Disney Enterprises, Inc. v. Steve Goldstein
Claim Number: FA2301002030114
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Steve Goldstein (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naparose.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 31, 2023; Forum received payment on January 31, 2023.
On February 1, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <naparose.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 February 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2023 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@naparose.com. Also on February 6, 2023, 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 February 23, 2023.
On March 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Disney Enterprises, Inc., asserts that it owns and operates the restaurant Napa Rose. Complainant has rights in the NAPA ROSE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,429,340, registered on November 5, 2013). The disputed domain name is identical or confusingly similar to Complainant’s NAPA ROSE mark as it merely adds the “.com” generic top-level-domain name ("gTLD").
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the NAPA ROSE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a parked webpage and Respondent has listed the disputed domain name for sale.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent’s attempt to sell the disputed domain name is evidence of bad faith registration and use. Respondent had actual knowledge of Complainant’s rights in the NAPA ROSE mark prior to registering the disputed domain name.
B. Respondent
i) Respondent is in the process of acquiring a wine and food gift basket company. Respondent intends to do this under a new brand name “Naparose.com.” This name incorporates the wine selling region of Napa and then plays on the name rose as it implies rose (the wine varietal), rose (the flower) and a strawberry (part of the rose flower family). It is a unique name to capture Respondent’s selling proposition. Respondent therefore has legitimate business purposes to use the disputed domain name.
iii) Complainant had ample time to acquire the disputed domain name if it was valuable to Complainant. Disney Enterprises is a sophisticated corporation with billions in revenues. If this trademark and intellectual property were valuable to Complainant, it had a significant amount of time to register the disputed domain name, which was feely available. It appears Complainant has used its mark since 2001 and has a trademark since 2013. Complainant had more than 20 years to register the disputed domain name. A sophisticated company such as Disney should have registered this intellectual property if indeed Complainant felt it was valuable to Complainant.
1. The disputed domain name was registered on October 21, 2021.
2. Complainant has established rights in the NAPA ROSE mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,429,340, registered on November 5, 2013).
3. The disputed domain name resolves to a parked webpage with a button that states “Get This Domain”.
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 asserts rights in the NAPA ROSE mark through Complainant’s registration of the mark with the USPTO (e.g. , Reg. No. 4,429,340, registered on November 5, 2013). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). Since Complainant provides evidence of its trademark registration with the USPTO, the Panel finds Complainant has established rights in the NAPA ROSE mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s NAPA ROSE mark as it merely adds the “.com” gTLD. The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent contends that its proposed business plan, operating a wine and food gift basket company would be in a different trademark category from the restaurant and bar services of Complainant’s mark, and thus would not be confusing in the context of consumers. However, the goods and/or services for which the mark is registered or used in commerce are not considered relevant to the test per Policy ¶ 4(a)(i) (WIPO Overview 3.0, section 1.1.2).
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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the NAPA ROSE 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 Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “Steve Goldstein.” There is no other evidence to suggest that Respondent was authorized to use the NAPA ROSE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has failed to make use of the disputed domain name and because Respondent has offered the disputed domain name for sale. Failure to use the disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). In addition, offering a disputed domain name for sale may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the disputed domain name resolving to a parked webpage with a button that states “Get This Domain.”
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name. Respondent contends that it is in the process of acquiring a wine and food gift basket company. Respondent intends to do this under a new brand name “Naparose.com.” This name incorporates the wine selling region of Napa and then plays on the name rose as it implies rose (the wine varietal), rose (the flower) and a strawberry (part of the rose flower family). It is a unique name to capture Respondent’s selling proposition. Respondent therefore has legitimate business purposes to use the disputed domain name.
The Panel notes that Respondent fails to provide any evidence supporting its allegation that it is in the process of acquiring a wine and food gift basket company. The work-in progress screen shots of the website which Respondent has provided appear to be readily made in a very short time period, and thus it is not considered as being a genuine preparation of Respondent’s proposed business plan. The Panel further notes that the disputed domain name resolves to a parked webpage with a button that states “Get This Domain.” As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent is offering the disputed domain name for sale. Registration of a disputed domain name to offer for sale can evince bad faith registration and use per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The Panel recalls that Complainant provides a screenshot of the disputed domain name’s resolving website showing a button indicating the domain name was available for purchase. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Respondent rebuts that it is in the process of acquiring a wine and food gift basket company. Respondent intends to do this under a new brand name “Naparose.com.” Respondent’s proposed business plan would be in a different trademark category from the trademark for restaurant and bar services, and thus would not be confusing in the context of consumers.
However, as noted above, Respondent fails to provide any evidence supporting its allegation that it is in the process of acquiring a wine and food gift basket company. The work-in progress screen shots of the website which Respondent has provided appear to be readily made in a very short time period, and thus it is not considered as being a genuine preparation of Respondent’s proposed business plan. The Panel further notes that the disputed domain name has resolved to a parked webpage with a button that states “Get This Domain” over one (1) year since the registration of the disputed domain name. Therefore, the Panel finds on the balance of probabilities that Respondent’s claimed preparation of the business plan is not genuine.
Respondent further argues that Complainant had ample time to acquire the disputed domain name if it was valuable to Complainant. If Complainant’s trademark and intellectual property were valuable to Complainant, it had a significant amount of time to register the disputed domain name, which was feely available. Respondent notes that Complainant had more than 20 years to register the disputed domain name. A sophisticated company such as Complainant should have registered this intellectual property if indeed Complainant felt it was valuable to Complainant. However, the Panel finds that the absence of protection measures for the disputed domain name by way of securing the registration of the domain name cannot justify a third party’s registration of the same name.
Complainant additionally argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the NAPA ROSE mark. Registration of a mark with knowledge of a complainant’s rights can evince bad faith registration and use per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant asserts since it has held rights in the NAPA ROSE mark for nearly a decade and the restaurant is highly acclaimed and widely known, Respondent would clearly know of the existence of Complainant’s rights in the mark. The Panel infers, due to the notoriety of Complainant’s mark and Respondent’s awareness of Complainant’s mark as stated in its Response that Respondent registered the disputed domain name with knowledge of Complainant’s rights in its NAPA ROSE mark, which constitutes bad faith registration of the disputed domain name per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <naparose.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 3, 2023
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