E. & J. Gallo Winery v. igarashi, katsuhisa
Claim Number: FA1812001821421
Complainant is E. & J. Gallo Winery (“Complainant”), represented by Michael Salvatore of Holmes Weinberg, PC, California, USA. Respondent is igarashi, katsuhisa (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chateausouverain.com>, registered with Network Solutions, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.
On December 17, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <chateausouverain.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2019 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@chateausouverain.com. Also on December 19, 2018, 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.
In response to the Panelists requests for further evidence of secondary meaning, Complainant filed a timely Additional Submission on January 22, 2019 with ample evidence of secondary meaning.
On January 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, E. & J. Gallo Winery, uses their mark CHATEAU SOUVERAIN in connection with wine sales. Complainant has rights in the CHATEAU SOUVERAIN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,047,396, registered Mar. 25, 1997). See Compl. Ex. 2. Respondent’s <chateausouverain.com> domain name is identical and/or confusingly similar to Complainant’s CHATEAU SOUVERAIN mark.
Respondent has no rights or legitimate interests in the <chateausouverain.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHATEAU SOUVERAIN mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is not using the domain name and the associated website is a parked page.
Respondent registered and is using the <chateausouverain.com> domain name in bad faith. Respondent’s registration of the disputed domain name precludes the Complainant for registering its trademark as a domain name. Respondent’s non-use of the parked page indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on September 27, 1995 and updated as of September 7, 2018.
C. Additional Submissions
On January 22, 2019, Complainant filed an Additional Submission in response to the Panel’s request for further evidence of secondary meaning. In this Additional Submission, Complainant appropriately provides ample evidence of secondary meaning in the trademark CHATEAU SOUVERAIN which subsisted prior to September 27, 1995, the filing date of Respondent’s disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent lacks any rights or legitimate interests in or to the disputed domain name; however, that Respondent has failed to carry its burden of proof to show Respondent engaged in bad faith use and registration of the dispute domain name.
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.”).
The Panel finds that the disputed domain name, <chateausouverain.com>, is confusingly similar to Complainant’s valid and subsisting trademark, CHATEAU SOUVERAIN. Although Respondent’s registration date of the dispute domain name predates Complainant’s claimed trademark registration, Complainant has proven that it (or its predecessor in interest) had substantial secondary meaning in this mark prior to Respondent’s registration of the disputed domain name. As such, the Panel finds that Complainant has adequately pled its rights and interests in and to the common law trademark, CHATEAU SOUVERAIN, effective prior to the registration of the disputed domain name.
Respondent arrives at the disputed domain name by merely adding the g TLD “.com” to Complainant’s precise trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds the dispute domain name to be confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the dispute domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Also, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent appears to not be using the domain name as the associated website may be a parked page.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the dispute domain name.
However, the Panel further finds that Complainant has not carried its burden to show that Respondent engaged in bad faith use and registration more than 23 years ago when it registered the disputed domain name. Complainant claims, without evidence, that Respondent has parked the web page associated with the disputed domain name. A mere allegation without supporting evidence is usually insufficient to carry the burden of proof of bad faith. Although failure to actively use a domain name is often evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), the Panel requires actual evidence of this fact, not a mere claim.
Further, Complainant makes no attempt to show that Respondent had actual knowledge of Complainant’s rights and interests in and to the trademark CHATEAU SOUVERAIN prior to September 27, 1995, the date Respondent registered the disputed domain name. As over 23 years have lapsed since that date and Complainant (nor its predecessor in interest) made any claim against the Respondent under the Policy, apparently, Complainant cannot make this requisite showing.
As such, the Panel finds that Complainant has failed to carry its burden to prove bad faith use and registration.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <chateausouverain.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: January 23, 2019
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