Sanford Winery Company, Terlato Wine Group, Ltd. and Paterno Imports Ltd., dba Terlato Wines International v. William Henao / Lake Mary Internet
Claim Number: FA2305002045342
Complainant is Sanford Winery Company, Terlato Wine Group, Ltd. and Paterno Imports Ltd., dba Terlato Wines International (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is William Henao / Lake Mary Internet (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sanfordwineclub.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 19, 2023; Forum received payment on May 19, 2023.
On May 22, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <sanfordwineclub.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 May 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@sanfordwineclub.com. Also on May 23, 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 June 16, 2023.
On June 22,2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions.
1. Complainant is a subsidiary of Terlato Wine Group, a four-generation family business, founded in the 1950s by Anthony Terlato to produce, distribute, import, and market fine wines. Complainant asserts rights in the SANFORD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,453,203, registered May 22, 2001) and other trademark agencies. See Amend. Compl. Annex F.
2. Complainant also submits that it has common law rights in the SANFORD name, the SANFORD WINE CLUB name, and variations thereof.
3. The <sanfordwineclub.com> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name includes the entirety of the SANFORD mark with the addition of the source identifying words “wine club” as well as the generic top level domain (“gTLD”) “.com”.
4. Respondent lacks rights and legitimate interests in the <sanfordwineclub.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SANFORD mark in the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, the webpage associated with the disputed domain name displays no content.
5. Respondent registered and uses the <sanfordwineclub.com> domain name in bad faith. Respondent has created a likelihood of confusion with Complainant’s mark to disrupt Complainant’s business. Respondent has failed to make an active use of the disputed domain name. Additionally, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the SANFORD mark.
B. Respondent
Respondent made the following contentions.
1. Respondent, William Henao, is a marketing agency based in Sanford, Florida with highly ranked destination marketing properties.
2. Respondent works within the state of Florida through partnerships, sponsorships, and collaborations and is the publisher of SANFORD VISITORS GUIDE and manages and promotes a destination called HISTORIC DOWNTOWN SANFORD.
3. Respondent submits that “(w)ith the new magazine and our tourism arm we plan on launching a new wine club under the domain name SANFORDWINECLUB.COM”.
4. Respondent submits that it has never heard of Sanford Winery.
5. Respondent also claims that it has every right to the domain name and that it was registered fairly.
1. Complainant Sanford Winery Company is a United States company that is a subsidiary of Terlato Wine Group, a four-generation family business, founded in the 1950s by Anthony Terlato to produce, distribute, import, and market fine wines.
2. Complainant has established its rights in the SANFORD mark registered with the United States Patent and Trademark Office Reg. No. 2,453,203, registered on May 22, 2001 and also registered with other trademark agencies.
3. Complainant has also established that it has common law trademark rights in SANFORD WINE CLUB and that it has held those rights well prior to the registration of the disputed domain name.
4. Respondent registered the <sanfordwineclub.com> domain name on February 1, 2023.
5. Respondent has registered the disputed domain name that is likely to generate confusion among internet users with Complainant’s SANFORD and SANFORD WINE CLUB marks and business.
6. Respondent registered and uses the <sanfordwineclub.com> domain name in bad faith. Respondent has created a likelihood of confusion with Complainant’s marks to disrupt Complainant’s business. Respondent has failed to make an active use of the disputed domain name.
7. Respondent has not established that it has made use of or demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
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.
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 rights in the SANFORD mark (e.g. Reg. No. 2,453,203, registered May 22, 2001) based upon registration with the USPTO and other trademark agencies. See Amend. Compl. Annex F. Registration of a mark with multiple trademark organizations including the USPTO is generally sufficient in demonstrating rights in the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Since Complainant has registered its mark with multiple trademark organizations including the USPTO, the Panel finds that Complainant has established that it has rights in the SANFORD mark under Policy ¶ 4(a)(i).
Complainant also submits that it has common law rights in the SANFORD name, the SANFORD WINE CLUB name, and variations thereof. Common law rights can be established through a showing of secondary meaning within the mark. 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.”). Here, Complainant submits that Complainant is extremely well-known in the wine industry and its SANFORD marks are recognized all throughout the United States and the world. Complainant also contends that it has been associated with fine wines and spirits for decades and enjoys strong nationwide rights in, and recognition of, the SANFORD name and its marks. See Amend. Compl. Annex H and I. In particular, Complainant has shown that its internet presence prominently displays a link to the SANFORD WINE CLUB and has tendered in evidence screenshots from Complainant’s official website showing use of the SANFORD WINE CLUB as well as SANFORD® marks.
The Panel accepts the Complainant’s evidence to that effect. As the Panel agrees with Complainant, it finds that Complainant has established common law rights in SANFORD and SANFORD WINE CLUB names per Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s marks. Complainant submits that Respondent’s <sanfordwineclub.com> domain name is identical or confusingly similar to Complainant’s registered and common law marks. Generally, under Policy ¶ 4(a)(i), adding descriptive words such as “wine club” to a mark along with the “.com” gTLD is insufficient to differentiate the domain name from the mark and that is so in the present case. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The disputed domain name includes the entirety of the SANFORD mark with the addition of the source identifying words “wine club” and the entirety of the SANFORD WINE CLUB mark, as well as in both cases the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s SANFORD and SANFORD WINE CLUB marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or 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”).
(a) Respondent has chosen to take Complainant’s SANFORD and SANFORD WINE CLUB marks and to use them in its domain name;
(b) Respondent registered the <sanfordwineclub.com> domain name on February 1, 2023;
(c) The disputed domain name is likely to generate confusion among internet users with Complainant’s mark and business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the <sanfordwineclub.com> domain name, nor has Complainant authorized or licensed Respondent to use its SANFORD mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. 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). 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 Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “William Henao” which does not resemble the domain name. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent is not using the <sanfordwineclub.com> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use due to the fact that, currently, there is no content on the webpage associated with the disputed domain name. Instead, the webpage displays an Internet browser error message stating “ERR_NAME_NOT_RESOLVED” with links that do not lead to any website content. Under Policy ¶¶ 4(c)(i) and (iii), failure to make active use of a disputed domain name’s resolving website does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to use the disputed domain name actively for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant presents in evidence a screenshot of the resolving webpage, which remains inactive. See Amend. Compl. Annex C. As the Panel agrees, it finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
Respondent has not on the evidence rebutted the prima facie case against it. Respondent may well have wished to create a domain name that invokes the Sanford region and its attractions and one of its objectives may well be to launch a new wine club. However, it has gone only as far as stating that this is a “plan” and there is no evidence that any actual steps have been taken to that end. It is therefore not possible to say that it has made the “demonstrable preparations” to that end that the Policy requires it to show and that it has shown this on the balance of probabilities. The Panel therefore finds that Respondent does not have a right or legitimate interest 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 submits that Respondent registered and uses the <sanfordwineclub.com> domain name in bad faith since Respondent registered the disputed domain name primarily to disrupt Complainant’s business. Specifically, it submits that Respondent is attempting to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or affiliation, or endorsement of Respondent’s website in order to mislead and divert web users trying to locate Complainant’s goods and services. Such use indicates bad faith under Policy ¶ 4(b)(iii). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). In the present case, the inference must be drawn that the effect of Respondent’s conduct is as Complainant has submitted and that this was its intention. Accordingly, as the Panel agrees, it finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent fails to use the <sanfordwineclub.com> domain name for any legitimate purpose. Failure to make an active use of a disputed domain name is evidence of bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Here, Complainant presents a screenshot of the resolving webpage, which remains inactive. See Amend. Compl. Annex C. The Panel therefore agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the SANFORD mark at the time of registering the <sanfordwineclub.com> domain name. Prior UDRP decisions have generally disregarded arguments of bad faith based on constructive notice. However, its open to a panel to find that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge can demonstrate bad faith registration under 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).”).). To support its submission to that effect, Complainant points to its numerous global trademark registrations, the fame of its marks, the long standing nature of its business and the fact that Respondent registered its domain name decades after Complainant first used the SANFORD name in commerce. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith registration under Policy ¶ 4(a)(iii) which the Panel now makes.
Fourthly, 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 SANFORD and SANFORD WINE CLUB marks and in view of the conduct that Respondent has
engaged in when using the 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 <sanfordwineclub.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: June 23, 2023
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