’s business model generally violates the UDRP). This Panel will not hold Respondent is acting in bad faith in the present case on this ground.
Complainant claims Respondent is disrupting Complainant’s business by diverting potential customers away from Complainant by displaying competing hyperlinks on the <wentevineyard.com> resolving website. Disruption of a Complainant’s business is evidence of bad faith pursuant to Policy ¶4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶4(b)(iii).”). Respondent has disrupted Complainant’s business and used the domain name in bad faith under Policy ¶4(b)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wentevineyard.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, August 18, 2017
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