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The Winetasting Network v. 1-800wineshop [2005] GENDND 1620 (16 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Winetasting Network v. 1-800wineshop

Case No. D2005-0731

1. The Parties

The Complainant is The Winetasting Network, Napa, California, United States of America, represented by the law firm Kilpatrick Stockton, LLP, of the United States of America.

The Respondent is 1-800wineshop, Herndon, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <winetastingnetwork.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2005. On July 12, 2005, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On July 13, 2005, Network Solutions, LLC, transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center subsequently verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 10, 2005. On August 2, 2005, pursuant to a request made by the Respondent’s CEO in an email dated July 28, 2005, the Center granted an extension for the Response until August 17, 2005. In that same email, the Respondent indicated that it would obtain legal counsel and defend the proceeding. Notwithstanding the granting of the extension, however, the Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 22, 2005.

The Center appointed D. Brian King as the Sole Panelist in this matter on September 2, 2005. The Panel finds that it was properly constituted. The Sole Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint. Considering the evidence submitted by the Complainant and the reasonable inferences to be drawn therefrom, the Panel finds the following facts to have been established.

The Complainant, The Winetasting Network, is a company engaged in the retail wine business. Among other activities, the Complainant ships wine directly to consumers, who place their orders directly with the Complainant via the Internet or otherwise. The Complainant first used the mark WINETASTING NETWORK in commerce during 2001. In March 2002, it applied to have that name registered as a trademark, and registration was granted by the U.S. Patent and Trademark Office on March 16, 2004.

The Complainant’s initial foray into internet-based marketing was apparently selling wine on Ebay.com, using its WINETASTING NETWORK mark. Currently, the Complainant uses the mark to provide online retail services, consisting of wine and related products, through its website, “www.winetasting.com”.

The Respondent, 1-800wineshop, is a company that offers wine for sale and delivery, and is thus a competitor of the Complainant. On March 22, 2004, the Respondent registered the disputed domain name <winetastingnetwork.com>. As of July 2005, this domain name directed the user to the Respondent’s website ”www.1800wineshop.com”. The Complainant’s attorney sent a cease and desist letter to the Respondent on December 1, 2004, as well as a reminder on December 22, 2004. The Respondent never answered either letter.

5. Parties’ Contentions

A. Complainant

According to the Complainant, it and its predecessor have provided online retail services using the WINETASTING NETWORK mark since at least November 2001, either through Ebay.com, or through the Complainant’s website located at ”www.winetasting.com”.

The Complainant states that it has been promoting its distribution services under the name and mark WINETASTING NETWORK to wineries, that it provides distribution services to over 100 of “California’s leading wineries,” and that it has invested substantially in promoting the reliability of services provided under, and identified by, the WINETASTING NETWORK mark. Documentary evidence supporting these assertions has been provided by the Complainant. On this basis, the Complainant asserts that consumers and businesses in the wine trade have come to associate services that are offered under the WINETASTING NETWORK name or mark with the Complainant.

The Complainant asserts that Respondent’s domain name is identical or confusingly similar to trademarks in which the Complainant holds rights, as the disputed domain name is effectively identical to the Complainant’s mark, the only difference being the non-distinctive “.com” top level domain.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent’s use of the domain name could not have been bona fide because of the Respondent’s knowledge of the Complainant’s prior rights in the WINETASTING NETWORK mark. The Complainant notes that its first use of this mark predates by four years the Respondent’s registration of the disputed domain name. It further alleges that the Respondent should be charged with constructive knowledge of its rights, since the Complainant’s trademark was registered by the U.S. Patent and Trademark Office prior to the time that the Respondent registered the <winetastingnetwork.com> domain name. In addition, the Complainant alleges that the Respondent is not and has not been known by the name “winetastingnetwork.com”; indeed, according to the Complainant, the Respondent has made no use of this name other than registering it as a domain name in March 2004.

Finally, the Complainant asserts that the domain name was registered and is being used in bad faith. According to the Complainant, the Respondent is one of its competitors in the very small industry of online wine sales, in which all participants know of each other. It states that the two parties had formerly been the only parties involved in offering wine on Ebay; that the Complainant’s principal had a conversation with the Respondent’s principal in which each other’s businesses were acknowledged; and that the Complainant is one of the most active and visible actors in a small group engaged in offering wine online and advocating the removal of barriers to the interstate delivery of wine. The Complainant concludes that the Respondent registered the domain name to prevent the Complainant from using it and to divert those trying to find the Complainant’s online location to the Respondent’s website for commercial gain. Consumers are unlikely to realize that they have not reached the Complainant’s site, but rather that of one of its competitors, because the Respondent’s site offers the very services the consumers were seeking in a format similar to that used by the Complainant on its website. The Complainant supports this argument by stating that it has learned that the Respondent’s use of the disputed domain name has caused actual confusion, although it offers no details or evidence in this regard.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The Respondent has registered and is using the disputed domain name in bad faith.

The Complainant bears the burden of proof on each of these elements. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 23, 2000). The Panel may draw such inferences from the Respondent’s default as it considers appropriate (paragraph 14(b) of the Rules). The Panel shall, however, draw only those inferences from the Respondent’s default that have been established or can fairly be inferred from the facts presented by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (August 22, 2003).

A. Identical or Confusingly Similar

The Panel finds without difficulty that the Complainant has protected rights in the mark WINETASTING NETWORK, as evidenced by its use of the mark in commerce for an extended period and its registration of the same as a trademark with the relevant authorities in the United States.

The disputed domain name differs from the Complainant’s trademark in only two ways: the space between “winetasting” and “network” is omitted; and “.com” is added. These changes are, however, non-distinctive and do not eliminate the effective identity of the disputed domain name with the Complainant’s trademark. The Panel therefore finds the first element of paragraph 4(a) of the Policy to be established.

B. Rights or Legitimate Interests

Although the burden of proving the elements contained in Paragraph 4(a) of the Policy lies with the Complainant – including in respect of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Previous panels have recognized that it would be unfair and impractical to demand stringent proof of a negative, particularly where the relevant evidence is likely to be in the possession of the Respondent. Accordingly, a prima facie showing by the Complainant is sufficient, unless the Respondent comes forward with evidence affirmatively showing a right or legitimate interest in the disputed domain name. See H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO Case No. D2004-0174 (June 7, 2004); Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003).

Paragraph 4(c) of the Policy lists three circumstances that, if found by the Panel to be established, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The Complainant asserts, and the Panel finds, that neither these nor other circumstances showing rights or legitimate interests are present here.

First, the Complainant asserts that the Respondent has not used the domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). The Complainant argues that prior to registration the Respondent had constructive knowledge of Complainant’s rights in the mark WINETASTING NETWORK because of the Complainant’s trademark registration; and that the Respondent, indeed, had actual knowledge as well due to its prior course of dealings with the Complainant in the “small world” of online wine sales. Accordingly, the Complainant argues, while the Respondent is indeed using the disputed domain name to offer goods and services, such use is not bona fide in the circumstances here.

The Panel is sufficiently persuaded on this point. The Respondent indeed had constructive and quite probably actual knowledge of the Complainant’s rights in the mark WINETASTING NETWORK before registering and starting to use the disputed domain name, which fully incorporates this mark, to offer competing goods and services. As such, the Respondent’s use of the disputed domain name, albeit for commercial purposes, is not bona fide within the meaning of paragraph 4(c)(i) of the Policy. See Reed Elsevier Properties, Inc. et al v. Weekly Publishers, NAF Case No. 151536 (May 5, 2003); see also Reed Elsevier, Inc. et. al v. Ulexis a/k/a Law firm, NAF Case No. 97684 (August 31, 2001).

In addition, the Panel finds it probable that the Respondent was never commonly known by the disputed domain name within the meaning of paragraph (4)(c)(ii) of the Policy, given that the contact details in the WHOIS Database make no mention of any name similar to the Complainant’s mark; nor does the Respondent’s web page do so. Finally, the Respondent has been using the domain name for commercial purposes, thereby excluding any claim of a legitimate noncommercial or fair use of the domain name under paragraph (4)(c)(iii) of the Policy.

Because the Complainant has made sufficient (and at least prima facie) showings on all three elements under paragraph 4(c) and the Respondent has failed to rebut the Complainant’s arguments on these points – or to bring forward any other argument that could establish a legitimate right or interest in the disputed domain name – the Panel finds the second element of the Complainant’s case to be established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four non-exclusive indicia of bad faith use and registration. Complainant relies solely on the fourth, that being that: “using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service on Respondent’s web site.”

The Panel finds the cited circumstance to be present here. The Respondent is obviously using the domain name to attract consumers to its own website for commercial gain. The question thus becomes whether it is doing so by intentionally creating a likelihood of confusion with the Complainant’s mark – i.e., whether it is attempting to trade on the Complainant’s goodwill. Here, the evidence shows that the Respondent was on notice of the Complainant’s rights in the mark WINETASTING NETWORK before registering the disputed domain name. Further, it has used the disputed domain name to link to its own website, on which competing goods and services are offered in a format and with a color scheme very similar to the Complainant’s website. In these circumstances, a legitimate inference of bad faith registration and use arises. The Respondent might conceivably have been able to rebut this inference, but instead it chose not to respond at all.

Apart from paragraph 4(b)(iv) of the Policy, the Panel feels it appropriate to note the Respondent’s conduct in this proceeding. After receiving the Complaint, the Respondent contacted the Center and requested a 90-day extension of the deadline to file a Response. Several e-mails among the parties and the Center ensued, with the Respondent repeatedly pressing for an extension on the ground that it wished to retain counsel and defend the proceeding. Eventually, the Center granted a one-week extension on the basis of the fact that the Respondent had received the hard copy of the Complaint one week late because its address in the WHOIS database was apparently incorrect. The extended deadline came and went with no Response. A Notification of Default was sent, and again the Respondent said nothing. Indeed, the Respondent has not been heard from since its request for an extension was resolved.

The mere fact that a Respondent defaults does not necessarily imply bad faith, but in the circumstances here the inference of bad faith registration and use is supported by the Respondent’s post-Complaint conduct. When the Respondent requested the extension, the reason it gave was so that it could engage a lawyer. However, the Complainant’s demand letter had been sent to the Respondent more than half a year earlier, followed by another letter to which the Respondent did not reply. The demand letter laid out in some detail the Complainant’s claims under the United States Lanham Act and Anticybersquatting Consumer Protection Act, the latter of which has elements that are very similar to those under the Policy. The demand letter suggested that the Respondent consult a trademark attorney about these claims. Given this background, the Respondent’s statement – nearly eight months later – that it needed time to engage a lawyer is not credible. Any plausibility that the statement might have had disappeared when the Respondent failed to file a Response or communicate with the Center at that time or after the Notification of Default was served. If the Respondent sincerely believed it had legitimate grounds to contest the Complainant’s allegations, as its request for an extension implied, then surely it would have communicated in some fashion as these events passed, even if for some reason it had been unable to find a lawyer after weeks (or months) of trying.

The Policy requires bad faith in the registration and use of the disputed domain name, of course, and not bad faith in the conduct of these administrative proceedings. But the Panel finds that the foregoing course of conduct supports its finding above of bad faith registration and use. Starting with its failure to reply to the demand letter, the Respondent has apparently adopted a strategy of delaying the Complainant’s efforts to resolve the dispute. It did so without, it appears, having any theory as to why the Complainant’s demand was unfounded; if it did have such a theory, it would presumably have set it forth in a Response. Thus, without identifying any basis on which it was entitled to continue using the disputed domain name, the Respondent appears simply to have attempted to delay the inevitable as long as possible. That, in the Panel’s view, suggests the Respondent’s awareness of the Complainant’s superior right to the disputed domain name. This, in turn, inferentially supports the Panel’s finding of registration and use in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <winetastingnetwork.com> be transferred to the Complainant.

D. Brian King
Sole Panelist

Dated: September 16, 2005