DECISION

 

Opus One Winery, LLC v. Matt Pitel

Claim Number: FA1707001742161

PARTIES

Complainant is Opus One Winery, LLC (“Complainant”), represented by Barbara L. Friedman of Dergosits & Noah LLP, California, USA.  Respondent is Matt Pitel (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <opusonewinery.wine>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 28, 2017; the Forum received payment on August 2, 2017.

 

On August 1, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <opusonewinery.wine> 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 August 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2017 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@opusonewinery.wine.  Also on August 2, 2017, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. 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:

1.    Complainant, Opus One Winery, LLC, uses the OPUS ONE mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,614,118, registered Sept. 3, 2002). See  Compl. at Attached Ex. 3. Respondent’s <opusonewinery.wine> is identical or confusingly similar as it contains Complainant’s mark in its entirety, merely adding the generic term “winery” and the generic top level domain (“gTLD”) “.wine.”

2.    Respondent does not have rights or legitimate interests in the <opusonewinery.wine> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the OPUS ONE mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent registered the disputed domain name to sell it to Complainant or to a third party at a profit.

3.    Respondent has registered and used the <opusonewinery.wine> domain name in bad faith. Respondent registered the disputed domain name for the purpose of selling the domain name registration to Complainant or to a competitor for valuable consideration in excess of Respondent’s out-of-pocket costs. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the OPUS ONE marks.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <opusonewinery.wine> domain name is confusingly similar to Complainant’s OPUS ONE mark.

2.    Respondent does not have any rights or legitimate interests in the <opusonewinery.wine> domain name.

3.    Respondent registered or used the <opusonewinery.wine> domain name in bad faith.

           

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."

 

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.

 

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(f), 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 (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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the OPUS ONE mark based upon its registration with the USPTO (e.g., Reg. No. 2,614,118, registered Sept. 3, 2002). See  Compl. at Attached Ex. 3. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the OPUS ONE mark per Policy ¶ 4(a)(i).

 

Complainant asserts that <opusonewinery.wine> is identical or confusingly similar to the OPUS ONE mark as it contains the mark in its entirety and adds the generic term “winery” along with the gTLD “.wine.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark or removal of a space, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick FA 1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and find that the <opusonewinery.wine> does not contain changes that would sufficiently distinguish it from the OPUS ONE mark.

 

Rights or Legitimate Interests

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 (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 (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 argues that Respondent has no rights or legitimate interests in <opusonewinery.wine> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OPUS ONE mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as

“Matt Pitel.”  The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent registered <opusonewinery.wine> for the sole purpose to generate revenue by selling it to Complainant or to a third party for profit. An attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’  The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Therefore, the Panel agrees that such a use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and used <opusonewinery.wine> in bad faith because it was registered primarily for the purpose of selling the domain name registration to the Complainant or to a competitor for valuable consideration in excess of the Respondent’s out of pocket costs. Offering to sell an infringing domain name in excess of out-of-pocket costs, or put the domain name up for auction, in response to a demand letter from the trademark owner has long been found to constitute evidence of bad faith registration and use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Respondent states in the WHOIS information that the domain is for sale. See Compl. at Attached Ex.1. Additionally, Respondent stated in an email to Complainant that the disputed domain name was for sale. See Compl. at Attached Ex. 8. Respondent also states that Respondent has been in this business of buying and selling domain names for over 15 years and maintains an inventory of over 500. The Panel finds that this evidence supports that Respondent purchased <opusonewinery.wine> for the sole purpose of selling it at a profit—which supports a finding of bad faith under Policy ¶ 4(b)(i).

 

Complainant argues Respondent must have had actual knowledge of Complainant’s OPUS ONE mark and business because of its renown, worldwide recognition which was established long prior to the registration of the disputed domain name by Respondent. Respondent registered the domain name using an added descriptive term coupled with Complainant’s OPUS ONE mark, which is famous and familiar to countless consumers. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name; likewise, opportunistic bad faith may also be proven through consideration of the circumstances surrounding the registration. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the OPUS ONE mark—which supports a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <opusonewinery.wine> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

September 5, 2017