9th Nov 2013
national arbitration forum
J Vineyards Winery, L.P. v. David Perelman / Perloff Inc.
Claim Number: FA1308001515021
Complainant is J Vineyards Winery, L.P. (“Complainant”), represented by John Uilkema of Dergosits Noah LLP, California, USA. Respondent is David Perelman / Perloff Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jwines.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn M. Johnson, Hon. Neil Anthony Brown, Q.C., and James A. Carmody, Esq. (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 16, 2013.
On August 20, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jwines.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on August 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 22, 2013.
Each of the parties timely filed Additional Submissions, and they were considered by the Panel.
On November 1, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson, Hon. Neil Anthony Brown, Q.C., and James A. Carmody, Esq. (Chair), as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jwines.com> domain name, the domain name at issue, is confusingly similar to Complainant’s J VINEYARDS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent timely filed a Response in which it is pointed out that not one of Complainant’s many trademarks is identical to “jwine” or “jwines.” Further, Respondent points out its use of the domain name at issue to support its kosher wine business wherein “J” stands for “Jewish” in connection with many products and services. Finally, Respondent urges that the Panel find that Complainant has been guilty of laches in bringing this case. Respondent seeks a finding of reverse domain name hijacking.
C. Additional Submissions
1. Complainant: The Complainant argues that it is not guilty of laches, that “J” does not describe things Jewish and that <jwines.com> is confusingly similar to J VINEYARDS.
2. Respondent: The Respondent points out that the domain name at issue is more than 14 years old, that “J” is frequently associated with Jewish goods and services and that there has been no showing that Complainant has trademark rights in “J WINE” or “J WINE.”
Complainant owns trademark registrations around the world, including registration with the United States Patent and Trademark Office (“USPTO”) for the J VINEYARDS (Reg. No. 3,640,568 registered June 16, 2009) and J VINEYARDS WINERY (Reg. No. 2,802,402 registered January 6, 2004) marks as well as the stylized “J” mark design (Reg. No. 1,735,792 registered November 24, 1992) and the stylized “JJJJ” mark design (Reg. No. 1,820,781 registered February 8, 1994) for use in connection with wine and wine-related services. Complainant also uses the single letter “J” in connection with numerous related services. For example its online store is called the “J Boutique,” its four wine clubs are called the “J Signature Club,” the “J Experience Club,” the “J Elegance Club,” and the “J Luxe Club,” and its wine tasting room is known as the “J Signature Bar.” Complainant has continuously operated at the <jwine.com> domain name since June of 1998. Respondent registered the <jwines.com> domain name on December 17, 2005.
Respondent acquired the <jwines.com> domain name from its previous owner on August 1, 2011. None of Complainant’s alleged trademarks is identical or even remotely similar to the <jwines.com> domain name. Complainant has no registration for the J WINE or J WINES mark and does not use those terms in a trademark sense to identify its products and services. However, Respondent does extensively use J WINES as a trademark to sell Kosher wines, primarily to the Jewish community.
It is not necessary to make findings with respect to laches, rights or legitimate interests or bad faith registration and use of the <jwines.com> domain name.
Paragraph 15(a) of 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel agrees with Respondent and finds that none of Complainant’s alleged trademarks is identical or even remotely similar to the <jwines.com> domain name. Respondent notes that Complainant has no registration for the J WINE or J WINES mark, or any mark substantially similar thereto. The panel in Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003) found that the <broadcommunications.com> domain name was not confusingly similar to the complainant’s BROADCOM mark because “Complainant is not entitled to protection for every usage of the word ‘broad’ in combination with other terms.” Simply put, there is no evidence whatsoever that Complainant uses J WINE or J WINES as one of its trademarks. Accordingly, the Panel finds that Respondent’s <jwines.com> domain name is not confusingly similar to Complainant’s J trademarks within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has not been established.
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and because the disputed domain name is not confusingly similar to the Complainant’s marks, it is not necessary for the Panel to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking.
Respondent has submitted that the Panel should make a finding of reverse domain name hijacking. The Panel has considered this submission carefully and has had regard to the principles involved. On the one hand, Complainant must have realized before the Complaint was filed that it would not be able to establish that it had a trademark with which the disputed domain name could be said to be identical or confusingly similar. Moreover, there are aspects of the Complainant’s case that seem over exaggerated; for instance, Complainant submitted that Respondent’s logo on its website was “virtually identical” with the design of Complainant’s trademark, whereas there is no similarity between them. On the other hand, it may be that although Complainant’s case was seriously deficient, it nevertheless believed that it was justified in filing the Complaint.
Although the issue is finely balanced, having regard to all of the circumstances and in the exercise of its discretion, the Panel finds that it is not appropriate to make a finding of Reverse Domain Name Hijacking,
The Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jwines.com> domain name REMAIN WITH Respondent.
Hon. Carolyn M. Johnson
Hon. Neil Anthony Brown, Q.C.
Dated: November 9, 2013