Wilson Vineyards, Inc. A California Corporation v. Zachary Wilson / Wilson Vineyard
Claim Number: FA1601001656048
Complainant is Wilson Vineyards, Inc. A California Corporation (“Complainant”), represented by R. Michael West of Law Offices Of R. Michael West, California, USA. Respondent is Zachary Wilson / Wilson Vineyard (“Respondent”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsonvineyard.com>, registered with 1&1 Internet AG.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2016; the Forum received payment on January 11, 2016.
On January 12, 2016, 1&1 Internet AG confirmed by e-mail to the Forum that the <wilsonvineyard.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the domain name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 January 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2016 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@wilsonvineyard.com. Also on January 13, 2016, 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 January 27, 2016.
On February 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <wilsonvineyard.com> be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the WILSON VINEYARDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,735,479, registered on July 8, 2003). Respondent’s <wilsonvineyard.com> domain name is confusingly similar to the WILSON VINEYARDS mark because it is similar in sight, sound and meaning to the mark, and because it contains the dominant portion of the mark while merely eliminating spacing between words of the mark and the “S,” and adds the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent lacks legitimate rights and interests in the <wilsonvineyard.com> domain name because its USPTO registration long predates the registration of the domain. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to sell wine in direct competition with Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <wilsonvineyard.com> domain name in bad faith because the resolving website is used to sell wine in competition with Complainant. Respondent registered the <wilsonvineyard.com> domain name in bad faith because it did so with at least constructive notice of Complainant’s rights in the WILSON VINEYARDS mark.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent is commonly known by the <wilsonvineyard.com> domain name because it became incorporated as Wilson Vineyard LLC in 2010. Respondent has legitimate rights or interests in the domain because the domain is used to operate a legitimate business operation, and because it is the surname of the Respondent and Registrant Zachary Wilson.
Policy ¶ 4(a)(iii)
Respondent has not engaged in bad faith registration or use of the domain name because it uses the domain to engage in a legitimate business.
The Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which Complainant has rights; Complainant has failed to establish that Respondent has no rights or legitimate interests with respect of the domain name; thus it is not necessary that the Panel determine whether the domain name has been registered and is being used in bad faith, because Complainant has failed to establish one of the three elements required under the ICANN policy.
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.
Complainant claims it has rights in the WILSON VINEYARDS mark through its registration with the USPTO (Reg. No. 2,735,479, registered on July 8, 2003). Complainant has provided this registration in Exhibit A. Respondent makes no contentions with regards to Policy ¶ 4(a)(i). Accordingly, Complainant has rights in the WILSON VINEYARDS mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent lacks legitimate rights and interests in the <wilsonvineyard.com> domain name because its USPTO registration long predates the registration of the domain. However, such arguments are not supported by Policy ¶ 4(a)(ii), which requires a complainant to satisfy Policy ¶ 4(c)(i), Policy ¶ 4(c)(ii), or Policy ¶ 4(c)(iii) in order to establish that a respondent lacks rights or legitimate interests in a disputed domain name.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent contends that it is commonly known by the <wilsonvineyard.com> domain name because it became incorporated as Wilson Vineyard LLC in 2010. Respondent has provided evidence of this in Annex 3. This evidence is sufficient to show having been commonly known by the domain, thus Respondent has legitimate rights or interests in the <wilsonvineyard.com> domain name under Policy ¶ 4(a)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name).
Respondent further claims that it has legitimate rights or interests in the domain because it is used to operate a legitimate business operation. Respondent stresses that it is using its family surname “Wilson” in conjunction with its legitimate business operations in producing and selling wine. Respondent’s Annex 4 is provided in order to demonstrate this use. Respondent has provided sufficient evidence and arguments to show its use of the <wilsonvineyard.com> domain is to operate a legitimate business that is described by the domain name, <wilsonvineyard.com> under Policy ¶ 4(a)(ii). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003).
Complainant failed to establish its burden with respect to proving that Respondent lacks rights and legitimate interests in the disputed domain name, thus there is no need for the Panel to provide an analysis regarding registration and use in bad faith.
Having failed to establish the second element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wilsonvineyard.com> domain name REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: February 19, 2016
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