M. Shanken Communications, Inc. v.
Cenal.com c/o DNS Manager
Claim
Number: FA0507000508512
Complainant, M. Shanken Communications, Inc. (“Complainant”),
is represented by Robert F. Zielinski of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Cenal.com c/o DNS Manager (“Respondent”), 3705 Bank
of America Tower, 12 Harcourt Road, Central, 3705, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <winespectatoronline.com>, registered with
Enom, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 5, 2005.
On
July 5, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <winespectatoronline.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, Inc. 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
July 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2005 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@winespectatoronline.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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.”
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 makes the following assertions:
1. Respondent’s <winespectatoronline.com>
domain name is confusingly similar to Complainant’s WINE SPECTATOR mark.
2. Respondent does not have any rights or
legitimate interests in the <winespectatoronline.com> domain name.
3. Respondent registered and used the <winespectatoronline.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
M. Shanken Communications, Inc., has published the well-known “Wine Spectator”
magazine for approximately thirty years and has conducted business throughout
the United States in various matters relating to wine, vineyards, and wine
appreciation. Over the past thirty
years, Complainant has spent a substantial amount of money in advertising and
marketing expenses relating to its goods and services under its WINE SPECTATOR
mark.
Additionally,
Complainant holds numerous trademarks in the WINE SPECTATOR mark with the
United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No.
2,025,420 issued December 24, 1996; Reg. No. 2,054,781 issued April 22, 1997;
Reg. No. 2,233,678 issued March 23, 1999).
Complainant registered the <winespectator.com> domain name on December
5, 1995, which promotes the on-line version of its magazine. Complainant’s website prominently displays
the phrase “Wine Spectator online” at the top of its web pages.
Respondent
registered the <winespectatoronline.com> domain name on February 2,
2005. The disputed domain name resolves
to a website providing links to on-line wine distributors, wine tastings, and
wine-related tours and travel.
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."
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.”).
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.
Complainant’s
registrations for its WINE SPECTATOR mark with the USPTO are sufficient to
establish a prima facie case of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent did not submit a response in this case. Thus, Complainant’s
presumption of rights in the mark is not disputed. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption.”). The Panel finds that Complainant has established
rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant
argues that the <winespectatoronline.com> domain name is
confusingly similar to the WINE SPECTATOR mark. The only difference between the disputed domain name and the mark
is the addition of the word “online.”
In Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr.
23, 2001), the panel found that the <broadcomonline.com> domain name was
confusingly similar to the complainant’s BROADCOM mark. Similarly, this Panel holds that the
addition of the word “online” to Complainant’s WINE SPECTATOR mark is
insufficient to distinguish the disputed domain name. See The Prudential Ins. Co. of Am. v. Irvine, FA 95768
(Nat. Arb. Forum Nov. 6, 2000) (finding that Respondent’s domain name <prudentialonline.com>
is confusingly similar to Complainant’s PRUDENTIAL mark); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ (4)(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<wniespectatoronline.com> domain name. Complainant’s assertion establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide concrete evidence that it does have
rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”). The Panel will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domain name, but
rather by the name “Cenal.com.” Without
a response from Respondent, the Panel accepts as true Complainant’s allegation
that Respondent is not commonly known by the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence). The Panel concludes that because Respondent
is not commonly known by the disputed domain name, it has not established
rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
provides evidence that Respondent’s website benefits from the confusing
similarity of the <winespectatoronline.com> domain name by
displaying links to wine-related services and receiving pay-per-click fees from
Internet users clicking on these links.
Complainant argues that Respondent’s links directly compete with
Complainant. Because Respondent did not
respond, the Panel treats Complainant’s arguments as true. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). Thus, the Panel concludes that
Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) and (iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb.
Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding
that the respondent's “use of the domain name (and Complainant’s mark)
to sell products in competition with Complainant demonstrates neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the name”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain name to divert Internet
users to a website that features links to goods and services relating to wine
and wine appreciation and to profit from diverting such Internet users to
various websites. The Panel holds
Respondent is creating a likelihood of confusion for its own commercial gain. The Panel concludes that such use is
evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the 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 the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Complainant’s use
of its WINE SPECTATOR mark for over thirty years, its registration of the mark
with the USPTO, and the obvious link between Complainant’s mark and the content
of Respondent’s website all suggest that Respondent had both actual and
constructive knowledge of Complainant’s rights in the mark. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”). The
Panel concludes that Respondent’s actual or constructive knowledge of
Complainant’s rights in the mark prior to registration of the disputed domain
name provides further evidence of bad faith use and registration under Policy ¶
(4)(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <winespectatoronline.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 19, 2005
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