DECISION

Alban Vineyards, Inc. v. Joe Alban

Claim Number: FA0402000235714

PARTIES

Complainant is John Alban d/b/a Alban Vineyards, Inc. (“Complainant”) 8575 Orcutt Rd., Arroyo Grande, CA 93420. Respondent is Joeseph B. Alban (“Respondent”), represented by Gary D. Mann, of Kelly Bauersfeld Lowry & Kelley, LLP, 6320 Canoga Ave., Suite 1650, Woodland Hills, CA 91367.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <albanvineyards.com>, <albanvineyards.net>, and <albanvineyards.biz>, registered with Register.Com.

PANEL

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.

William H. Andrews as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 4, 2004; the Forum received a hard copy of the Complaint on February 4, 2004.

On Feburary 4, 2004, Register.Com confirmed by e-mail to the Forum that the domain names <albanvineyards.com>, <albanvineyards.net>, and <albanvineyards.biz> are registered with Register.Com and that the Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com 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 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2004 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@albanvineyards.com, postmaster@albanvineyards.net, and postmaster@albanvineyards.biz by e-mail.

A timely Response was received and determined to be complete on February 25, 2004.

Complainant’s Additional Submission was received and determined to be complete on March 1, 2004 and Respondent’s Reply to the Additional Submission was received and determined to be complete on March 5, 2004. The panelist has considered the additional submissions in reaching his decision.

On March 5, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed William H. Andrews as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Alban Vineyards, Inc., contends it has rights in the mark, “Alban Vineyard,” and that Respondent has violated those rights by registering the domain names, <albanvineyard.com>, <albanvineyard.net> and <albanvineyard.biz> (“<albanvinyard>” collectively). Complainant has been incorporated under the name ALBAN VINYARDS since 1989, and has maintained the mark in commerce for over fourteen years. Complainant’s representative, John Alban, and Respondent, Joe Alban, are brothers. Accordingly, Complainant contends Respondent was aware of Complainant’s mark at the time Respondent registered the <albanvineyard> domain names. Complainant contends Respondent is not and has not been commonly known by the <albanvineyard> name and has no rights or legitimate interest in the same. Complainant alleges the domain names were registered and used in bad faith. Specifically, Complainant contends Respondent refused Complainant’s offers to purchase the domain name for Respondent’s out of pocket costs. Further, Respondent’s knowledge of Complainant’s rights at the time the sites were registered is additional evidence of bad faith.

B. Respondent

Respondent argues that Complainant obtained a registered trademark only in January, 2004, after the domain names at issue were registered. Respondent argues there is no likelihood of confusion from his use of the <albanvineyard> name because the Respondent’s product, coffee, is not competitive with Complainant’s wine products. Respondent contends he has rights to the name and is using it in connection with a bona fide offering of goods and services. Specifically, the domain name directs Internet users to Kona Joe’s coffee, Respondent’s business. Respondent argues his coffee beans are grown like grapes in a vineyard and therefore claims his business is the first “coffee vineyard.” Accordingly, use of the vineyard name in connection with his coffee business is legitimate. Respondent claims his customers have come to know the business as “Alban Vineyards.” Respondent argues he did not act in bad faith. According to Respondent, Complainant’s representatives initiated discussions regarding transfer of the domain name. Moreover, Respondent’s legitimate commercial use of the name to sell non-competitive products precludes a finding of bad faith.

C. Additional Submissions

Complainant’s additional submission focuses on the fact that Complainant, not Respondent, is known as Alban Vineyards. Complainant alleges Respondent was aware of Complainant’s rights, success and fame at the time he registered identical domain names. Complainant submitted exhibits showing the national recognition of Alban Vineyards’ wines. Complainant also pointed out that Respondent could have selected other, more appropriate names, to identify his products rather than incorporating Complainant’s mark. Finally, Complainant reiterates that Respondent’s failure to accept payment of his out of pocket costs for registration of the name constitutes bad faith as do misrepresentations at the time of registration.

Respondent contends, in his additional submission, that Complainant has failed to prove any of the three elements required for transfer of the domain name. According to Respondent, Complainant has failed to prove any trademark rights in the Alban Vineyards name prior to Respondent’s registration of the domain name. Respondent also contends that Complainant’s allegations that Alban Vineyards, Inc. is famous is not adequately supported by citations to the volume of its sales, geographic scope of its business or advertising expenditures. Respondent devotes the greatest share of his additional submission to his rights to use the Alban Vineyards name. According to Respondent, his coffee business, Kona Joe’s, uses techniques like a vineyard in growing its coffee beans. Respondent points out that Complainant’s exhibit 3 shows Respondent’s website touting Kona Joe’s as the “world’s first coffee vineyard.” Finally, Respondent alleges he did not act in bad faith. According to Respondent, he had his own marketing reasons for selecting Alban Vineyards as his domain name instead of other names suggested by Complainant, and the e-mail correspondence between himself and Terry Simons, a representative of Complainant, indicates he did not attempt to solicit a purchase of the domain name.

FINDINGS

Complainant’s legal name is Alban Vineyards, Inc. Complainant has been incorporated under that name since 1989, and prior to that, John Alban filed a fictitious business name statement in California for the same name. Complainant is in the wine business and has been using the Alban Vineyards name in commerce for more than 14 years. Complainant is the first American winery and vineyard established exclusively for Rhone varieties and has been recognized for its fine wines in such publications as the Wine Spectator, which ranked its wines amongst the top 100 for 2003. Complainant filed a trademark application for the name ALBAN VINEYARDS on November 22, 2002, and the mark was registered with the U.S. Patent and Trademark Office on January 20, 2004.

Respondent and Complainant’s representative are brothers. Respondent’s legal name is Joe Alban. Respondent operates a coffee plantation in Hawaii and owns Kona Joe’s Coffees. In 2000, Respondent applied for a patent for the use of trellises for coffee production. The patent was issued on September 17, 2002. Respondent uses his patented technique to grow coffee beans on his plantation for his Kona Joe’s establishment. Respondent’s website proclaims that Kona Joe’s is the “world’s first coffee vineyard.” Respondent obtained the domain names at issue, <albanvineyards.com> on May 19, 2002, <albanvineyards.net> the following day, and <albanvineyards.biz> on January 29, 2003.

On January 24, 2003, Terry Simons, a representative of Complainant, initiated e-mail correspondence with Respondent requesting assistance in designing a web site for Complainant. In the initial correspondence, Simons noted that Respondent had registered the <albanvineyard> domain name and inquired about transferring the name. In a January 27, 2003 e-mail, Simons stated, “I am sure you are aware, that as a registered name of Alban Vineyards Inc, you would not be able to make commercial use of [<]albanvineyards.com[>].” Eventually, Simons offered compensation to Respondent for registration and reasonable additional costs associated with any transfer on June 23, 2003. On June 28, 2003, Simons again inquired about the status of a possible transfer of <albanvineyards.com> and <albanvineyards.net>. Respondent sent an e-mail stating that “all serious offers will be considered.” Thereafter, Simons sent e-mails dated October 11, 2003 and October 14, 2003 inquiring further about a transfer and requesting that Respondent provide specific details about the costs to transfer the names. Those e-mails were unanswered. This dispute ensued.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 first issue is whether Complainant has a protectible interest in the “Alban vineyards” name even though it had no registered trademark at the time Respondent registered the domain names. The Policy refers merely to a “trademark or service mark” in which the Complainant has rights and in particular does not expressly limit its application to a registered trademark or service mark of the Complainant. The Policy does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000); see also Great Plains Metromall v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001).

On the basis of the submissions, the Panelist concludes that Complainant does have rights to the Alban Vineyards name although it had no registered trademark at the time the domain names were obtained by Respondent. The Complainant’s rights are established by its continuous use of the name in commerce since 1989. Alban Vineyards is Complainant’s legal name and there is evidence, specifically the Google search results designated with Complainant’s additional submission, to conclude that Complainant has been known and recognized by such name to its wine drinking customers. The domain names registered by Respondent are identical to Complainant’s mark and therefore are inherently likely to cause confusion. A consumer familiar with Complainant might understandably search for Complainant by typing in the name <albanvineyards.com>, in which case that consumer would be confused when such an inquiry led to Kona Joe’s coffee.

Accordingly, the panelist concludes that the elements of Policy par. 4(a)(i) have been established by Complainant.

Rights or Legitimate Interests

Respondent contends he has legitimate rights to use the name, “Alban Vineyards.” Respondent’s surname is Alban, and as such, he would have an interest in using that name. Respondent’s right to use the name Alban, however, does not correlate to a right to use Complainant’s mark in its entirety to divert internet users to his coffee business. Respondent contends his business has been known as Alban Vineyards to some customers. There is no evidence to support this contention. None of the materials Respondent submitted bear the label “Alban Vineyards.” Respondent’s business is not affiliated with Complainant’s, Respondent had no permission from Complainant to use the Alban Vineyards name, there is no evidence to show that Respondent’s coffee business is commonly known as Alban Vineyards, and Respondent was aware of Complainant’s use of the mark in commerce for nearly thirteen years at the time Respondent’s domains were obtained. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

When users type in the domain name they are directed or linked to a website advertising Kona Joe’s coffee. Respondent cannot claim that such use of a confusingly similar domain name is bona fide, especially where Respondent has knowledge of Complainant’s existence. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites); see also Great Plains Metromall v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001). Under the circumstances presented, The Panelist concludes that Complainant has proven the second element of the Policy.

Registration and Use in Bad Faith

Complainant must demonstrate that the domain names were registered and used in bad faith. The Policy sets forth four factors that evidence bad faith. The factors are non-exclusive, however, and other circumstances can indicate “bad faith” in a particular situation.

There are several facts constituting evidence of “bad faith” here. Respondent used the domain name, incorporating Complainant’s mark in its entirety, to link to a website offering coffee. Although Respondent contends it used the “Alban Vineyard” name because his coffee beans are grown like grapes in a vineyard, the inescapable conclusion is that Respondent was trading on Complainant’s name and goodwill. Attracting Internet users to a website for commercial gain, by creating a likelihood of confusion with Complainant’s marks is evidence of bad faith. Policy ¶ 4(b)(iv); Great Plains Metromall v. Creach, FA 97004 (Nat. Arb. Forum May 18, 2001). See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent); eBay, Inc. v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site). It is evident that Internet users searching for Complainant will be confused as to the relationship between Complainant and Respondent’s coffee business when they are directed to the Kona Joe’s site after typing in Complainant’s name.

It is undisputed that Respondent was aware of Complainant’s previous use of “Alban Vineyards” in commerce, and that Respondent registered the domain name after Complainant’s use of the mark in commerce. In fact <albanvineyards.biz> was obtained after Respondent was aware that Complainant was establishing a website. There is a legal presumption of bad faith when the Respondent reasonably should have been aware, at least constructively, of Complainant’s rights to the mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known marks at the time of registration); See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that “where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).

Complainant argues Respondent attempted to profit from registration of the domain name by selling it to Complainant. Respondent claims there is no evidence of bad faith because he did not seek out Complainant. This fact is not dispositive. Respondent’s refusal to voluntarily transfer a contested domain name can be evidence of bad faith, even where the contact is initiated by Complainant. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001). In eBay, Complainant’s counsel sent several letters to Respondent informing of eBay’s rights and asking for transfer of the disputed domain name. Respondent failed to answer most of the letters. Respondent finally answered that he had no intention of transferring the name. Similarly, here, there is evidence that Complainant, through Simons, sent several messages to Respondent seeking transfer and offered reasonable expenses. Complainant asked Respondent for a specific price and other details required for transfer in its e-mail of October 11, 2003. This message was unanswered. The e-mails indicate Complainant was serious about obtaining the transfer, but that Respondent did not positively reply to Complainant’s overtures. Failure to positively respond to a complainant’s efforts to make contact provides “strong support for a determination of ‘bad faith’ registration and use.” Id.

Based on the facts presented, the Panelist concludes that Complainant has supported its claim that the sites were registered and used in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <albanvineyards.com>, <albanvineyards.net>, and <albanvineyards.biz> domain names be TRANSFERRED from Respondent to Complainant.

William H. Andrews, Panelist Dated: March 16, 2004