Houdini, Inc. v. Yakov Rossman
Claim Number: FA1402001546015
Complainant is Houdini, Inc. (“Complainant”), represented by David A. Plumley of Christi, Parker & Hale, LLP, California, USA. Respondent is Yakov Rossman (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winecountrygiftbasketsreviews.com>, registered with GODADDY.COM, LLC.
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.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2014; the National Arbitration Forum received payment on February 27, 2014.
On February 28, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <winecountrygiftbasketsreviews.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@winecountrygiftbasketsreviews.com. Also on February 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 13, 2014.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has been operating a gift baskets manufacturing and retail business under the WINE COUNTRY GIFT BASKETS trade name for over 25 years. Through its various distribution centers, its products are shipped to customers throughout all 50 states in the United States.
Complainant is the proprietor of the WINE COUNTRY, WINE COUNTRY GIFT BASKETS, and THE ORIGINAL WINE COUNTRY GIFT BASKETS marks. Since around 1997, Complainant has operated its website at <winecountrygiftbaskets.com>. The website offers information about and offers for sale gourmet food, wine, fruit and spa gift packages, and gift baskets sold under Complainant’s marks. Complainant has significant goodwill in its business and Complainant’s marks.
Complainant has U.S. trademark registrations for WINE COUNTRY and WINE COUNTRY GIFT BASKETS (collectively, “Complainant’s marks”). The registrations pre-date the registration date of the <winecountrygiftbasketsreviews.com> domain name (“the disputed domain name”). The disputed domain name was registered on November 30, 2012.
The disputed domain name is confusingly similar to Complainant’s marks: the disputed domain name contains Complainant’s exact WINE COUNTRY and WINE COUNTRY GIFT BASKETS marks. The addition of the word “reviews” in the disputed domain name does little to distinguish it from Complainant’s marks. In fact, in this instance, its inclusion could lead consumers to think the website to which the disputed domain name resolves is an official website of Complainant or endorsed by Complainant, for reviews of its products.
Respondent has no rights or legitimate interests in respect of the disputed domain name. This is demonstrated by the offer of directly competing products on Respondent’s website and the prominent display of Complainant’s marks throughout Respondent’s website without Complainant’s consent. Respondent’s website reproduces Complainant’s advertising copy and copyright protected photographs of Complainant’s products. Further, Respondent is not commonly known by the disputed domain name and neither has Complainant authorized Respondent to use Complainant’s marks. Respondent is not making a legitimate noncommercial or fair use of disputed domain name.
Respondent registered and is using the disputed domain name in bad faith by seeking to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of, or of a product or service on, his website.
B. Respondent
Respondent was unaware of Complainant’s trademark rights and had hoped to generate sales through the disputed domain name but it has not. He acquired the disputed domain name after seeing it on Amazon. He “thought it was a line of products” and “did not know it was a trade mark”. In his response to the Complaint filed, he said “I can guarantee that if [Complainant] would send me a simple email explaining that this is their trademark and ask me not to use it I would do it without any problem. […] If they wish so I will not use the domain and I will not renew it”.
(a) The disputed domain name is confusingly similar to Complainant’s marks in which it has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered nor is it being used in bad faith.
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."
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.
The Panel is satisfied that Complainant has established it has trademarks rights in WINE COUNTRY and WINE COUNTRY GIFT BASKETS and agrees that the disputed domain name is confusingly similar to Complainant’s marks. It is a well-established principle that the generic top-level domain should be disregarded when considering whether a domain name is identical or confusingly similar to a trade mark. As Complainant’s marks are incorporated in their entirety in the disputed domain name and the additional word “reviews” does not serve to remove but, rather, adds to the confusion with Complainant’s marks, the Panel finds that paragraph 4(a)(i) of the Policy has been established.
It has been established by many previous UDRP panel decisions that a complainant is required to establish a prima facie case of the respondent’s lack of rights or legitimate interests in the domain name at issue, after which the burden shifts to the respondent to show with evidence that it does have rights or legitimate interests. [See Hanna-Barbera Prods., Inc. v. Ent’mt Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sep. 25, 2006).
Panel finds on the evidence submitted that a prima facie case has been established by Complainant. Turning to Respondent’s response and comments, the Panel does not find basis for concluding that Respondent has rights or legitimate interests in respect of the disputed domain name. Although Respondent asserts it did not know that WINE COUNTRY and WINE COUNTRY GIFT BASKETS were trade marks of Complainant, he stated that he would be ready to stop using it and to give the disputed domain name up. This response constitutes, in the Panel’s view, an admission that Respondent has no rights or legitimate interests in respect of the disputed domain name. If this were not so, the Panel would have expected the appropriate and natural response for Respondent to dispute Complainant’s assertions.
The Panel finds that paragraph 4(a)(ii) of the Policy has been established.
Paragraph 4(b) of the Policy states that evidence of bad faith registration and use can be found to be established in any of the following situations:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location.
The Panel finds the circumstances of this case to fall within paragraph 4(b)(iv) of the Policy. The Panel draws an adverse inference from the prima facie evidence of copying of Complainant’s advertising copy and copyright protected photographs of Complainant’s products. These allegations were not disputed by Respondent. The sale of directly-competing products and the incorporation of Complainant’s well-established marks also lend support for a finding of bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <winecountrygiftbasketsreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Tan, Panelist
Dated: April 6, 2014
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