Uncorked Wines, LLC v. Alexandra Han
Claim Number: FA2008001907709
Complainant is Uncorked Wines, LLC (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, United States. Respondent is Alexandra Han (“Respondent”), California, United States
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thewineuncorked.com>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2020; the Forum received payment on August 8, 2020.
On August 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thewineuncorked.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 August 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2020 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@thewineuncorked.com. Also on August 12, 2020, 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 September 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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. 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, Uncorked Wines, LLC, is a company that provides wine products and related goods. Complainant has rights in the trademark UNCORKED through continuous use of the mark and the website address <uncorked.com> since 2009. Respondent’s <thewineuncorked.com> domain name, registered on March, 30, 2020, is confusingly similar to Complainant’s mark as it incorporates the UNCORKED mark in its entirety and merely adds the descriptive terms “thewine” plus the “.com” gTLD.
Respondent lacks rights or legitimate interests in its <thewineuncorked.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent’s use of the UNCORKED mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent makes no active use of the disputed domain name.
Respondent registered and uses its <thewineuncorked.com> domain name in bad faith. Respondent intentionally targeted the UNCORKED mark in the domain name to disrupt Complainant’s business through Internet user confusion. Respondent also fails to make an active use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) The Panel declines to decide the question of whether Respondent has no rights to or legitimate interests in respect of the domain name; and;
(3) Complainant has failed to demonstrate that the disputed domain name was registered and is being used by Respondent 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.
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 claims to have common law rights in the UNCORKED mark based on its use thereof. Registration of a trademark is not required when a complainant can demonstrate established common law rights in an asserted mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”) To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that the mark has developed a secondary meaning with respect to the complainant and its business. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”) Here, Complainant claims to have continuously use the UNCORKED mark for more than ten years in connection with the marketing and sale of wine and related products. In support thereof, it submits screenshots of selected pages from its www.uncorked.com website. These screenshots show the online sale and shipping of wine, paragraphs describing various characteristics of wine and wine selection, a “Collector’s Corner” offering “special finds for the wine aficionado”, a “Food and Wine Paring Guide”, and a brief description of the “Family Behind Uncorked”. Although the submitted evidence does not specifically address the continuity of Complainant’s use of its claimed mark nor whether its efforts have resulted in consumer association of the mark with Complainant, the Complaint does assert use of the mark since 2009 and Respondent has not participated in this case to dispute what amounts to a reasonable claim. As such, the Panel finds that Complainant has submitted at least the bare minimum needed to support its threshold claim of common law rights in the UNCORKED mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <thewineuncorked.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the UNCORKED mark in its entirety and merely adds the term “thewine” and adds the “.com” gTLD. The addition of generic or descriptive terms and a gTLD is generally insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In light of its finding no bad faith under Policy ¶ 4(a)(iii), the Panel declines to make any findings with regard to Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses its <thewineuncorked.com> domain name in bad faith because Respondent intentionally targeted the UNCORKED mark to disrupt Complainant’s legitimate business in violation of Policy ¶ 4(b)(iii). However, a foundational question underlying the bad faith requirement of Policy ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its UNCORKED Mark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”)
Complainant argues that “Complainant’s [sic] of the UNCORKED marks and operation of the uncorked.com website charged Respondent with constructive notice of Complainant’s rights in the Marks and is evidence of bad faith.” While UDRP case precedent typically declines to find bad faith as a result of constructive knowledge, where the parties are both located in the United States – a jurisdiction that applies the legal theory of constructive notice – UDRP Panels have been prepared to apply the concept if its requirements are met. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) As both parties to this dispute are US-based and the doctrine of constructive notice is recognized under US law, the Panel is prepared to consider the theory here. However, the US trademark law, at 15 USC §1072, states that “Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof.” Here, Complainant has not asserted that it owns a US trademark registration for its UNCORKED mark and the Panel’s own review of the United States Patent and Trademark Office (“USPTO”) records[i] has not revealed any such registration. As such, the Panel declines to apply the theory of constructive notice based only on Complainant’s assertion of common-law rights in its trademark.
Next, Complainant asserts that it “has developed substantial goodwill in its UNCORKED marks”, that the “Marks are well-known”, and that they are “nationally renowned” through “continuous and widespread use of the Marks in commerce in the United States and foreign countries.” Complainant has submitted screenshots of selected pages from its www.uncorked.com website which show the online sale and shipping of wine, paragraphs describing various characteristics of wine and wine selection, a “Collector’s Corner” offering “special finds for the wine aficionado”, a “Food and Wine Paring Guide”, and a brief description of the “Family Behind Uncorked”. From this, it is apparent that Complainant is actually operating a business under its asserted mark. However, these screenshots do not provide any insight into the scope or reputation of the UNCORKED mark and so the Panel is unable to determine, therefrom, whether the mark is well-known or nationally renowned or what effect Complainant’s efforts have had on the public’s knowledge or perception of its mark.
This is a critical issue in this case as the intentional targeting of a complainant’s trademark is a foundational concept in the Policy’s requirement of proving bad faith. In Investone Retirement Specialists, Inc. v. Motohisa Ohno, D2005-0643 (WIPO Aug. 2. 2005), the Panel noted that:
"a finding of bad faith under the Policy, in general, requires some evidence that the Respondent knowingly registered and used a domain name which was identical or similar to the Complainant’s mark. In other words, it will not be sufficient to demonstrate that the Respondent’s conduct was directed to a mark in the abstract; rather, there must be a nexus between the mark and the Complainant, which is known to the Respondent, before a finding of intentional misappropriation of the rights of that brand owner can be made. Where there are many users of a mark, none of whom is notably more prominent than another, the onus on the Complainant to demonstrate intentional targeting of its mark and business will be difficult to satisfy."
Here, Complainant’s case does not meet the standard of proving, by a preponderance of the evidence (i.e., more likely than not), that Respondent acted in bad faith. The phrase “the wine uncorked” has a descriptive meaning in relation to wine thus making it incumbent upon Complainant to clearly demonstrate the distinctiveness of its trademark and a nexus between the disputed domain name and the mark. Further, the word “uncorked” is the subject of a number of third-party USPTO trademark registrations relating to wine and the Panel’s inputting of the word into a popular search engine returned many other uses thereof in this field as part of marks by others leaving the Panel with doubts that Respondent specifically had Complainant in mind when it registered the disputed domain name. Moreover, the screenshot of Respondent’s website submitted by Complainant does not mention Complainant (nor, for that matter, any third parties) and only consists of a listing of wine related categories. Complainant claims that “[t]he registration of a domain name that includes ‘the wine’ in connection with the Complainant’s UNCORKED mark demonstrates that Respondent clearly had the Complainant’s Marks in mind when registered the Domain Name.” However, based upon Complainant’s submitted evidence and this Panel’s own limited research, it is not possible to conclude that it is more likely than not that Respondent intentionally targeted Complainant or its UNCORKED mark or sought to disrupt its business by registering and using its <thewineuncorked.com> domain name.
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 <thewineuncorked.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: September 4, 2020
[i] The Panel may exercise its own discretion to conduct the independent investigation of publicly available information afforded by the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules
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