Sunset Publishing Corporation v. 1800wineshop
Claim Number: FA0602000651065
Complainant is Sunset Publishing Corporation (“Complainant”), represented by Andrew J. Wilson of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA, 30309. Respondent is 1800wineshop (“Respondent”), represented by Mia S. Blackler of Buchalter Nemer, 333 Market Street, 25th Floor, San Francisco, CA, 94105-2126.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sunsetwineclub.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint February 27, 2006.
On February 28, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sunsetwineclub.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2006, 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@sunsetwineclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <sunsetwineclub.com>, is confusingly similar to Complainant’s SUNSET mark.
2. Respondent has no rights to or legitimate interests in the <sunsetwineclub.com> domain name.
3. Respondent registered and used the <sunsetwineclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sunset Publishing Corporation, is a member of the Time Warner Family of companies, one of the largest media and publishing conglomerates in the world. Since 1889, Complainant has published and sold a monthly magazine devoted to life in the western United States under the SUNSET mark. Known as “The Magazine of Western Living,” each one of Complainant’s five regional editions contains, among other things, articles and photographs regarding cooking and entertaining, localized gardening tips, home decorating and design ideas, and regional travel coverage. Complainant enjoys a total monthly circulation of 1,450,000 copies, 1,350,000 of which are distributed directly to Sunset Magazine’s annual subscribers.
In early 2003, Complainant conceived of, and began preparations to offer, a subscription “wine-of-the-month” service. Complainant launched its wine club May 15, 2004, and offers Sunset Magazine readers, as well as other wine enthusiasts, a selection of outstanding wines, along with recipes, menu suggestions and entertaining ideas tailored to the Sunset Wine Club wines.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SUNSET mark (Reg. No. 2,079,740 issued July 15, 1997).
Respondent registered the <sunsetwineclub.com> domain name April 23, 2003. Respondent is using the disputed domain name to redirect Internet users to its commercial website that features links to wine clubs that compete with Complainant, including <goldmedalwine.com>, <mywinesdirect.com>, <avawineclub.com>, and <directwineonline.com>.
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 will draw such inferences as the Panel 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 Complainant to 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 submitted extrinsic evidence of its registration
of the SUNSET mark with the USPTO. The
Panel finds that such evidence establishes Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). 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.”).
The disputed domain name that Respondent registered, <sunsetwineclub.com>, is confusingly similar to Complainant’s SUNSET mark because Respondent’s domain name incorporates Complainant’s mark in its entirety, adding only the terms “wine” and “club,” and the generic top-level domain “.com.” Furthermore, the terms “wine” and “club” describe a segment of Complainant’s business. The addition of descriptive terms to Complainant’s mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent is using the <sunsetwineclub.com> domain
name to redirect Internet users to Respondent’s commercial website that
features links to competing third-party websites. Respondent’s use of a domain name that is confusingly similar to
Complainant’s SUNSET mark to redirect Internet users interested in
Complainant’s products and services to a website that offers similar products
and services in competition with Complainant is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is
not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Glaxo Group Ltd.
v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <sunsetwineclub.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <sunsetwineclub.com> domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering links to competing wine club services. Respondent’s domain name incorporated Complainant’s mark may create confusion as to Complainant’s affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <sunsetwineclub.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant 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 <sunsetwineclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 26, 2006
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