Complainant is Sanford Winery Company, Buelton, California, United States of America (“Complainant”) represented by McDermott Will & Emery LLP, United States of America.
Respondent is Matt Geiser, Las Vegas, Nevada, United States of America (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <sanfordwinery.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. On February 12, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On the same date, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an electronic copy of the Complaint on February 20, 2008. The Center 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 Respondent of the Complaint, and the proceedings commenced on February 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 19, 2008. The Panel finds that it was properly constituted. The Panel 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
Complainant is the owner of the registered mark SANFORD, issued by the United States Patent and Trademark Office on May 22, 2001, for use in conjunction with wine, and showing a first use in commerce on January 1, 1981. Complaint, Annex 3. Complainant requested that Respondent register the domain name <sanfordwinery.com> on its behalf and in Complainant’s name. On December 14, 2001, Respondent registered the domain name at issue in Respondent’s name. Complaint, Annex 1. Complainant made repeated requests that Respondent change the registration to reflect Complainant as the actual registrant. Complaint, Annex 4. Respondent did not respond to these requests.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is identical or confusingly similar to Complainant’s SANFORD mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:
1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
2) that Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s mark to which the descriptive term “winery” is appended and the gTLD suffix .com. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. Nokiagirls.comaka IBCC, WIPO Case No. D2000-0102 (nokiagirls.com); Eauto L.L.C. v. Net Me Up,
WIPO Case No. D2000-0104 (eautomotive.com). The panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the present case Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
According to the allegations of the Complaint, which are supported by emails to Respondent making similar assertions which Respondent has never contradicted (Complaint, Annex 4), Respondent was acting as Complainant’s agent in the registration of the domain name at issue and was to have registered the domain name in Complainant’s name. Respondent in fact registered the domain name at issue in his own name and has refused numerous requests to transfer the domain name to Complainant. This has long been held to be registration in bad faith. NIKE, Inc. v. Granger & Associates,
WIPO Case No. D2000-0108.
The disputed domain name is currently being used to post Complainant’s web page, this being the apparent intention at the time of its initial registration. Accordingly, it is true that there are no allegations of bad faith use as such in the Complaint. However, in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 it was established that respondent’s “inaction” can in certain circumstances constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,
WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang,
WIPO Case No. D2000-0055; Compaq Computer Corporation. v. Boris Beric,
WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd,
WIPO Case No. D2000-0086; Sanrio Company. Ltd. and Sanrio, Inc. v. Neric Lau,
WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com,
WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,
WIPO Case No. D2000-0090; Stralfors AB v. P D S AB,
WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer,
WIPO Case No. D2000-0075.
Telstra established that whether respondent’s “inaction” (or passive holding of the domain name) could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In the present case, Respondent registered the domain name at issue under an agreement to register the domain name on behalf of Complainant and in Complainant’s name. This conclusion is supported by the current use of the domain name to post Complainant’s website. Despite numerous requests from Complainant, Respondent has refused to transfer the registration of the domain name at issue to Complainant. Respondent failed to respond to the allegations of the Complaint. Under these circumstances, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of the third element of the Policy.
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 <sanfordwinery.com>, be transferred to Complainant.
M. Scott Donahey Sole Panelist
Dated: March 31, 2008
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