Bronco Wine
Company v. Midnight Wine Cellars a/k/a Joe Thrift
Claim Number: FA0106000097740
PARTIES
Complainant is Bronco Wine Company, Ceres, CA, USA (“Complainant”) represented by Paulette R. Carey, of Buchman & O'Brien, LLP. Respondent is Midnight Wine Cellars, Las Vegas, NV, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <broncowineco.com> registered with Register.com.
PANEL
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. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2001; the Forum received a hard copy of the Complaint on July 2, 2001.
On June 26, 2001, Register.com confirmed by e-mail to the Forum that the domain name <broncowineco.com> is registered with Register.com and that 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 July 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 25, 2001 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@broncowineco.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 Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The domain name
is virtually identical to Complainant’s trademark.
Respondent has no license, assignment, or authorization to use Complainant’s trademark. To Complainant’s knowledge, Respondent has made no legitimate commercial use of the domain name.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on‑line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.
B. Respondent did not submit a Response in this matter.
FINDINGS
Complainant has used the Bronco Wine Company mark in commerce since December 27, 1973 in connection with the production, distribution and sale of wine products.
Respondent registered the domain name on August 16, 2000 and has not developed a website for the domain name or used it in any manner.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant has established that it has common law rights in the Bronco Wine Company mark, which it has used extensively in connection with its business. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"). The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).
The disputed domain name <broncowineco.com> is nearly identical and certainly confusingly similar to the mark in which Complainant has rights. The word “company” in Complainant’s Bronco Wine Company mark has been abbreviated in the domain name to “co,” a common abbreviation for the term. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
Complainant has satisfied the requirements under Policy ¶ 4(a)(i).
Rights or
Legitimate Interests
Complainant has shown that Respondent has passively held on to the domain name. Such evidence demonstrates that Respondent has not established rights or legitimate interests in the domain names. The passive holding of a domain name confusingly similar to Complainant’s mark is not a bona fide offering of goods under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding no legitimate rights or interests when Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).
Additionally, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Therefore, the Complainant has established that Respondent has no rights or legitimate interests with respect to the <broncowineco.com> domain name.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Complainant has shown that Respondent has demonstrated bad faith by not developing a website utilizing the domain name. Passive holding of a domain name permits an inference of registration and use in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or web site that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).
Complainant has satisfied the
requirements under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <broncowineco.com> be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: August 2, 2001
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