DECISION

Silver Oak Wine Cellars L.P. v. Domains a/k/a Best Domains

Claim Number:  FA0301000143678

PARTIES

Complainant is Silver Oak Wine Cellars L.P., Oakville, CA, USA (“Complainant”) represented by Bonnie J. Barnish, of Owen Wickersham & Erickson. Respondent is Domains a/k/a Best Domains, Bronx, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <silveroakwinery.com>, registered with Enom, Inc.

PANEL

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 Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 27, 2003; the Forum received a hard copy of the Complaint on January 30, 2003.

On January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <silveroakwinery.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 24, 2003 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 postmaster@silveroakwinery.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 3, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <silveroakwinery.com> domain name is confusingly similar to Complainant’s SILVER OAK mark.

2. Respondent does not have any rights or legitimate interests in the <silveroakwinery.com> domain name.

3. Respondent registered and used the <silveroakwinery.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for SILVER OAK (Reg. No. 1,221,150, registered December 21, 1982) related to Complainant’s wine. Complainant also holds international trademark registrations related to wine, spirits and liquors.  Complainant manages a website at <silveroak.com> that provides information and updates with regards to Complainant’s winemaking operation.

Respondent registered the disputed domain name on April 3, 2002. Respondent is using the <silveroakwinery.com> domain name to redirect Internet traffic to <abortionismurder.org>, which features graphic pictures of allegedly aborted fetuses. Complainant’s submission also reveals that Respondent has exhibited a pattern of registering infringing domain names that redirect users to the <abortionismurder.org> website. Complainant claims that none of Respondent’s challenged registrations of domain names have been found to be legitimate.

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the SILVER OAK mark through registration with the USPTO.

Respondent’s <silveroakwinery.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the entire mark and simply adds the descriptive term “winery” and the top-level domain name “.com.”  The addition of the term “winery” does not prevent Complainant’s trademark from remaining the dominant feature of the disputed domain name. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Moreover, the addition of a top-level domain adds no distinct characteristics because top-level domains are a requirement for every domain name on the Internet. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Therefore, the Panel finds that the Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response in this proceeding.  Thus, the Panel may accept Complainant’s reasonable allegations and inferences as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, the Panel may presume that Respondent lacks any rights or legitimate interests in the disputed domain name because of Respondent’s failure to respond. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the <silveroakwinery.com> domain name to redirect Internet traffic to <abortionismurder.org>, a website that features pictures of allegedly aborted fetuses.  Capitalizing on Complainant’s mark to divert Internet users seeking Complainant’s website to content unrelated to Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent has not come forward with any evidence to establish that it is commonly known by SILVER OAK WINERY or <silveroakwinery.com>.  Thus, Respondent has failed to establish that it has any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

Therefore, the Panel finds that the Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

When Complainant became aware of the website at the disputed domain name, it telephoned the phone number listed on the Whois database.  The person who answered the phone offered to sell the domain name for $549 and instructed Complainant to visit <jimfox.com> to process the sale.  Registration of a domain name primarily for the purpose of selling it to the owner of the trademark is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").

Furthermore, Respondent has made a practice of registering domain names that signify the trademarks of others.  Engaging in a pattern of the registration of domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

Therefore, the Panel finds that the Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <silveroakwinery.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 10, 2003

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