O’Neill Beverages Co. LLC v. James Alen
Claim Number: FA1907001853144
Complainant is O’Neill Beverages Co. LLC (“Complainant”), represented by Nate Garhart of Farella Braun + Martel LLP, California, USA. Respondent is James Alen (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oneillwlne.com>, registered with NameCheap, Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2019; the Forum received payment on July 22, 2019.
On July 22, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <oneillwlne.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@oneillwlne.com. Also on July 23, 2019, 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 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is an international wine and beverage company and leading California producer of premium brands, bulk wine, brandy, and spirits for the beverage alcohol trade. Complainant has rights in the O’NEILL WINE mark (collectively the “OBC” marks) through its continuous, extensive, and prominent use in connection with varied goods and services. Respondent’s <oneillwlne.com> domain name is confusingly similar to Complainant’s O’NEILL WINE mark. Respondent incorporates the entirety of the O’NEILL WINE mark.
Respondent has no rights or legitimate interests in the <oneillwlne.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in an attempt to impersonate Complainant personnel in undertaking a phishing scheme.
Respondent registered and used the <oneillwlne.com> domain name in bad faith by attempting to confuse internet users that Respondent is affiliated with Complainant. Respondent engages in a phishing scheme, impersonating Complainant to obtain financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an international wine and beverage company and leading California producer of premium brands, bulk wine, brandy, and spirits for the beverage alcohol trade.
2. Complainant has established its common law trademark rights in the O’NEILL WINE mark (collectively the “OBC” marks) through its continuous, extensive, and prominent use of the mark in connection with varied goods and services.
3. Respondent registered the <oneillwlne.com> domain name on May 7, 2019.
4. Respondent uses the disputed domain name in an attempt to impersonate Complainant personnel in undertaking a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has thus made out the first of the three elements that it must establish.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law trademark rights in the O’NEILL WINE mark through its continuous, extensive, and prominent use in connection with varied goods and services. The Panel notes that a trademark registration with a governmental authority is not required to show rights in a mark as it is accepted that is so. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). In the alternative, the Panel may find that a complainant has common law rights in a mark where there is sufficient evidence of secondary meaning per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). In the present case, Complainant has not alleged that it has a registered trademark and consequently it must establish a common law trademark to obtain standing. Here, Complainant has provided its business registrations and has stated to have used the name O’NEILL WINE in commerce and in connection with goods and services since 2004. See Amend. Compl. Ex. C. The Panel finds that Complainant has established secondary meaning in the name and that it has come to be recognized as the source of Complainant’s goods and services. Therefore, the Panel finds that Complainant has adequately shown secondary meaning in the O’NEILL WINE mark to establish common law rights in the mark per Policy ¶ 4(a)(i) since at least 2004.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s O’NEILL WINE mark. Complainant argues that Respondent’s <oneillwline.com> domain name is confusingly similar to Complainant’s O’NEILL WINE mark. The Panel notes that while Complainant does not specifically argue this, the disputed domain name contains the O’NEILL WINE mark, absent the apostrophe, adds the letter “l,” and a “.com” generic top-level domain (“gTLD”). Such changes may not be enough to distinguish the disputed domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also SPTC, Inc. and Sotheby’s v. Kathleen Kim, FA 1734152 (Forum July 14, 2017) (“Respondent’s <sotheebys.com> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of Complainant’s SOTHEBY’S mark, less the apostrophe.”).Therefore, the Panel finds that Respondent’s <oneillwlne.com> domain name is confusingly similar to Complainant’s O’NEILL WINE mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights and Legitimate Interests
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s O’NEILL WINES trademark and to use it in its domain name adding the letter “l,” which does not negate a finding of confusing similarity;
(b) Respondent registered the <oneillwlne.com> domain name on May 7, 2019;
(c) Respondent uses the disputed domain name in an attempt to impersonate Complainant personnel in undertaking a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <oneillwlne.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the O’NEILL WINE mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “James Alen” and there is no other evidence to suggest that Respondent was authorized to use the O’NEILL WINE mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <oneillwlne.com> domain name in an attempt to impersonate Complainant personnel in furtherance of a phishing scheme. Use of a disputed domain name to impersonate a complainant in attempt to gain financial information in furtherance of a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant has provided the Panel with multiple email chains where Respondent attempts to impersonate the CEO of Complainant in attempt to gain donations and financial information. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <oneillwlne.com> domain name in bad faith by attempting to confuse internet users that Respondent is affiliated with Complainant. Use of a disputed domain name to confuse internet users into thinking a respondent is affiliated with complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant has argued that Respondent attempts to use the disputed domain name to have email recipients into believing they were communicating with Complainant and this is supported by the evidence. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent engages in a phishing scheme by impersonating Complainant to obtain financial information. Use of a disputed domain name to pass off as a complainant in furtherance of a phishing scheme may be evidence of bad faith per Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Here, Complainant has provided the Panel with multiple email chains where Respondent attempts to impersonate the CEO of Complainant in attempt to gain donations and financial information. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent engaged in bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the O’NEILL WINE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oneillwlne.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 19, 2019
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