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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, of Baker and Rannells PA, 626 North Thompson St., Raritan, NJ
08869. Respondent is Premier Wine & Spirits (“Respondent”), represented by
C.L. Gravett, III, of Gravett & Frater, 1125 Jefferson Street, Napa, CA 94559.

REGISTRAR AND DISPUTED DOMAIN NAME


The domain name at issue is <premierwine.com>, registered with Network
Solutions, Inc.

PANEL
The undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.

Flip Petillion as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 29, 2005; the National Arbitration Forum received a
hard copy of the Complaint on January 4, 2006.

On January 5, 2006, Network Solutions, Inc. confirmed by e-mail to the National


Arbitration Forum that the <premierwine.com> domain name is registered with
Network Solutions, Inc. and that the Respondent is the current registrant of the
name. Network Solutions, Inc. has verified that Respondent is bound by the
Network Solutions, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 5, 2006, a Notification of Complaint and Commencement of


Administrative Proceeding (the “Commencement Notification”), setting a
deadline of January 25, 2006 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@premierwine.com 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 Complainant’s request to have the dispute


decided by a single-member Panel, the National Arbitration Forum appointed Flip
Petillion as Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.

PARTIES’ CONTENTIONS
A. Complainant

Complainant makes the following assertions:

1. The <premierwine.com> domain name is confusingly similar to


Complainant's trademarks/service marks and domain names.

2. Respondent has no rights or legitimate interest in the <premierwine.com>


domain name.

3. Respondent has registered and used the domain name in bad faith.

B. Respondent

Respondent requests the Panel to deny Complainant’s request on the grounds that
there is no reasonable prospect for confusion between the two names, there has
been no actual confusion between the two names, that Complainant’s request is
barred by laches, and that Respondent did not act in bad faith. In addition,
respondent requested that the arbitrator award Respondent the sum of $2000 in
attorney fees.

FINDINGS
1. Complainant is the owner of the following U.S. trademark registrations:

U.S. Reg. No. 1,735,135 -- PREMIER for wines, whiskey, vodka, gin and
vermouth. Registered November 24, 1992.

U.S. Reg. No. 1,337,311 - PREMIER CENTER for retail food and liquor store
services. Registered May 21, 1985.

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

U.S. Reg. No. 1,609,298 -- A PREMIER WINE BUYER


RECOMMENDATION for wines. Registered August 7, 1990.

U.S. Reg. No. 1,609,299 -- A PREMIER SPIRITS SELECTION for distilled


alcoholic beverages, namely whiskey, gin, vodka, rum and brandy. Registered
August 7, 1990.

U.S. Reg. No. 1,082,056 -- PREMIER PARTY PLACE for gourmet food store
services. 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 and
mail order and distributorship services, pertaining to food products, alcoholic
beverages, and gourmet kitchen products. Registered September 2, 1997.

U.S. Reg. No. 2,194,469 -- PREMIER GOURMET (and design) for a wide
variety of food and beverage products in Int. Cls. 29, 30, 31 and 32. Registered
October 13, 1998.

U.S. Reg. No. 2,199,130 - PREMIER (and design) for a wide variety of food and
beverage 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. Registered
11/23/04.

2. Complainant is also the owner of the following Canadian trademark


registrations:

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 liquor
store services. Registered April 26, 1996.

Reg. No. TMA473006 -- A PREMIER SPIRITS SELECTION for distilled


alcoholic beverages, namely, whiskey, gin, vodka, rum, and brandy.
Registered March 19, 1997.

3. Complainant is the owner of the <premierwines.com> (registered October


13, 1996), <premiergourmet.com> (registered September 23, 1997), and
<premiergroup.net> (registered August 11, 1997) domain names.

4. Complainant's website at <premierwines.com> has been actively operated and


maintained for approximately nine years and its <premiergourmet.com> website
and web-store for approximately eight years. According to Complainant, the
premiergroup.net website is currently a link to <premierwines.com>.

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) to
Complainant 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 Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and 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 the
Policy and that the time frame within which Complainant initiated the present
proceedings is of no consequential value. See E.W. Scripps Co. v. Sinologic
Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any
defence of laches. This accords with the basic objective of the Policy of providing
an expeditious and relatively inexpensive procedure for the determination of
disputes relating to egregious misuse of domain names."); see also Hebrew Univ.
of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The
remedy available in an Administrative Proceeding under the Policy is not
equitable. Accordingly, the defence of laches has no application.”).

Second Preliminary Issue: Attorney fees


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 the
following three elements to obtain an order that a domain name should be
cancelled 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 is


irrelevant under Policy ¶ 4(a)(i).

On the other hand, the Panel finds that Complainant asserts that it has established
rights in the PREMIER mark through registration of the mark with the United
States Patent and Trademark Office (“USPTO”) as well as through continuous use
of the mark in commerce in connection with its wines and spirits. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions
have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive."); see also
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).

The Panel also finds that Respondent’s <premierwine.com> domain name is


confusingly similar to Complainant’s PREMIER mark under Policy ¶ 4(a)(i), as
the domain name incorporates Complainant’s mark and adds the term “wine,”
which is related to Complainant’s business. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
Rights or Legitimate Interests

Complainant asserts that Respondent is using the <premierwine.com> domain


name, which is confusingly similar to Complainant’s PREMIER mark, to sell
competing wine products. The Panel finds that such competing use of a
confusingly similar domain name is neither a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA
195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the
domain name (and Complainant’s mark) to sell products in competition with
Complainant demonstrates neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the name”).

Additionally, Complainant contends that Respondent failed to use the disputed


domain name in connection with any active website from October 8, 1998, the
date of Respondent’s initial registration, until September 2005, when
Complainant served Respondent with a cease and desist letter. The Panel
interprets Respondent’s long-term non-use of the <premierwine.com> domain
name as evidence that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v.
Walmarket Can., D2000-0150 (WIPO May 2, 2000) (finding that the respondent
had no rights or legitimate interests where he decided to develop the website for
the sale of wall products after receiving the complainant’s “cease and desist”
notice); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum
Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name
for over six months is evidence that Respondent lacks rights and legitimate
interests in the domain name.”).

Furthermore, the Panel finds that Respondent has failed to sufficiently establish
that it is either commonly known by the disputed domain name or licensed to use
Complainant’s PREMIER mark. Thus, the Panel concludes that Respondent has
not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)
(finding that without demonstrable evidence to support the assertion that a
respondent is commonly known by a domain name, the assertion must be
rejected); see also Dana Corp. v. Safineh Co., FA 222043 (Nat. Arb. Forum Mar.
1, 2004) (“The <dana-co.org> domain name is registered, in part, to ‘Dana Co.’
Because of Complainant’s extensive holding of international registrations of the
DANA mark, including Respondant’s territory of Iran, the panel may infer that
Respondant is not commonly known as ‘Dana’ or ‘Dana Co.’ despite the WHOIS
domain name registration information pursuant to UDRP Policy ¶ 4(c)(ii).”).

Moreover, the Panel interprets Respondent’s offer to sell the domain name
registration 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. Nat’l
Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of rights and legitimate interests in the domain name is
further evidenced by Respondent’s attempt to sell its domain name registration to
Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the
respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use).

Registration and Use in Bad Faith

The Panel concludes that Respondent has registered the <premierwine.com>


domain name with a view to using it to attract Internet users to its commercial
website by taking advantage of the likelihood of confusion between
Complainant’s PREMIER mark and Respondent’s confusingly similar domain
name. The Panel concludes that such use constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA
93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent
registered and used a domain name confusingly similar to the complainant’s mark
to attract users to a website sponsored by the respondent); see also State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad
faith where the respondent registered the domain name <bigtex.net> to infringe
on the complainant’s goodwill and attract Internet users to the respondent’s
website).

Additionally, the Panel concludes that Respondent’s offer to sell the disputed
domain name registration to Complainant for $100,000 is evidence that
Respondent used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See
World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that the respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any out-of-pocket
costs); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum
Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to
sell it to Complainant for $10,600. This demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(i).”).

Moreover, the Panel concludes that Respondent’s registration of the


<premierwine.com> domain name with both actual and constructive knowledge
of Complainant’s rights in the PREMIER mark is evidence of bad faith under
Policy ¶ 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
constructive knowledge of a commonly known mark at the time of registration);
see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a
trademark or service mark] is constructive notice of a claim of ownership so as to
eliminate 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 Panel
concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <premierwine.com> domain name be


TRANSFERRED from Respondent to Complainant.

Flip Petillion, Panelist


Dated: February 13, 2006

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