WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Skurnik Wines, Inc. v. DomainsByProxy.com / Jason Jones, Internet Media, LLC
Case No. D2017-0218
1. The Parties
Complainant is Michael Skurnik Wines, Inc. of New York, New York, United States of America ("U.S."), represented by Beeson Skinner Beverly LLP, U.S.
Respondent (collectively) is DomainsByProxy.com of Scottsdale, Arizona, U.S. / Jason Jones, Internet Media, LLC of Wilmington, Delaware, U.S.
2. The Domain Name and Registrar
The disputed domain name <thepinotproject.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2017. On February 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 10, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 7, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 9, 2017. 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 owns U.S. Trademark Registration No. 4,083,408 (registered January 10, 2012) for the mark THE PINOT PROJECT (the "Mark") for use with "wines". The first use and first use in commerce of the Mark was in September 27, 2010. On its website at "www.skurnik.com", Complainant describes its business – Skurnik Wines – "as an importer and distributor of fine wines and spirits". The website further claims that: "The Pinot Project began in 2009 with a vision: a wine for the palate, the pocket, and the people. [ …] The Pinot Project has accomplished its goal of being one of the greatest wine values in the world; with delicious numbers coming out of California and Italy".
The Domain Name was registered on January 30, 2013. When the Complaint was filed, the Domain Name resolved to a website with information on wine and food. According to Complainant, no goods or services were offered on this website.
5. Parties' Contentions
The Domain Name consists of all of the words of Complainant's Mark conflated as one word and is virtually identical to it.
There is no evidence of Respondent's use of, or any demonstrable preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Respondent's website shows that Respondent is not offering any goods. The only information on the website regarding wine is found under the "Wine News" banner on the home page where links to four articles about wine are provided. In a frame on the right panel of the website, is the title "Wine News", which lists three links posted in 2016, all unrelated to wine. The Archives tab in the top banner links to archived postings dated from March 2014 to November 2016, however none of the articles found upon following the links relate to wine. A more recent copy of Respondent's website, downloaded on January 25, 2017, shows in the frame on the right panel of Respondent's website, the title "Wine News" with three new links posted in 2016, all unrelated to wine. In all other respects the homepage of the later website is unchanged. Based on what is shown on Respondent's website, Respondent is not offering the goods or services associated with Complainant's registered mark – wines. Instead, although Respondent has promised to provide information on wine and food, it has merely posted four token articles that give the facial impression the website offers educational food or wine services. But the four articles regarding wine and the several archived postings regarding food do not constitute a bona fide offering of any services. The website merely acts as a pretense the true purpose of which is to divert Internet traffic to it by drawing on the good will built up in Complainant's Mark.
Incorporating virtually the identical mark owned by Complainant in the Domain Name at the very least leads to "initial interest confusion". By making prominent use of the Mark in a banner appearing at the top of each page of the website, Respondent is creating the false impression that there is an association with or an endorsement by Complainant. On or about May 2, 2016 Complainant secured the liaison services offered by the Registrar to contact Respondent and to purchase the Domain Name offering USD 1,500. On May 12, 2016, the Registrar advised Complainant that it had been unsuccessful with the USD 1,500 offer. Complainant thereafter authorized the Registrar to communicate an increased offer to purchase the Domain Name for USD 2,000. On August 17, 2016, the Registrar advised Complainant that again it had been unsuccessful in purchasing the Domain Name. Complainant made no further attempts to purchase the Domain Name from Respondent. Whereas contact information is almost universally provided on legitimate websites, no contact information can be found on Respondent's website. This indicates an intent to conceal the identity of the Domain Name's owner. Furthermore, the public WhoIs database identifies the owner of the Domain Name as "Registration Private". While private registrations by proxy are permissible, Respondent's private registration is consistent with its apparent intent to conceal its identity.
Complainant believes that Respondent registered and is using the Domain Name in bad faith. Respondent knew of the existence of the Mark corresponding to the Domain Name before registering it. Respondent has concealed any identifying information on the website and on the registrar's public record. By making prominent use of the Mark in a banner appearing at the top of each page of the website, a false impression is created that there is an association with or an endorsement of Respondent by Complainant thereby creating confusion in the marketplace. Respondent's website is a sham site purporting to concern wine. At best, Respondent's website is an arrested attempt at usurping Complainant's Mark to develop a website for commercial gain. More likely, however, Respondent's efforts indicate its intent to conceal itself in order to continue diverting Internet traffic to its website to disrupt Complainant's business, or they evince a strategy to maintain an obstacle to transferring ownership of the Domain Name for the purpose of driving up the consideration for selling or transferring it to Complainant.
Complainant requests transfer of the Domain Name to it.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the reasonable facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds rights in THE PINOT PROJECT Mark by virtue of U.S. Trademark Registration No. 4,083,408 (registered January 10, 2012).
UDRP panels have consistently held that if a domain name "wholly incorporates a complainant's trademark", it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates, WIPO Case No. DCO2015-0001. The Domain Name, <thepinotproject.com>, wholly incorporates the Mark thus it is identical if not confusingly similar to Complainant's registered Mark. The Top-Level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that there is no evidence of Respondent's use of, or any demonstrable preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services, citing to the principles set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In this regard Complainant argues that: (1) the only information on the website regarding wine is found under the "Wine News" banner on the home page where links to four articles about wine are provided; (2) in a frame on the right panel of the website is the title "Wine News", listing three links posted in 2016, all unrelated to wine; and (3) the Archives tab in the top banner links to archived postings dated from March 2014 to November 2016, however none of the articles found upon following the links relate to wine. A more recent copy of Respondent's website, downloaded on January 25, 2017, shows in the same frame the title "Wine News" with three new links posted in 2016, all unrelated to wine (in all other respects the homepage of the later website is unchanged). Thus, Complainant asserts that because Respondent is not offering the goods or services associated with Complainant's registered mark – wines – Respondent's use of the Domain Name is not a bona fide use. Furthermore, Complainant argues that the website merely acts as a pretense the true purpose of which is to divert Internet traffic to it by drawing on the good will built up in Complainant's Mark.
Although not specifically argued, it is evident from Complainant's submissions that Complainant has not authorized Respondent to use THE PINOT PROJECT Mark.
Complainant has raised a prima facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and is using the Domain Name in bad faith. It is uncontroverted that Complainant's use of the Mark in commerce (September 27, 2010) and U.S. Trademark Registration No. 4,083,408 (registered January 10, 2012) for the mark THE PINOT PROJECT for use with "wines" preceded Respondent's registration of the Domain Name (January 30, 2013). This coupled with the further facts that Respondent incorporated the entirety of the Mark in the Domain Name and used it in conjunction with a website dressed up to look like a wine site leads to the conclusion that Respondent knew of Complainant and Complainant's rights in the Mark when it registered the Domain Name.
Furthermore, Respondent has been using the Domain Name in bad faith. To begin with, the website associated with the Domain Name has been dressed up to look like the website of a wine business, for example: (1) the tabs include wine related topics such as "Red Wines", "Boxed Wine" and "Cheap Wine"; (2) there is a description of the site stating in part "The Pinot Project, the place to go to learn helpful information on Noir Wine. We offer our insightful perspectives on wine, food, and other drinks. Our website educates you on Pinot Noir Wine, and the information on our site can help you to pick the best wine for your next dinner party"; (3) there are advertisements for wine and other wine businesses (discussed below); and (4) color photographs of wine related images run throughout the pages of the site. With this backdrop, Respondent is using Complainant's THE PINOT PROJECT Mark throughout the website and particularly in a predominant location with the design of a bunch of grapes in a banner appearing at the top of each page of the website. Furthermore, the site is redirecting visitors through working links to competitors of Complainant – other purveyors of wine – including: Peddler's Village Wine Shop; Chaddsford Winery; La Crema; Cavit Collection; Pleasant Valley Wine Company; as well to "Food & Wine" magazine, and a site called "Paste" featuring an article promoting ten varieties of boxed wines. And there is an advertisement for "wine shield" promoting a product to "keep wine fresh to the last glass" that has a live link taking visitors to the website of "hugedomains.com" where the domain name <wineshield.com> is for sale.
All in all, the many live links on Respondent's website inviting visitors to buy wine or even domain names leads to the conclusion that Respondent is likely benefitting commercially from its site and likely causing harm to Complainant when a visitor looking for Complainant gets side-tracked by Respondent's site either thinking it's Complainant's actual site or it purchases wine through one of the many links Respondent provides, as opposed of buying wine from Complainant.
Use of the Domain Name and Complainant's Mark on every page of the website described above evinces an attempt by Respondent to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <thepinotproject.com>, be transferred to Complainant.
Harrie R. Samaras
Date: March 16, 2017