Complainant is Fetzer Vineyards, United States of America (“United States”), represented by Day Pitney LLP, United States.
Respondent is --, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. And on September 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the Domain Name. 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2019. The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 22, 2019. 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 Founded in 1968, Complainant is a well-known purveyor of wines and spirits that are available in more than 50 countries worldwide. Complainant has numerous trademark registrations for its FETZER Mark (or “the Mark”) in over 50 countries worldwide, including, but not limited to, United S Trademark Registration No. 1,499,862, registered on August 9, 1988. Further, Complainant’s Mark has been continuously and extensively used in connection with the promotion of Complainant’s goods and services since at least as early as 1969. Complainant also owns the domain name The true identity of Respondent in this administrative proceeding is unknown. The registrant of the Domain Name has redacted its Registrant Name to “ - -.” The Domain Name was registered on February 6, 2009 and updated on February 6, 2019. At the time of filing the Complaint, the Domain Name resolved to a page displaying “pay-per-click” links, all related to the Complainant’s activity. The Domain Name now resolves to an error page. 5. Parties’ Contentions A. Complainant The FETZER Mark has achieved worldwide consumer recognition as a symbol for superior quality wines deriving from a single source – Fetzer Vineyards. Complainant has long-standing global trademark rights in and to the FETZER mark by virtue of its numerous trademark registrations. When a domain name incorporates a trademark in its entirety, there is sufficient similarity between the Mark and the Domain Name to render it confusingly similar. Adding the descriptive term “vineyards” to the Domain Name does not distinguish it from Complainant’s Mark and actually increases the likelihood of confusion by referring to the industry in which Complainant operates and offers products under the FEZTER Mark (see, e.g., “Our wines are a pure expression of some of California’s best vineyards” on Complainant’s website at https://www.fetzer.com/wines/). The generic Top-Level Domain (gTLD) “.com” does not serve to identify a source of goods or services, and does not distinguish the Domain Name from the Mark. Respondent has never been commonly known by the Domain Name and there is nothing in Respondent’s WhoIs or website information indicating that it is commonly known by the Domain Name. Further, Respondent has not acquired any trademark or service mark rights in connection with the Domain Name and Complainant has no relationship with Respondent and has not given Respondent permission or authorization to use Complainant’s Mark in any way. Complainant has prior rights in the FETZER Mark, which precede Respondent’s registration by forty years. Thus, Respondent could not conceivably use the FETZER VINEYARDS term as a domain name, company name, or otherwise without violating Complainant’s prior trademark rights. Respondent has not used or made 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. The Domain Name previously resolved to a website filled with what appeared to be advertising links for various products and services in competition with and related to FETZER brand wine goods and services (e.g., “Napa Valley Wine,” “Rose Wine,” “Wine Vineyards,” “Wine Store,” “Wine Shop,” “Wine Cellar,” “Wine Tasting,” etc.). Respondent presumably collected a “pay-per-click” fee every time one of the Website advertising links were clicked. Such use of the Domain Name incorporating the FETZER Mark to host sponsored links associated with Complainant’s area of business cannot be a bona fide offering of goods or services. Currently, the Domain Name resolves to a blank page lacking content. This too is not evidence of a bona fide service or offering of goods under the Policy. When Respondent registered the Domain Name on February 6, 2009, decades after Complainant established its rights in the FETZER Mark, it did so with the bad faith intention of profiting off of Complainant’s notoriety as a brand for wine products. The nature of the Domain Name alone supports a finding of bad faith because “Fetzer vineyards” inextricably and unmistakably refers to the source of the product made by Complainant under its FETZER Mark. Registration of the Domain Name shows that Respondent was aware of Complainant and Complainant’s business at the time of registration. Respondent’s decision to register a domain name incorporating Complainant’s Mark plus an additional term that corresponds to Complainant’s “area of activity” further shows Respondent’s blatant disregard for Complainant’s trademark rights. With the knowledge of Complainant and Complainant’s products, Respondent registered and subsequently used the Domain Name in bad faith to create confusion and attract Internet users seeking Complainant and Complainant’s products to Respondent’s Website. Once the confused users arrived at the Website, Respondent profited from their confusion by receiving payment for each link click on the Website. Such registration and use of the Domain Name mirrors the circumstances described in paragraph 4(b)(iv), and is clear evidence of bad faith. Respondent’s decision to withhold contact information from the Domain WhoIs record, in conjunction with the other bad faith evidence, is further evidence of bad faith. Respondent registered the Domain Name without providing its name. Although privacy shields might be legitimate in some cases, it is difficult to see why Respondent would need to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting. The Domain Name currently resolves to a blank page and thus one could argue that the Domain Name is not being used. However, in previous decisions, UDRP panels have found that under certain circumstances non-use of a disputed domain name may nevertheless constitute use in bad faith under the Policy. Here, all of the circumstances to draw an inference of bad faith for nonuse of a disputed domain name are present: (1) the Domain Name incorporates Complainant’s Mark plus an additional term “vineyards” which corresponds to the source of the material which is manufactured and sold by Complainant under the FETZER Mark; (ii) the Mark has a significant reputation of global fame and notoriety in connection with wine goods and services; (iii) Respondent registered the Domain Name without providing its name for no legitimate purpose; (iv) Respondent failed to respond or comply with Complainant’s communications; and (v) good faith use is implausible as Respondent registered and subsequently used the Domain Name in bad faith to create confusion and attract Internet users seeking Complainant and Complainant’s products to Respondent’s Website. The fact that the Domain Name currently leads to a blank page does not make a difference under the circumstances, since the webpage may revert at Respondent’s will at any time. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is uncontested that Complainant has rights in its FETZER Mark that existed long before Respondent registered the Domain Name on February 6, 2009. Those rights were established, amongst other things, by trademark registrations such as United States Registration No. 1,499,862 (registered August 9, 1988 with a date of first use in May 1969). The Domain Name consists of Complainant’s FETZER Mark in its entirety along with the descriptive term “vineyards” and the gTLD “.com”. When a domain name incorporates a trademark in its entirety, there is sufficient similarity between the mark and the domain name to render it confusingly similar. See Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. And it is an accepted principle that the addition of a gTLD is not a distinguishing factor. Adding the descriptive term “vineyards” to Complainant’s Mark does not distinguish the Domain Name from Complainant’s Mark and, therefore, does not dispel confusing similarity between the Complainant’s Mark and the Domain Name. See Accolade Wines Australia Limited v. Kathi Vining, WIPO Case No. D2018-0041 (finding that the addition of the dictionary term “wine” to the HARDYS trademark did not distinguish the domain names in dispute in any way, and therefore, did not dispel confusing similarity). The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. In this regard, no evidence has been presented demonstrating that Respondent has been commonly known by the Domain Name or that Respondent acquired any trademark or service mark rights in connection with the Domain Name. The record evidence indicates that Respondent registered the Domain Name well after Complainant had registered rights in it. Thus, as Complainant argues, Respondent could not conceivably be using the FETZER Mark as a domain name, company name, or otherwise without violating Complainant’s prior trademark rights. Furthermore, it is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the FETZER Mark in any manner, including in a domain name. Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name insofar as Respondent has been using the Domain Name in conjunction with a website populated with advertising links for various products and services in competition with and related to the FETZER brand wine goods and services (e.g., “Napa Valley Wine,” “Rose Wine,” “Wine Vineyards,” “Wine Store,” “Wine Shop,” “Wine Celler,” “Wine Tasting,” etc.). A note under the links states: “The Sponsored Listings displayed are served automatically by a third party.” It may be presumed that Respondent collected a “pay-per-click” fee every time one of the Website advertising links was clicked. Such use of the Domain Name was not a bona fide offering of goods or services. Currently, the Domain Name resolves to a blank page lacking content. This too is not evidence of a bona fide service or offering of goods under the Policy. See Pet Plan Ltd v. Marc Castonguay,WIPO Case No. D2015-2116 (finding that the current blank page did not make previous use of the confusingly similar domain name to provide links to third party competitors of the complainant a bona fide offering of goods or services). Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Respondent registered the Domain Name on February 6, 2009, many years after Complainant’s first use of the FETZER Mark in United States commerce (i.e., 1969) and after at least one of its trademark registrations for the Mark issued – United States Trademark Registration No. 1,499,862, registered on August 9, 1988. Moreover, registering a domain name that (1) adopts the entirety of Complainant’s FETZER Mark, (2) adds the term “vineyards” (a term that clearly relates to Complainant’s business and wine products), and (3) is used on a website populated with advertising links for various products and services that compete with Complainant (e.g., “Napa Valley Wine,” “Rose Wine,” “Wine Vineyards,” “Wine Store,” “Wine Shop,” “Wine Celler,” “Wine Tasting,” etc.), evidence Respondent’s knowledge of Complainant and the FETZER Mark when registering the Domain Name. UDRP panels have found bad faith registration and use when a domain name incorporates a complainant’s mark plus an additional term that corresponds to the complainant’s “area of activity”. See WIPO Overview 3.0, Section 3.2.1; Velcro BVBA v. Willie N. Eskridge,WIPO Case No. D2019-0598. With regard to bad faith use, Respondent was using a domain name that is confusingly similar to Complainant’s FETZER Mark, with the addition of a term that is common to the wine industry – the industry in which Complainant operates, and without any legitimate rights in the Mark, to host a site that featured links to products and services that compete with Complainant’s; thus, poised to profit from an infringing use of the Mark. Although the Domain Name currently resolves to a blank page, the circumstances further support a conclusion of bad faith use including: (i) the degree of distinctiveness and reputation of the Mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) Respondent’s concealing its identity, and (iv) the implausibility of any good faith use to which the Domain Name may be put. WIPO Overview 3.0, Section 3.3; see Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc.,WIPO Case No. D2007-0876. Furthermore, the fact that the Domain Name currently leads to a blank page is of no moment because the webpage may revert to the previously infringing use at Respondent’s will at any time. See Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc., supra. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name Harrie R. Samaras
Sole Panelist
Date: October 26, 2019
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