M. Shanken Communications, Inc. v. Unasi
Inc.
Claim
Number: FA0507000515000
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 Unasi Inc. (“Respondent”), Galerias Alvear 3, Zona 5, Panama 5235,
Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwinespectator.com>, <wineespectator.com>,
and <winespectaor.com>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 15, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <wwinespectator.com>,
<wineespectator.com>, and <winespectaor.com> are
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the names.
Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent
is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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
July 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 9,
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@wwinespectator.com, postmaster@wineespectator.com,
and postmaster@winespectaor.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 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwinespectator.com>,
<wineespectator.com>, and <winespectaor.com> domain
names are confusingly similar to Complainant’s WINE SPECTATOR mark.
2. Respondent does not have any rights or
legitimate interests in the <wwinespectator.com>, <wineespectator.com>,
and <winespectaor.com> domain names.
3. Respondent registered and used the <wwinespectator.com>,
<wineespectator.com>, and <winespectaor.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
M. Shanken Communications, Inc., has been using its WINE SPECTATOR mark in
commerce since 1976 in connection with magazines, books, pamphlets,
newsletters, and other publications all on the subject of wine. Complainant has been publishing its “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. Complainant has
spent a significant 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 <winespectaor.com> domain name on December 29, 2004
and the <wineespectator.com> and <wwinespectator.com>
domain names on March 30, 2005. Each
domain name resolves to a website that features links promoting goods and
services relating to wine and wine appreciation. Most of the links lead to websites of online 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 Complainant’s 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.”).
Complainant
argues that the <wwinespectator.com>, <wineespectator.com>,
and <winespectaor.com> domain names are confusingly similar to
Complainant’s WINE SPECTATOR mark. Each
of the disputed domain names misspells Complainant’s mark. The <wwinespectator.com> domain
name adds the letter “w” to Complainant’s mark, the <wineespectator.com>
domain name adds the letter “e” to Complainant’s mark, and the <winespectaor.com>
domain name deletes the letter “t” from Complainant’s mark. The Panel holds that these variations
constitute typosquatting and are do not distinguish the disputed domain names
from Complainant’s mark. See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, the respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive).
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 <wwinespectator.com>,
<wineespectator.com>, and <winespectaor.com> domain
names. 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
argues that Respondent is not commonly known by the disputed domain names. Without a response from Respondent, the
Panel accepts as true Complainant’s allegation. 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).
Moreover, Respondent’s WHOIS information suggests that Respondent is
known as “Unasi Inc.” Therefore, the Panel concludes that Respondent is not
commonly known by the disputed domain name and does not have 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 websites benefit from the confusing
similarity of the <wwinespectator.com>, <wineespectator.com>,
and <winespectaor.com> domain names by displaying links to
wine-related services and receiving pay-per-click fees from confused Internet
users who click 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 under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(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”).
Moreover,
because Respondent is purposely misspelling Complainant’s mark, it is engaging
in the practice of typosquatting. The
Panel holds that such typosquatting indicates that Respondent lacks rights and
legitimate interests for purposes of Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
Complainant
argues that Respondent is using the disputed domain names to divert Internet
users to websites that feature 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).
Respondent’s
typosquatting provides further evidence that Respondent registered and used the
disputed domain names in bad faith for purposes of Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball
League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting
… is the intentional misspelling of words with [the] intent to intercept and
siphon off traffic from its intended destination, by preying on Internauts who
make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516
(Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach
a complainant’s website in order to gain a profit off of a complainant is one
example of bad faith use and registration under the Policy.”).
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 <wwinespectator.com>, <wineespectator.com>,
and <winespectaor.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 25, 2005
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