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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
D.C.C. Wine Exchange Inc. v. Giumarra Farms Inc.
Claim Number: FA0006000095065
PARTIES
The Complainant is D.C.C. Wine Exchange, Inc., Avon, CT, USA ("Complainant"). The Respondent is Giumarra Farms Inc., Bakersfield, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "WINESDIRECT.COM", registered with Network Solutions Inc. ("NSI").
PANELIST
The Panelist James P. Buchele, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as an Arbitrator in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/26/2000; The Forum received a hard copy of the Complaint on 06/26/2000.
On 06/28, NSI confirmed by e-mail to The Forum that the domain name "WINESDIRECT.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On 06/26/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by email.
On August 11, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed James P. Buchele as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
A. Complainant
The Complainant is a Connecticut corporation and is publisher of a bi-monthly consumer report called "Wines Direct" with a circulation of 12,000. Complainant owns a registered trademark for "WINES DIRECT" first issued by the U.S. Patent and Trademark Office in 1986 for "publications, namely a newsletter pertaining to wine".
In November 1999 Complainant attempted to register "Wines Direct" as an Internet site and learned that Respondent had registered the site on May 22, 1996. It is Complainants position that the domain name infringes, as it is identical to its trademark; that Respondent has no legitimate rights or interest in the name "winesdirect.com" and that Respondent registered the name in bad faith.
B. Respondent
The Respondent is a corporation owned by the Giumarra family from Edison, California. They have been engaged in growing grapes, making and marketing wine since the 1940ís. Respondent claims that in 1996 Giumarra considered re-entering the retail wine business and developed an extensive marketing plan for direct sales to consumers that they named "Wines Direct". The marketing plan included developing a web site that they registered as "winesdirect.com". It is Respondents position that directly marketing wines to consumers does not infringe upon Complainants trademark which is for publishing a newsletter about wine; that they have a legitimate interest in the domain name and even though they have not developed the website; they have developed a plan which shows "demonstrable preparations" for use of the domain name and that they did not acquire or use the name in bad faith.
FINDINGS AND CONCLUSIONS
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.
Identical and/or Confusingly Similar
There is no dispute that the domain name "winesdirect.com" is identical to the Complainants trademark Wines Direct. Of course, the presence of the domain ".com" in the domain name is of no consequence in this case. The same applies to the fact that the domain name is displayed without a space between the words and in lower-case letters as opposed to the trademark that is displayed in upper-case letters as two words. The identity test of paragraph 4(a)(i) of the ICANN policy has been satisfied. Since the complainant must, under paragraph 4(a)(i), prove only that the domain name and trademark are identical or confusingly similar, the issue of confusing similarity need not be addressed.
Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN policy raises the issue whether the respondent has any rights or legitimate interests in respect of the domain name. Paragraph 4(c) sets out three examples of circumstances that demonstrate the existence of such rights or legitimate interests of the respondent in the domainís name. These examples are not exhaustive of the situations that, if proven, shall demonstrate a Respondentís rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). The Complainant carries the burden to prove that Respondent has no rights or legitimate interests.
The first example found at paragraph 4(c) (i) appears to be close to the present case. It contemplates the fact that a Respondent, before any notice to him of the dispute, has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
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In the present case, the evidence supports the finding that, over three years before any notice of Complainantís interest in the web site "winesdirect.com" to Respondent, Giumarra had demonstrably prepared to use the domain name "winesdirect.com" in connection with a bona fide offering of goods or services. Respondent is well established in the wine business and presents credible documentation that obtaining the domain name was a part of a legitimate business plan. These facts distinguish this case from the cyber squatting cases cited by Complainant. One could argue that, from May 1996 until notice of the dispute in early 2000, the preparation time to actually begin use of the domain name is too long to maintain a legitimate interest. This fact in itself is not sufficient to defeat Respondents rights or legitimate interests in the domain name. The issue of rights to and legitimate interests in the domain name must be determined, as it existed before any notice to the Respondent of the dispute. That time frame is the time from when the Respondent registered the domain name in May 1996 and when the Complainant notified Respondent of its position that use of the domain name "winesdirect.com" infringed on its trademark. The Complainant has adduced no evidence to contradict that Respondent registered the domain name as a part of a direct sales marketing plan and that plans to begin use were deferred for legitimate business reasons. The Respondent having demonstrated its rights to and legitimate interests in the contested domain name and the Complainant has failed to discharge its burden to prove the second essential element of the complaint. Bad Faith Registration and Use Since the Complainant has failed to prove the second essential element of the complaint, the issue of bad faith registration and use need not be specifically addressed. Nevertheless, I find it expedient to summarily dispose of that issue as well. Paragraph 4(a)(iii) raises the issue whether the domain name has been registered and is being used in bad faith. Paragraph 4(b) supplies a non-exhaustive list of four examples of situations that, if any of them is found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith. None of these four enumerated factors are present in this case, but Complainant contends that Respondents bad faith is demonstrated by its lack of use and because it renewed its registration after being notified of Complainants claim. The lack of use argument was addressed above and for the same reasons stated, does not constitute bad faith. Respondents renewal was not a "race to register" a domain name to gain advantage in this proceeding. The renewal only maintained the status quo, which Respondent is entitled to do rather than relinquish its position to Complainant. Renewal is not evidence of bad faith. Finally, Complainant states that Respondents proposed use infringes upon Complainants trademark. The rule prohibiting infringement would be applicable if the goods and services are similar to those covered by the trademark. Here, Complainants mark is for "publications, namely a newsletter pertaining to wine". "Wines Direct" is a publication of The Wine Exchange, Inc which is an affiliate of an international organization that analyzes, tastes and produces market research on high quality wines. The newsletter provides in depth articles on the various aspects of wine making and marketing of high quality wines. Its focus is to provide information about high quality wines to the wine industry and sophisticated consumers. On the other hand, Respondents business plan is a direct marketing of wine to average consumers. The plan does not include providing comparable information to consumers and focuses upon a broader market than Complainants publication. Respondentís use is dissimilar from the Complainants trademark. DECISION For the reasons set forth above, the it is my decision that Complainant has proved only one of the three elements set forth in paragraph 4(a) of the ICANN policy, and therefore the relief sought by Complainant should be DENIED.
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Judge James P. Buchele (Ret.) August 28, 2000 Arbitrator |
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URL: http://www.worldlii.org/int/other/GENDND/2000/974.html