Laches in UDRP case (12)

8/8/2019 Laches in UDRP case (12)

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NATIONAL ARBITRATION FORUM

DECISION

Drown Corp. v. Premier Wine & Spirits

Claim Number: FA0512000616805

PARTIES

Complainant is Drown Corp. (Complainant), represented by John M.Rannells, ofBaker and Rannells PA, 626 North Thompson St., Raritan, NJ08869. Respondent is Premier Wine & Spirits (Respondent), represented byC.L. Gravett, III, ofGravett & Frater,1125 Jefferson Street, Napa, CA 94559.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with NetworkSolutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and tothe best of his knowledge has no known conflict in serving as Panelist in thisproceeding.

Flip Petillion as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forumelectronically on December 29, 2005; the National Arbitration Forum received ahard copy of the Complaint on January 4, 2006.On January 5, 2006, Network Solutions, Inc. confirmed by e-mail to the NationalArbitration Forum that the domain name is registered withNetwork Solutions, Inc. and that the Respondent is the current registrant of thename. Network Solutions, Inc. has verified that Respondent is bound by theNetwork Solutions, Inc. registration agreement and has thereby agreed to resolvedomain-name disputes brought by third parties in accordance with ICANNsUniform Domain Name Dispute Resolution Policy (the Policy).On January 5, 2006, a Notification of Complaint and Commencement ofAdministrative Proceeding (the Commencement Notification), setting adeadline of January 25, 2006 by which Respondent could file a Response to theComplaint, was transmitted to Respondent via e-mail, post and fax, to all entities


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and persons listed on Respondents registration as technical, administrative andbilling contacts, and to [email protected] by e-mail.A timely Response was received and determined to be complete on January 24,2006.

A timely Additional Submission from Complainant was received on January 30,2006.On January 31, 2006, pursuant to Complainants request to have the disputedecided by a single-member Panel, the National Arbitration Forum appointed FlipPetillion as Panelist.

RELIEF SOUGHT

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

PARTIES CONTENTIONS

A. ComplainantComplainant makes the following assertions:1. The domain name is confusingly similar to

Complainant's trademarks/service marks and domain names.2. Respondent has no rights or legitimate interest in the

domain name.3. Respondent has registered and used the domain name in bad faith.B. RespondentRespondent requests the Panel to deny Complainants request on the grounds thatthere is no reasonable prospect for confusion between the two names, there hasbeen no actual confusion between the two names, that Complainants request isbarred by laches, and that Respondent did not act in bad faith. In addition,respondent requested that the arbitrator award Respondent the sum of $2000 inattorney fees.

FINDINGS

1. Complainant is the owner ofthe following U.S. trademark registrations:U.S. Reg. No. 1,735,135 -- PREMIER for wines, whiskey, vodka, gin andvermouth. Registered November 24, 1992.U.S. Reg. No. 1,337,311 - PREMIER CENTER for retail food and liquor store


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services. Registered May 21, 1985.U.S. Reg. No. 1,476,311 - PREMIER CENTER (and design) for retail foodand liquor store services. Registered February 9, 1988.

U.S. Reg. No. 1,609,298 -- A PREMIER WINE BUYERRECOMMENDATION for wines. Registered August 7, 1990.U.S. Reg. No. 1,609,299 -- A PREMIER SPIRITS SELECTION for distilledalcoholic beverages, namely whiskey, gin, vodka, rum and brandy. RegisteredAugust 7, 1990.U.S. Reg. No. 1,082,056 -- PREMIER PARTY PLACE for gourmet food storeservices. Registered January 10, 1978.U.S. Reg. No. 1,484,575 -- PREMIER CENTER SMART BUYERS CARD

for check cashing services within a retail store. Registered April 12, 1988.U.S. Reg. No. 2,062,424 -- PREMIER for coffee. Registered May 20, 1997.U.S. Reg. No. 2,093,427 - PREMIER PLACE for retail store services andmail order and distributorship services, pertaining to food products, alcoholicbeverages, and gourmet kitchen products. Registered September 2, 1997.U.S. Reg. No. 2,194,469 -- PREMIER GOURMET (and design) for a widevariety of food and beverage products in Int. Cls. 29, 30, 31 and 32. RegisteredOctober 13, 1998.U.S. Reg. No. 2,199,130 - PREMIER (and design) for a wide variety of food andbeverage products in Int. Cls. 29, 30, 31 and 32. Registered October 27, 1998.U.S. Reg. No. 2,905,000 - PREMIER PICKS for wines and spirits. Registered11/23/04.2. Complainant is also the owner of the following Canadian trademarkregistrations:Reg. No. TMA448516 -- PREMIER GOURMET for wine, alcoholic spirits,and a wide variety of foods, condiments, and beverages. Registered October 6,1995.Reg. No. TMA456738 -- PREMIER CENTER for retail food and liquorstore services. Registered April 26, 1996.Reg. No. TMA473006 -- A PREMIER SPIRITS SELECTION for distilledalcoholic beverages, namely, whiskey, gin, vodka, rum, and brandy.


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Registered March 19, 1997.3. Complainant is the owner of the (registered October13, 1996), (registered September 23, 1997), and (registered August 11, 1997) domain names.

4. Complainant's website at has been actively operated andmaintained for approximately nine years and its websiteand web-store for approximately eight years. According to Complainant, thepremiergroup.net website is currently a link to .

5. Respondent was formed in 1997 to sell alcoholic beverages.

6. Respondent found the name was available and registered it in 1998.

7. Complainant, through its attorneys, sent two cease and desist notices to

Respondent (February 18, 2005 and March 24, 2005).8. In its response of April 8, 2005 to Complainant's Cease & Desist Notice,Respondent offered to sell the domain name (while it was not active) toComplainant for the sum of USD 100,000.9. Until at least August 12, 2005 the site was "Under Construction."

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute ResolutionPolicy (the Rules) instructs this Panel to decide a complaint on the basis of thestatements and documents submitted in accordance with the Policy, these Rulesand any rules and principles of law that it deems applicable.First Preliminary Issue: Laches

The Panel finds that the application of a laches defense is inappropriate under thePolicy and that the time frame within which Complainant initiated the presentproceedings is of no consequential value. See E.W. Scripps Co. v. SinologicIndus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide anydefence of laches. This accords with the basic objective of the Policy of providingan expeditious and relatively inexpensive procedure for the determination ofdisputes relating to egregious misuse of domain names.");see also Hebrew Univ.of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (Theremedy available in an Administrative Proceeding under the Policy is notequitable. Accordingly, the defence of laches has no application.).

Second Preliminary Issue: Attorney fees


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Under the Policy, the Panel has no power to award fees or costs to either party.See Broadcom Corp. v. Becker, FA 98819 (Nat. Arb. Forum Oct. 22, 2001)(holding that the Panel has no power to award fees or costs to either party).

*Paragraph 4(a) of the Policy requires that the Complainant must prove each of thefollowing three elements to obtain an order that a domain name should becancelled or transferred:(1) (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) (2) the Respondent has no rights or legitimate interests in respect of the

domain name; and(3) (3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that reference by Complainant to other domain names isirrelevant under Policy 4(a)(i).On the other hand, the Panel finds that Complainant asserts that it has establishedrights in the PREMIER mark through registration of the mark with the UnitedStates Patent and Trademark Office (USPTO) as well as through continuous useof the mark in commerce in connection with its wines and spirits. See Janus IntlHolding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisionshave held that registration of a mark isprima facie evidence of validity, whichcreates a rebuttable presumption that the mark is inherently distinctive.");see alsoVivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. ForumNov. 11, 2003) (Complainant's federal trademark registrations establishComplainant's rights in the BLIZZARD mark.).

The Panel also finds that Respondents domain name isconfusingly similar to Complainants PREMIER mark under Policy 4(a)(i), asthe domain name incorporates Complainants mark and adds the term wine,which is related to Complainants business. See Arthur Guinness Son & Co.(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (findingconfusing similarity where the domain name in dispute contains the identicalmark of the complainant combined with a generic word or term);see also SpaceImaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (findingconfusing similarity where the respondents domain name combines thecomplainants mark with a generic term that has an obvious relationship to thecomplainants business).


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Rights or Legitimate Interests

Complainant asserts that Respondent is using the domainname, which is confusingly similar to Complainants PREMIER mark, to sellcompeting wine products. The Panel finds that such competing use of a

confusingly similar domain name is neither a use in connection with a bona fideoffering of goods or services pursuant to Policy 4(c)(i) nor a legitimatenoncommercial or fair use of the domain name under Policy 4(c)(iii). SeeComputerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)(Respondents appropriation of [Complainants] SAFLOK mark to marketproducts that compete with Complainants goods does not constitute a bona fideoffering of goods and services.);see also Ultimate Elecs., Inc. v. Nichols, FA195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's use of thedomain name (and Complainants mark) to sell products in competition withComplainant demonstrates neither a bona fide offering of goods or services nor alegitimate noncommercial or fair use of the name).

Additionally, Complainant contends that Respondent failed to use the disputeddomain name in connection with any active website from October 8, 1998, thedate of Respondents initial registration, until September 2005, whenComplainant served Respondent with a cease and desist letter. The Panelinterprets Respondents long-term non-use of the domainname as evidence that Respondent lacks rights and legitimate interests in thedomain name pursuant to Policy 4(a)(ii). See Wal-Mart Stores, Inc. v.Walmarket Can., D2000-0150 (WIPO May 2, 2000) (finding that the respondenthad no rights or legitimate interests where he decided to develop the website forthe sale of wall products after receiving the complainants cease and desistnotice);see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. ForumDec. 4, 2003) (Respondent's passive holding of the domain namefor over six months is evidence that Respondent lacks rights and legitimateinterests in the domain name.).Furthermore, the Panel finds that Respondent has failed to sufficiently establishthat it is either commonly known by the disputed domain name or licensed to useComplainants PREMIER mark. Thus, the Panel concludes that Respondent hasnot established rights or legitimate interests pursuant to Policy 4(c)(ii). SeeRMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpretingPolicy 4(c)(ii) "to require a showing that one has been commonly known by thedomain name prior to registration of the domain name to prevail"); see also IanSchrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)(finding that without demonstrable evidence to support the assertion that arespondent is commonly known by a domain name, the assertion must berejected);see also Dana Corp. v. Safineh Co., FA 222043 (Nat. Arb. Forum Mar.1, 2004) (The domain name is registered, in part, to Dana Co.Because of Complainants extensive holding of international registrations of theDANA mark, including Respondants territory of Iran, the panel may infer that


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Respondant is not commonly known as Dana or Dana Co. despite the WHOISdomain name registration information pursuant to UDRP Policy 4(c)(ii).).

Moreover, the Panel interprets Respondents offer to sell the domain nameregistration for $100,000 as evidence that Respondent lacks rights and legitimate

interests in the disputed domain name pursuant to Policy 4(a)(ii). See Am. NatlRed Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)(Respondents lack of rights and legitimate interests in the domain name isfurther evidenced by Respondents attempt to sell its domain name registration toComplainant, the rightful holder of the RED CROSS mark.);see also Wal-MartStores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding therespondents conduct purporting to sell the domain name suggests it has nolegitimate use).

Registration and Use in Bad Faith

The Panel concludes that Respondent has registered the domain name with a view to using it to attract Internet users to its commercialwebsite by taking advantage of the likelihood of confusion betweenComplainants PREMIER mark and Respondents confusingly similar domainname. The Panel concludes that such use constitutes bad faith registration and useunder Policy 4(b)(iv). See Am. Online, Inc. v. Tencent Commcns Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondentregistered and used a domain name confusingly similar to the complainants markto attract users to a website sponsored by the respondent);see also State Fair ofTexas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding badfaith where the respondent registered the domain name to infringeon the complainants goodwill and attract Internet users to the respondentswebsite).

Additionally, the Panel concludes that Respondents offer to sell the disputeddomain name registration to Complainant for $100,000 is evidence thatRespondent used the domain name in bad faith pursuant to Policy 4(b)(i). SeeWorld Wrestling Fedn Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)(finding that the respondent used the domain name in bad faith because he offeredto sell the domain name for valuable consideration in excess of any out-of-pocketcosts);see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. ForumNov. 5, 2003) (Respondent registered the disputed domain name and offered tosell it to Complainant for $10,600. This demonstrates bad faith registration anduse pursuant to Policy 4(b)(i).).

Moreover, the Panel concludes that Respondents registration of the domain name with both actual and constructive knowledgeof Complainants rights in the PREMIER mark is evidence of bad faith underPolicy 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb.Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or


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constructive knowledge of a commonly known mark at the time of registration);see also Victorias Cyber Secret Ltd. v. V Secret Catalogue, Inc. , 161 F.Supp.2d1339, 1349 (S.D.Fla. 2001) (noting that a Principal Register registration [of atrademark or service mark] is constructive notice of a claim of ownership so as toeliminate any defense of good faith adoption pursuant to 15 U.S.C. 1072).

DECISION

Having established all three elements required under the ICANN Policy, the Panelconcludes that relief shall be GRANTED.Accordingly, it is Ordered that the domain name beTRANSFERRED from Respondent to Complainant.

Flip Petillion, PanelistDated: February 13, 2006

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Laches in UDRP case (12)