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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech

Case No. D2006-0292

 

1. The Parties

The Complainant is Joseph Phelps Vineyards LLC, St. Helena, California, United States of America, represented by the Law Offices of Schneck & Schneck, United States of America.

The Respondents are NOLDC, Inc. and Alternative Identity, Inc., New Orleans, Louisiana, United States of America; and Kentech, Eldoret, Kenya.

 

2. The Domain Name and Registrar

The disputed domain name <josephphelpsvineyards.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2006. On March 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 8, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that NOLDC, Inc 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 Respondents of the Complaint, and the proceedings commenced on March 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2006. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 5, 2006.

The Center appointed Henry H. Perritt, Jr. as the sole panelist in this matter on April 11, 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

Under the Policy and Rules, when a respondent defaults, the Panel may choose to accept the complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy, a determination made in section 6 of this decision. Accordingly, the factual background is derived entirely from the Complaint.

The Complainant’s marks JOSEPH PHELPS VINEYARDS and PHELPS VINEYARDS are registered on the United States Patent and Trademark Office’s Principal Register under the registration numbers 1635662 (filed in 1990, registered in 1991, renewed in 2000) and 2196435 (filed in 1996, registered in 1998), respectively. The goods associated with each of these marks is wine. These marks are internationally well-known. Both of these marks were registered well before the Respondents registered the disputed domain name in 2004.

When the website corresponding to the disputed domain name was accessed at one point in time, the copyright notice listed Kentech, Inc., which therefore appears to be the beneficial owner of the disputed domain name. Kentech’s website, “www.kenyatech.com,” offers to sell domain names. One of the domain names for sale is <josephphelpsvineyards.com>, i.e., the disputed domain name. Kentech’s address is listed as being in Eldoret, Kenya.

Both websites for NOLDC, Inc. and Alternative Identity, Inc., each of which have been named as the Respondents in this proceeding, advertise an “alternative identity service” for customers “interested in keeping their information secret from possible SPAM senders, hackers, and other sinister individuals.” On the Alternative Identity website, the Alternative Identity service is noted as being “specifically geared” toward “[c]ompanies who need to keep their domain name acquisitions and online projects secret from their competition.” Alternative Identity offers to supply “Organizational Contacts, Administrative Contacts, Technical Contacts, and/or Billing Contacts for telephone, mail and email for the WHOIS database.”

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that paragraph 4(a)(i) of the Policy is satisfied because the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

The disputed domain name <josephphelpsvineyards.com> is identical or confusingly similar to two of the Complainant’s registered trademarks.

The disputed domain name is identical to the registered trademark JOSEPH PHELPS VINEYARDS. The suffix “.com” does nothing to distinguish the disputed name from the registered trademark and such suffixes are disregarded for the purpose of determining whether a disputed domain name is identical or confusingly similar to a registered trademark.

The disputed domain name is confusingly similar to the Complainant’s registered mark PHELPS VINEYARDS since the disputed domain name incorporates the registered trademark.

Paragraph 4(a)(ii) of the Policy is satisfied because none of the Respondents have any rights or legitimate interests in the disputed domain name <josephphelpsvineyards.com>. The Respondents are not using the domain name in connection with a bona fide offering of goods and services, the Respondents are not commonly known by the domain name, and the Respondents are not making a legitimate noncommercial or fair use of the domain name.

None of the Respondents has been given a license to use any of the Complainant’s registered trademarks.

Prior to the filing of this Complaint, the Respondents had not evidenced any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

The Respondents are not offering the goods (wine) at issue. As indicated by a printout of the website associated with the disputed domain name, the Respondents are offering to sell the disputed domain name. While the website lists the names of several wineries and varietals, the website does not actually offer wines. Under the criteria used in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the disputed domain name is not being used in connection with a bona fide offering of goods.

The Respondents are not using the site associated with the disputed domain name to sell only the trademarked goods. The website associated with the domain name does not sell wine; instead it contains hyperlinks of several of the Complainant’s competitors. Clicking on these links leads to a list of “sponsored results” associated with the hyperlinked term. More of the Complainant’s competitors are listed among these “sponsored results.” For instance, clicking on the hyperlink for “Joseph Phelps Vineyards” leads to sponsored results for the Complainant’s competitors. The Respondents’ use of the disputed domain name does not sell only the trademarked goods at issue, but exposes Internet users expecting the domain name to be the Complainant’s website to the Complainant’s competitors, i.e., “bait[ing] Internet users and then switch[ing] them to other goods.”

There is no indication on the website associated with the disputed domain name of the Respondents’ relationship, or lack thereof, with the Complainant.

None of the Respondents are commonly known by the domain names, nor are any of the Respondents making non-commercial or fair use of the disputed domain name. Instead, the Respondents are using the disputed domain name for commercial purposes.

The website associated with the disputed domain name is being used for commercial gain to mislead consumers or to tarnish the registered trademarks at issue. The Respondents’ use of the disputed domain name is clearly intended to divert consumers familiar with the Complainant and its registered marks to Kentech’s website, where Kentech both offers to sell the disputed domain name and, if a website visitor clicks on one of the links, lists “sponsored results,” presumably profiting Kentech. The links to the Complainant’s competitors tarnish the Complainant’s registered trademarks at issue. The Respondents are clearly not using the disputed domain name for legitimate noncommercial or fair use.

Paragraph 4(a)(iii) of the Policy is satisfied because the disputed domain name was registered and used in bad faith by the Respondents. The Complainant contends that the Respondents registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of the Respondents’ out of pocket costs related to the domain name, that the Respondents registered the domain name in order to prevent the Complainant from reflecting the domain name in a corresponding domain name, that the Respondents have engaged in a pattern of such conduct, and that the Respondents intentionally used the domain name to attract Internet users to the Respondents’ web site by creating a likelihood of confusion with the Complainant’s registered trademarks.

The Respondents registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondents’ out-of-pocket costs related to the domain name. The website associated with the domain name indicates the domain name is for sale, and the beneficial owner, Kentech Inc., is a company that specializes in domain name reselling. Kentech Inc. clearly intends to sell the disputed domain name for consideration in excess of the out-of-pocket costs related to the domain name. Some time on or before February 24, 2006, the website associated with the disputed domain name was altered so that it no longer offers to sell the domain name, but Kentech’s website (visited on February 24, 2006, after the website associated with the disputed domain name was altered), “www.kenyatech.com,” offers to sell domain names. One of the domain names for sale is <josephphelpsvineyards.com>, i.e., the disputed domain name. Although the website associated with the disputed domain name has been altered to remove offers to sell the domain name, Kentech clearly intends to sell the domain name for consideration in excess of the out-of-pocket costs related to the domain name. Therefore, the Respondents registered and used the disputed domain name in bad faith.

The domain name was registered in order to prevent the Complainant from reflecting its registered marks in a corresponding domain name, implicating the Policy, paragraph 4(b)(ii). The Respondents have engaged in a pattern of such conduct, as indicated by the number of cases requiring the transfer of domain names from two of the Respondents to the complainants in these cases because the domain names are similar to known trademarks. The Complainant has shown that it possesses registered trademarks that are identical or confusingly similar to the disputed domain name. The Respondents’ actions with regard to the disputed domain name, similar to the Respondents’ actions with regard to other domain names, have prevented the Complainant from reflecting its registered marks in a corresponding domain name. Therefore, the Respondents have registered and used the disputed domain name in bad faith.

The Respondents intentionally used the domain name to attract Internet users to the Respondents’ web site by creating a likelihood of confusion with the Complainant’s registered trademarks, implicating the Policy, paragraph 4(b)(iv). Internet users familiar with the Complainant’s marks who access the website associated with the disputed domain name would expect to arrive at the Complainant’s website. Instead, the website associated with the disputed domain name indicates that the domain name is for sale and contains hyperlinks of several of the Complainant’s competitors. Clicking on these links leads to a list of “sponsored results” associated with the hyperlinked term. More of the Complainant’s competitors are listed among these “sponsored results.” The Respondents’ use of the disputed domain name is clearly intended to divert consumers familiar with the Complainant and its registered marks to Kentech’s website associated with the disputed domain name, where Kentech both offers to sell the disputed domain name and lists “sponsored results,” presumably profiting Kentech. The Respondents’ use of the disputed domain name has created a likelihood of confusion with the Complainant’s marks, tarnishes the Complainant’s marks by listing the names and links to the Complainant’s competitors on the website associated with the domain name, and interferes with the Complainant’s business by diverting the Complainant’s customers to the Respondents’, or competitors, websites. The Respondents have therefore acted in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Under the Policy and Rules, when a respondent defaults, the Panel may choose to accept the complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy, sufficient to order cancellation or transfer of the disputed domain name. Paragraph 5(e) of the Rules provides that if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate.” No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes these findings on the basis of the material contained in the Complaint and based on the Panel’s view of the websites in contention.

Panels have held that beneficial owners of domain names may be named as respondents in administrative proceedings regarding domain name disputes. See Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc., WIPO Case No. D2005-0890.

This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint is registered, incorporates the Policy. The domain name was registered September 22, 2004, with Intercosmos Media Group, Inc., doing business as Directnic.com. Section 18(b) of the registration agreement specifies that the “ICANN Dispute Policy” is applicable to disputes regarding domain names (a copy of the registration agreement was attached as Annex 10 to the Complaint).

A. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s registered trademark with the addition of the .com gTLD.

The Panel finds that the first element under the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondents have no right and legitimate interest in the domain name. The Respondents are not licensed to use the Complainant’s trademarks or name. The Respondents do not offer wine for sale, only providing links to the Complainant’s competitors. There is no indication that the Respondents ever have conducted business or been known by any name similar to the disputed domain name.

While it might be legitimate to use a domain name with some portion of a trademark combined with other phrases such as “comparison” or “competition” to offer consumers a directory of multiple sources of the product offered by the owner of a related trademark, the Respondents’ use of the domain name is clearly intended to divert potential customers of the Complainant to other sources, or by threatening to do so, to compel the Complainant to buy the domain name.

Moreover, the Respondent NOLDC, Inc./Alternative Identity, Inc. has proclaimed that its purpose is to serve as a “front” for others who wish to hide their identities.

The Panel therefore finds that the second element is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy permits the Complainant to establish bad-faith registration or use by showing any one of four types of conduct by the Respondents:

1. Registration or acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i)); or

2. Registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, but only if the Respondents have engaged in a pattern of such conduct (paragraph 4(b)(ii)); or

3. Registration of the domain name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii)); or

4. Intentional use of the domain name to attract, for commercial gain, Internet users to the Respondents’ web site or to another on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web site or location or of a product or service on the Respondents’ web site or location (paragraph 4(b)(iv)).

The Complainant clearly has established bad faith of types 2 and 4, and has plausible arguments that bad faith of type 1 is also involved. Moreover, the activities of the Respondents after the Complainant began to investigate their activities, including removal of the copyright notice from their website and changing the website to masquerade as a legitimate directory of services, reinforces the conclusion that their activities generally are motivated by evading accountability for cybersquatting.

As to the first category of bad faith, “www.kenyatech.com” offers the disputed domain name for sale, purportedly on behalf of its owner. It is difficult to know the precise relationship between the Respondents because the Respondents have tried to hide it. The Complainant argues that Kentech is the “beneficial owner” of the disputed domain name based on the copyright notice appearing at one point in time on the website. Even though the copyright notice no longer appears, its earlier appearance can be considered as evidence of a linkage between NOLDC/Alternative Identities and Kentech, under an inversion of the tradition maxim, which might be expressed as “tunc pro nunc” (then for now), signifying that what occurred before can be considered as though it is occurring now. Moreover, past decisions involving Kentech (see Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc., WIPO Case No. D2005-0890; Maxon Motor AG v. Lentech Ltd., WIPO Case No. D2005-0600; Societe des Hotels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196; Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd., WIPO Case No. D2005-0127; Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021) support an inference that Kentech is the beneficial owner of the disputed domain name.

As to the second category of bad faith, the connection between the registered owner of the disputed domain name and Kentech shows a pattern of conduct in which the Respondents registered domain names for the purpose of preventing the owners of related trademarks from reflecting the marks in corresponding domain names, at least until the mark owners agreed to buy the domain names from the Respondents.

As to the third category, the listing of competitors on the website brought up by the disputed domain name supports an inference that the Respondents are the agent of competitors of the Complainant and the site obviously is intended to disrupt the Complainant’s business by diverting its customers through bait and switch tactics. The conclusion might be different if the website clearly disclosed lack of sponsorship by the Complainant and represented the site as offering a comparison of brands or sources for competing products. Instead it suggests that the Complainant sponsors or encourages resort to the links shown on the site.

As to the fourth category of bad faith, there can be little doubt that the Respondents use the disputed domain name to attract Internet users to its site by creating a likelihood of confusion with Compainant’s marks. It is reasonable to infer that the motive for this conduct is the prospect of commercial gain. It is not clear from the record how the Respondents receive revenues, but the Complainant’s unopposed argument about the Respondents’ business model is plausible.

Moreover, as noted earlier in this decision, the basic business model of NOLDC/Alternative Identities is to hide the true identity of the actual owners of domain names. This is also an indication of bad faith.

The Panel therefore finds that the Respondents have registered and used the domain name in bad faith.

 

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 <josephphelpsvineyards.com> be transferred to the Complainant.

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Henry H. Perritt, Jr.
Sole Panelist

Dated: April 25, 2006