Kistler Vineyards v. R9 DomainGuard Proxy Service
Claim Number: FA0610000823159
Complainant is Kistler Vineyards (“Complainant”), represented by Gregory J. Walsh, of Carle, Mackie, Power & Ross LLP, 100 B. Street, Suite 400, Santa Rosa, CA 95401. Respondent is R9 DomainGuard Proxy Service (“Respondent”), P.O. Box 795923, Dallas, TX 75379-5923.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kistlervineyards.com>, registered with Enom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2006.
On October 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kistlervineyards.com> domain name 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 October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@kistlervineyards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <kistlervineyards.com> domain name is identical to Complainant’s KISTLER VINEYARD mark.
2. Respondent does not have any rights or legitimate interests in the <kistlervineyards.com> domain name.
3. Respondent registered and used the <kistlervineyards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kistler Vineyards, was established in 1978 and is a small winery that specializes in producing Chardonnay and Pinot Noir. In connection with the provision of these services, Complainant has registered the KISTLER VINEYARD mark with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 3,065,675 issued March 7, 2006). Complainant’s sworn registration with the USPTO indicates that the first use of the KISTLER VINEYARD mark was October 31, 1985.
Respondent registered the <kistlervineyards.com> domain name March 8, 1999. The disputed domain name currently resolves to a search engine offering links for a number of non-competing websites.
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.
Although Complainant has registered the KISTLER VINEYARD
mark with the USPTO, Respondent’s registration of the disputed domain name
predates Complainant’s registration of the mark. Panels have found that a complainant’s rights in a mark must
predate the disputed domain name’s registration to prevail under paragraph
4(a)(i) of the Policy. In the instant
case, Respondent registered the domain name prior to Complainant establishing
its registration rights in the KISTLER VINEYARD mark. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO
Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that
Complainant’s rights predate Respondent’s registration . . . of
the domain name”); see also Transpark LLC v.
Network Adm’r, FA 135602 (Nat. Arb. Forum
Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i)
because the respondent's domain name registration predated the complainant’s
rights in its mark by nearly two years).
Therefore, the question is whether
Complainant had rights in the KISTLER VINEYARD mark prior to March 8, 1999,
which is the day Respondent registered the disputed domain name. Complainant contends that Kistler Vineyards
was established in 1978 and the USPTO registration information lists the first
use of the KISTLER VINEYARD mark as being October 31, 1985. In the absence of a response, these two
facts establish that Complainant has used the KISTLER VINEYARD mark
continuously and extensively in commerce since at least as early as 1985, well
before Respondent’s registration of the disputed domain name. Consequently, the Panel finds that
Complainant has established rights in the KISTLER VINEYARD mark pursuant to Policy
¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see also Bob Jones
University v. Mike Kane, FA 324692
(Nat. Arb. Forum September 14, 2004) (finding that Complainant’s listing of
first use of the BOB JONES UNIVERSITY mark on USPTO registration information
establishes that Complainant had used the mark continuously and extensively
since the time of first use, thereby establishing rights in the mark pursuant
to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <kistlervineyards.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire KISTLER VINEYARD mark and adds an “s” as well as the generic top-level domain (“gTLD”) “com.” The Panel finds that the addition of an “s” and the gTLD “com” to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights or legitimate interests in the <kistlervineyards.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See 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.”); see also 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”).
Respondent is using its disputed domain name to resolve to a
website that features links to various non-competing commercial websites from
which Respondent presumably receives referral fees. The Panel finds that Respondent’s use is neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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 also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Also, Complainant contends that Respondent is neither commonly known by the <kistlervineyards.com> domain name nor authorized to register domain names featuring Complainant’s KISTLER VINEYARD mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using its disputed domain name to divert Internet users to a website with links to unrelated commercial websites from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use of its disputed domain name to divert Internet users to its own website for commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kistlervineyards.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 5, 2006
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