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DECISION
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.
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.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
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. 1,082,056 -- PREMIER PARTY PLACE for gourmet food store
services. Registered January 10, 1978.
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.
Reg. No. TMA456738 -- PREMIER CENTER for retail food and liquor
store services. Registered April 26, 1996.
7. Complainant, through its attorneys, sent two cease and desist notices to
Respondent (February 18, 2005 and March 24, 2005).
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.”
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.”).
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.
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.”).
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).
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).”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.