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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lancaster Vineyards Inc. v. Max Davidovich

Case No. D2006-1340

 

1. The Parties

The Complainant is Lancaster Vineyards Inc. of Healdsburg, California, United States of America, represented by Joel G. MacMull, Canada.

The Respondent is Max Davidovich of Kiev, Ukraine.

 

2. The Domain Name and Registrar

The disputed domain name <lancasterestate.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2006. On October 23, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 23, 2006, Register.com 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 contact. 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 the Respondent of the Complaint, and the proceedings commenced on October 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.

The Center appointed Torsten Bettinger as the sole panelist in this matter on December 13, 2006. 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

The Complainant is an American company producing and selling wine. The Complainant is the owner of the trademark No. 3131793 “LANCASTER Estate” plus Device registered with the United States Patent and Trademark Office in intl. Class 33 for “wines”. The trademark was applied for on September 23, 2005, and registered on August 22, 2006. Retail sale of wines under the LANCASTER Estate trademark began at least as early as March, 1999. The Complainant has over 2,400 restaurant and retail accounts throughout the United States and currently has sales of approximately 3,000,000 USD. Complainant has been the recipient of several national wine awards and accolades.

The disputed domain name was first registered by the Complainant on January 30, 2001, and was used for a website in relation to the sale and advertisement of its products until January 2006. The domain name was not renewed in January 2006 (accordng to Complainant, accidentally) and therefore lapsed in March 2006. The domain name was registered by the Respondent shortly after it became available for registration, namely on March 10, 2006.

The Respondent is using the domain name for a website which is virtually identical to the website previously operated by the Complainant.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is identical with Complainant’s US trademark registration No. 3131793 “LANCASTER Estate” as it fully incorporates the word element of Complainant’s trademark.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant states that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion Complainant argues that:

- the disputed domain name was registered on March 10, 2006, more than five years after the Complainant originally registered the domain name;

- the Respondent has not used or made demonstrable preparations to use the domain name in connection with any bona fide offering of goods and services;

- the Respondent’s actions are undertaken without the Complainant’s authorization;

- the Respondent is not and has never been commonly known by the domain name;

- the Complainant’s trademark is not generic or descriptive;

- the Respondent is neither and has never been an authorized reseller nor an licensee of Complainant’s products;

- the Respondent is not making a noncommercial or fair use of the domain name.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the disputed domain name was registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.

In support of this assertion the Complainant argues that the Respondent’s actions have been the subject of previous UDRP proceedings, in which decisions to transfer other domain names held by the Respondent were issued and that in light of these decisions against the Respondent, it is clear that the Respondent has engaged in a recognizable pattern of abusive domain name registrations.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided evidence of a US trademark registration consisting of the term LANCASTER Estate. The fact that the Complainant’s trademark No. 3131793 was registered after the registration of the disputed domain name is of no moment. The issue under paragraph 4(a)(i) of the Policy is whether the Complainant has rights as of the time of the Complaint. The Respondent’s lack of knowledge of the Complainant’s trademark rights at the time of the registration of the domain name may, in appropriate cases, be relevant to the second and third factors (legitimate interest and bad faith), but it is not relevant to the analysis of the first factor which looks solely at the question of whether the Complainant has trademark rights and whether the domain name is identical or confusingly similar to that mark (See Consejo de Promociуn Turнstica de Mйxico, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case No. D2004-0242; Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447).

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name <lancasterestate.com> wholly incorporates the word element of Complainant’s trademark LANCASTER Estate. It is well-established that the specific top level of a domain name such as <.com>, <.org> or <.net> does not affect the domain name for the purpose of determining whether it is identical or confusingly similar pursuant to paragraph 4(a)(i) of the Policy (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

Furthermore, it is a consensus view among many Panelists that the assumption of confusing similarity between trademark and domain name is not refuted by the fact that the Complainant’s trademark contains an additional figurative element which cannot be reproduced in a domain name (Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032; Wherehouse Entertainment, Inc. v. NetVentures, WIPO Case No. D2001-0036; Fбbricas Agrupadas de Muсecas de Onil S.A. (FAMOSA) v. Gord Palameta, WIPO Case No. D2000-1689).

The Panel thus finds that the domain name <lancasterestate.com> is identical to Complainant’s trademark LANCASTER Estate and that therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, there is a consensus view among Panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.

The domain name <lancasterestate.com> is identical with the Complainant’s trademark. The Complainant showed that the Respondent has neither a license nor any other permission to use the trademark LANCASTER Estate in which the Complainant has exclusive rights. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name <lancasterestate.com>.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Before notice to the Respondent of the dispute, there is no evidence of its use, or 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. Further, nothing in the record suggests that the Respondent trades under the domain name or the name “Lancaster Estate” or is commonly known by said domain name. Finally, there is no indication tha the R is making a legitimate non-commercial use of the disputed domain name.

The Panel therefore accepts the Complainant’s contention that the Respondent has no rights or legitimate interest in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that the Respondent has registered and has been using the domain name in bad faith for reasons including the following.

The fact that the Respondent’s trademark No. 3131793 “LANCASTER Estate” was registered after the registration of the domain name does not refute a finding of bad faith in the present circumstances.

Previous panels have recognized that unregistered or common law trade mark rights may be sufficient for the purposes of establishing bad faith pursuant to Paragraph 4(a)(iii) of the Policy (see MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).

The Complainant has provided advertising material that shows that the Complainant has used the term “LANCASTER Estate” both as a domain name and as a trademark to market the retail sale of wine before the registration of the disputed domain name, and that the Complainant’s products are recognized under this mark. As noted above, the Panel accepts that the Complainant has common law rights in the “Lancaster Estate” mark, and that the Respondent has demonstrated no rights or legitimated interests in the disputed domain name. In the absence of any contrary or rebuttal evidence from the Respondent, and having regard to the distinctive nature of the LANCASTER Estate mark and the subsequent use of the disputed domain name , the Panel considers it highly unlikely that Respondent could have been unaware of the Complainant’s business at the time of registration.

The Panel notes in this respect that Respondent registered a domain name which is identical to Complainant’s common law trademark LANCASTER Estate. It is therefore inconceivable to the Panel that the Respondent registered the domain name unaware of the Complainant’s rights in its trademark LANCASTER Estate.

This and the fact that the Respondent uses the domain name for the operation of a website which is virtually a copy of the website which was used by the Complainant leads to the conclusion that the Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, or to otherwise profit commercially from likely internet user confusion of the disputed domain name with the Complainant and it’s mark.

Furthermore, the fact that the Respondent was already held to have registered and used domain names in bad faith in two other administrative proceedings pursuant to the UDRP (See Old World Industries, Inc. v. Max Davidovich, WIPO Case No. D2006-1138 - <herculinertough.com>; Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743 - <hatmaconnector.org>) is evidence that the Respondent has engaged in a pattern of bad faith registration and use.

Accordingly, the Panel concludes that the Respondent registered and used the domain names <lancasterestate.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.

 

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 <lancasterestate.com> be transferred to the Complainant.


Torsten Bettinger
Sole Panelist

Dated: December 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1340.html

 

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