Drown Corp. v. Premier Wine & Spirits
Claim Number: FA0512000616805
Complainant is Drown Corp. (“Complainant”), represented by John M. Rannells, of Baker and Rannells PA, 626 North Thompson St., Raritan, NJ 08869. Respondent is Premier Wine & Spirits (“Respondent”), represented by C.L. Gravett, III, of Gravett & Frater, 1125 Jefferson Street, Napa, CA 94559.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premierwine.com>, registered with Network Solutions, 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 4, 2006.
On January 5, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <premierwine.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 25, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 24, 2006.
A timely Additional Submission from Complainant was received on January 30, 2006.
On January 31, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The <premierwine.com> domain name is confusingly similar to Complainant's trademarks/service marks and domain names.
2. Respondent has no rights or legitimate interest in the <premierwine.com> domain name.
3. Respondent has registered and used the domain name in bad faith.
Respondent requests the Panel to deny Complainant’s request on the grounds that there is no reasonable prospect for confusion between the two names, there has been no actual confusion between the two names, that Complainant’s request is barred by laches, and that Respondent did not act in bad faith. In addition, respondent requested that the arbitrator award Respondent the sum of $2000 in attorney fees.
1. Complainant is the owner of the following U.S. trademark registrations:
U.S. Reg. No. 1,735,135 -- PREMIER for wines, whiskey, vodka, gin and vermouth. Registered November 24, 1992.
U.S. Reg. No. 1,337,311 - PREMIER CENTER for retail food and liquor store services. Registered May 21, 1985.
U.S. Reg. No. 1,476,311 - PREMIER CENTER (and design) for retail food and liquor store services. Registered February 9, 1988.
U.S. Reg. No. 1,609,298 -- A PREMIER WINE BUYER RECOMMENDATION for wines. Registered August 7, 1990.
U.S. Reg. No. 1,609,299 -- A PREMIER SPIRITS SELECTION for distilled alcoholic beverages, namely whiskey, gin, vodka, rum and brandy. Registered August 7, 1990.
U.S. Reg. No. 1,082,056 -- PREMIER PARTY PLACE for gourmet food store services. Registered January 10, 1978.
U.S. Reg. No. 1,484,575 -- PREMIER CENTER SMART BUYERS CARD for check cashing services within a retail store. Registered April 12, 1988.
U.S. Reg. No. 2,062,424 -- PREMIER for coffee. Registered May 20, 1997.
U.S. Reg. No. 2,093,427 - PREMIER PLACE for retail store services and mail order and distributorship services, pertaining to food products, alcoholic beverages, and gourmet kitchen products. Registered September 2, 1997.
U.S. Reg. No. 2,194,469 -- PREMIER GOURMET (and design) for a wide variety of food and beverage products in Int. Cls. 29, 30, 31 and 32. Registered October 13, 1998.
U.S. Reg. No. 2,199,130 - PREMIER (and design) for a wide variety of food and beverage products in Int. Cls. 29, 30, 31 and 32. Registered October 27, 1998.
U.S. Reg. No. 2,905,000 - PREMIER PICKS for wines and spirits. Registered 11/23/04.
2. Complainant is also the owner of the following Canadian trademark registrations:
Reg. No. TMA448516 -- PREMIER GOURMET for wine, alcoholic spirits, and a wide variety of foods, condiments, and beverages. Registered October 6, 1995.
Reg. No. TMA456738 -- PREMIER CENTER for retail food and liquor store services. Registered April 26, 1996.
Reg. No. TMA473006 -- A PREMIER SPIRITS SELECTION for distilled alcoholic beverages, namely, whiskey, gin, vodka, rum, and brandy. Registered March 19, 1997.
3. Complainant is the owner of the <premierwines.com> (registered October 13, 1996), <premiergourmet.com> (registered September 23, 1997), and <premiergroup.net> (registered August 11, 1997) domain names.
4. Complainant's website at <premierwines.com> has been actively operated and maintained for approximately nine years and its <premiergourmet.com> website and web-store for approximately eight years. According to Complainant, the premiergroup.net website is currently a link to <premierwines.com>.
5. Respondent was formed in 1997 to sell alcoholic beverages.
6. Respondent found the name was available and registered it in 1998.
7. Complainant, through its attorneys, sent two cease and desist notices to Respondent (February 18, 2005 and March 24, 2005).
8. In its response of April 8, 2005 to Complainant's Cease & Desist Notice, Respondent offered to sell the domain name (while it was not active) to Complainant for the sum of USD 100,000.
9. Until at least August 12, 2005 the site was "Under Construction."
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
First Preliminary Issue: Laches
The Panel finds that the application of a laches defense is inappropriate under the Policy and that the time frame within which Complainant initiated the present proceedings is of no consequential value. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”).
Second Preliminary Issue: Attorney fees
Under the Policy, the Panel has no power to award fees or costs to either party. See Broadcom Corp. v. Becker, FA 98819 (Nat. Arb. Forum Oct. 22, 2001) (holding that the Panel has no power to award fees or costs to either party).
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Panel finds that reference by Complainant to other domain names is irrelevant under Policy ¶ 4(a)(i).
On the other hand, the Panel finds that Complainant asserts that it has established rights in the PREMIER mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as through continuous use of the mark in commerce in connection with its wines and spirits. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel also finds that Respondent’s <premierwine.com> domain name is confusingly similar to Complainant’s PREMIER mark under Policy ¶ 4(a)(i), as the domain name incorporates Complainant’s mark and adds the term “wine,” which is related to Complainant’s business. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Complainant asserts that Respondent is using the <premierwine.com> domain name, which is confusingly similar to Complainant’s PREMIER mark, to sell competing wine products. The Panel finds that such competing use of a confusingly similar domain name is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Additionally, Complainant contends that Respondent failed to use the disputed domain name in connection with any active website from October 8, 1998, the date of Respondent’s initial registration, until September 2005, when Complainant served Respondent with a cease and desist letter. The Panel interprets Respondent’s long-term non-use of the <premierwine.com> domain name as evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Walmarket Can., D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
Furthermore, the Panel finds that Respondent has failed to sufficiently establish that it is either commonly known by the disputed domain name or licensed to use Complainant’s PREMIER mark. Thus, the Panel concludes that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Dana Corp. v. Safineh Co., FA 222043 (Nat. Arb. Forum Mar. 1, 2004) (“The <dana-co.org> domain name is registered, in part, to ‘Dana Co.’ Because of Complainant’s extensive holding of international registrations of the DANA mark, including Respondant’s territory of Iran, the panel may infer that Respondant is not commonly known as ‘Dana’ or ‘Dana Co.’ despite the WHOIS domain name registration information pursuant to UDRP Policy ¶ 4(c)(ii).”).
Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel concludes that Respondent has registered the <premierwine.com> domain name with a view to using it to attract Internet users to its commercial website by taking advantage of the likelihood of confusion between Complainant’s PREMIER mark and Respondent’s confusingly similar domain name. The Panel concludes that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Additionally, the Panel concludes that Respondent’s offer to sell the disputed domain name registration to Complainant for $100,000 is evidence that Respondent used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Moreover, the Panel concludes that Respondent’s registration of the <premierwine.com> domain name with both actual and constructive knowledge of Complainant’s rights in the PREMIER mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premierwine.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: February 13, 2006
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