WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

By The Glass, LLC v. Dlvpmnt Marketing, Inc.

Case No. D2013-1958

1. The Parties

The Complainant is By The Glass, LLC of Venice, California, United States of America, represented by Lowry Blixseth LLP, United States of America.

The Respondent is Dlvpmnt Marketing, Inc. of Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <govino.com> is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On November 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a further request from the Panel, the Registrar confirmed on January 14, 2014, that the disputed domain name was registered by the Respondent on August 23, 2012.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2013.

The Center appointed James A. Barker as the sole panelist in this matter on December 27, 2013. 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 the owner of various registered marks for GOVINO. Among others, the Complainant’s registrations include marks registered on the principal register of the United States Patent and Trademark Office (USPTO) for use with “wine, wine sold in a flexible pouch, wine sold in a flexible pouch with a disposable wine glass, and wine sold in a single serving size.” This trademark was registered on the principal register of the USPTO on November 29, 2011 under registration no. 4,063,605. The Complainant also owns a registered mark on the principal register for use with “drinking vessels”, registered on March 10, 2009 under registration no. 3,586,708. According to the provided evidence, the latter is the earliest trademark registration registered by the Complainant.

The Complainant is also the owner of the domain name <govinowine.com>, which was registered on November 26, 2007.

The disputed domain name was registered by the Respondent on August 23, 2012. When the Complaint was notified on November 25, 2013, the disputed domain name reverted to a “parking” website, which contained a miscellany of links, including a number of links relating to wine glasses, such as “Plastic Wine Glasses”, “Go Vino” and “Plastic Wine Glasses”. This is much the same as the Complainant’s evidence of the website, as it was on October 18, 2013.

5. Parties’ Contentions

A. Complainant

According to evidence in the Complaint, the disputed domain name was originally registered to “Walter Schramm” on November 2, 1998, but that registration expired on November 1, 2005. Based on information at “hosterstats.com”, the Complainant alleges that, sometime in December 2005, an unknown entity appears to have registered the disputed domain name, and then transferred it to “pendingrenewaldeletion.com”. The disputed domain name was subsequently transferred to three other hosting companies between 2006 and 2011, possibly due to changes in ownership. The last “archive.org” snapshot of the website at the disputed domain name on May 11, 2008 displays the word “banned” in several different languages across the top. Also from the “archive.org” website, the Complainant provided evidence of the website at the disputed domain name in 2012 which displayed links to a miscellany of links, including links titled “Government”, “Employment”, “Government Grants”, and “Education” among others.

The Complainant claims that the disputed domain name is identical, and at a minimum confusingly similar, to the disputed domain name, with respect to sight, sound and overall commercial impression.

The Respondent has endeavored to create a likelihood of confusion by posting links to products identical to drinking vessels, which are products in relation to which the Complainant’s marks are registered. The Complainant provides an example of the Respondent’s website as at October 18, 2013, which prominently displayed links with the following titles:

- Plastic Wine Glasses;

- Go Vino;

- Plastic Glasses;

- Cheap Plastic Wine Glasses;

- Acrylic Tumblers;

- Plastic Wine Glasses Wholesale;

- Wine Glasses Gifts;

- Wine Glasses in Bulk;

- Wine Glasses on Sale;

- Plastic Glassware Wholesale;

- Wholesale Beer Glasses; and

- Custom Painted Wine Glasses.

The Respondent’s website provides hundreds of links to products that compete with the Complainant’s. This evidence further supports a finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has none of the rights or legitimate interests addressed in paragraph 4(c) of the Policy.

Rather, the Respondent is using the disputed domain name for commercial gain by misleadingly diverting consumers to <govino.com> and away from the Complainant’s Govino drinking glasses. This naturally dilutes the Complainant’s valuable world-wide trademark rights and goodwill. The Respondent owns no

protectable trademark rights in the disputed domain name. The Complainant draws the Panel’s attention to the fact that at no point since the disputed domain name was first re-registered in December 2005 has it been used in connection with any bona fide offering of goods or services, much less those with respect to the Complainant’s registered goods. Instead the disputed domain name has merely been parked to generate revenue through “sponsored listings” – listings that deliberately direct consumers away from the Complainant’s products and to competing products.

Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. It appears that the disputed domain name has been transferred among at least four different hosting companies between December 2005 and September 2011; and it is entirely possible that said transfers have been at the hand of different registrants. If this is the case, then the most recent 2011 registration occurred nearly 3 years after the Complainant established trademark rights in GOVINO. This leads to the conclusion that the Respondent registered the disputed domain name in bad faith for the sole purpose of generating revenue through pay-per-click advertisements at the expense of the Complainant’s goodwill developed world-wide in its Govino brand drinking vessels.

If, after ascertaining the true and accurate identity of the Respondent, the Panel finds that this unknown Respondent registered the disputed domain name sometime before the Complainant began using GOVINO as a trademark, the Respondent has still engaged in bad faith under this third element of the UDRP. This is because paragraph 4(b)(iv) of the Policy provides that there is evidence of the registration and use of a domain name in bad faith if:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” [emphasis added in the Complaint]

The Complainant’s first use of the GOVINO trademark dates back at least as early as February 2, 2008. Notably, the last available screenshot of the website at <govino.com> on “archive.org” was May 11, 2008 – only 3 months after the Complainant began using GOVINO as a trademark in association with “drinking vessels”. The May 11, 2008 snapshot of the website at the disputed domain name [provided as an attachment to the Complaint] clearly shows that the website was not in use in association with “drinking vessels” or other related “Sponsored Listings”. Instead, it simply listed the word “banned”, or alternate foreign language meanings of “prohibited” or “forbidden”, across the top of the homepage.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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 disputed domain name was registered and is being used in bad faith.

These elements are discussed as follows.

A. Identical or Confusingly Similar

It is well established that the “.com” gTLD extension is not generally relevant the purpose of determining whether the disputed domain name is identical or confusingly similar to mark. See e.g. Raisio plc and Town of Raisio v. Lee Joohee, Yang Youngho, WIPO Case No. D2005-1041.

The Complainant has provided evidence of its registration of the GOVINO mark. The disputed domain name wholly and exactly incorporates the text of that mark. As such, it is clear that the disputed domain name is relevantly identical to the Complainant’s mark.

Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s mark for the purpose of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the next thing the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. This is a difficult thing for a complainant to do, particularly where a respondent is based in another country.

In the face of this difficulty, a series of UDRP decisions have established that the Complainant must establish a prima facie case. Having done so, the burden of production then shifts to the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(“WIPO Overview 2.0”), paragraph 2.1.

While the Panel notes that the Complainant has made such a prima facie case, the Respondent has failed to submit a Response to the Complaint. On the face of it, the Complainant has therefore established that the Respondent lacks rights or legitimate interests in the disputed domain name.

In reaching this conclusion, the Panel has also considered the somewhat generic nature of the term “govino”. The disputed domain name was first created in 1998, well before the registration of the Complainant’s mark. The earliest capture of the website at the disputed domain name, on the Internet archive “WayBackMachine”, is on October 11, 1999. On that date, the website displayed information in German, apparently related to Italian wine. The disputed domain name has an obvious descriptive character in this connection: with the combination of the term “go” with “vino”, the Italian term for wine. This evidence is suggestive of a legitimate use of the disputed domain name shortly after its earliest registration. However, the issue in this case is whether there is evidence that the Respondent has rights or legitimate interests.

Past uses of the disputed domain name by third parties are not directly relevant to this issue, except to the extent that they indicate that the disputed domain name is capable of being used for its descriptive or generic connotations, unconnected with the Complainant’s mark. Past evidence of uses by third parties does not, by itself, indicate that the Respondent has used the disputed domain name for a legitimate purpose. The question of whether a respondent may have rights or legitimate interests in a domain name with descriptive words is addressed in paragraph 2.2 of the WIPO Overview 2.0. The Overview relevantly states 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 UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase… Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”

Has the disputed domain name been genuinely used by the Respondent in connection with its descriptive meaning or association with wine? The Panel considers that the evidence does not support this conclusion. The evidence is that the Respondent has used the disputed domain name to revert to a “parking” website. That website features links particularly to wine glasses, including products that compete with those of the Complainant. Prior decisions under the Policy have supported the view that the use of domain names in such circumstances may not be a basis for rights or legitimate interests: see, e.g., Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.

The Respondent’s website at the disputed domain name contains links which prominently relate to wine glasses. The website does not suggest a focus on Italian wine or wine more generally. That is, the Respondent’s website is particularly targeted to products that compete with the Complainant’s. The Complainant provided evidence of its reputation in the wine glass market – a market that appears to the Panel to be relatively specialized. The Complainant has a prominent Internet presence. A simple Google search for “govino” undertaken by the Panel on January 19, 2014, overwhelming contains references to the Complainant or its products in the top search results. (The Panel has undertaken this limited research in order to reach a properly considered decision: see WIPO Overview 2.0, paragraph 4.5.) These circumstances suggest that the Respondent’s website is being used to trade off the Complainant’s rights in its mark.

There is no other evidence that the Respondent has been known by the disputed domain name, or otherwise has a license or authorization for the Complainant to use its mark. In the Panel’s view, even if the disputed domain name was previously been used for a legitimate purpose by a third party (on which the Panel does not need to reach a definitive conclusion), such a past use would not confer rights or legitimate interests in the Respondent. This is because the evidence suggests that the Respondent has used the disputed domain name to exploit its trademark value.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Despite the potentially descriptive connotations of the disputed domain name, the Panel also considers that it was registered and is being used in bad faith, because the evidence suggests it was registered and has been used to exploit its trademark value. This is for the following reasons.

Firstly, the Complainant provided evidence of the reputation of its mark, primarily comprised of the evidence of its trademark registrations and information from its own website. The Complainant provided little other evidence of its reputation, including independent evidence that it has been engaged in the world-side sale of drinking vessels for at least the last five (5) years. However, in the absence of any reply from the Respondent, the Panel has no reason to doubt these statements from the Complainant.

Secondly, the Respondent’s website at the disputed domain name advertises products that compete with those of the Complainant. On the Complainant’s evidence, entering the term “govino” into the search field on the Respondent’s website, does not provide any results that relate to the Complainant itself. Rather, those results relate to the Complainant’s competitors. This suggests some element of deliberation and awareness by the Respondent of the Complainant, and a desire to deliberately channel Internet traffic to the Complainant’s competitors.

Thirdly, the Panel considers it reasonable to conclude that the Respondent was also aware of the Complainant and its mark when it registered the disputed domain name in 2012. While there is no direct evidence of the Respondent’s state of mind at the time of registration of the disputed domain name, the Panel considers it reasonable to infer that state of mind from the Respondent’s recent use of the disputed domain name. This is because the only evidence of the Respondent’s website at the disputed domain name is that it is being used to advertise products competing with those of the Complainant. This suggests that the disputed domain name was registered by the Respondent because of its associations with the Complainant’s mark, rather than because of any descriptive association.

The obvious inference from these circumstances is that the Respondent sought to divert Internet users to the Respondent’s website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark. As contended by the Complainant, the Panel considers that the circumstances establish bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

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

James A. Barker
Sole Panelist
Date: January 19, 2014