E. & J. Gallo Winery v. Missy Rosar

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. & J. Gallo Winery v. Missy Rosar

Case No. D2002-0104

1. The Parties

1.1 The Complainant is E. & J. Gallo Winery, a privately owned company

located and doing business at 600 Yosemite Boulevard, P.O. Box 1130, Modesto,

California, USA.

1.2 The Respondent is Missy Rosar, 1652 Audubon Dr., Alexandria, Louisiana,

USA.

2. The Domain Name and Registrar

The domain name at issue is <e-jgallo.com>, which domain name is registered

with Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada.

3. Procedural History

3.1 A Complaint was submitted to the World Intellectual Property Organization

Arbitration and Mediation Center (the "WIPO Center") on January 31, 2002.

The WIPO Center sent the Complainant an acknowledgment of receipt, dated February

4, 2002.

3.2 On February 6, 2002, a Request for Registrar Verification

was transmitted to the registrar, Tucows, Inc. The Registrar confirmed by reply

e-mail that the domain name at issue is registered with Tucows, Inc.; confirmed

that the person identified as the Respondent is the current registrant of the

domain name; provided the full contact details for the domain name registrant;

confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy")

is in effect, and; indicated the current status of the domain name.

3.3 The WIPO Center determined that the Complaint satisfies the formal

requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Panel has independently determined and agrees with the assessment of the

WIPO Center that the Complaint is in formal compliance with the requirements

of the Policy, the Uniform Rules, and the Supplemental Rules. The Complainant

paid the required fees for a single-member Panel on time and in the required

amount.

3.4 Having verified that the Complaint satisfied the formal requirements

of the Uniform Policy and the Uniform Rules, the WIPO Center issued to the Respondent

on February 7, 2002, a Notification of Complaint and Commencement of Administrative

Proceeding (including a copy of the filed Complaint), to both the postal and

email addresses of the Respondent, as provided by the Registrar. Copies of this

notification were sent to the Complainant, the Registrar and ICANN on the same

date. In response to the notification sent to the email address <emeraldiiis@aol.com>,

the WIPO Center received an email message from <MAILER-DAEMON@aol.com>

stating that the email address <emeraldiiis@aol.com> had permanent fatal

errors. In response to the notification sent to the email address <postmaster@e-jgallo.com>,

the WIPO Center received an email message from <MAILER-DAEMON@fred.anythingemail.com>

stating "Sorry, no mailbox here by that name." The WIPO Center did

not receive any response to the notification sent to the postal address of the

Respondent. Having reviewed the communications records in the case file, the

Administrative Panel finds that the WIPO Center has discharged its responsibility

under Paragraph 2(a) of the Uniform Rules "to employ reasonably available

means calculated to achieve actual notice to Respondent."

3.5 Having received no Response from the Respondent within the specified

time in the Notification of Complaint, on March 6, 2002, the WIPO Center issued

to both parties a Notification of Respondent Default. On March 19, 2002,

the WIPO Center issued to both parties a Notification of Appointment of

Administrative Panel and Projected Decision Date. This Notification informed

the parties that the Administrative Panel would be comprised of a single Panelist,

Mr. Perry J. Viscounty, Esquire.

4.Factual Background

4.1 The Complaint asserted, and provided evidence in support of, and

the Administrative Panel finds established, the following facts.

The Complainant’s Activities

4.2 The Complainant is the largest wine-producing organization in the

world. Since 1962, the Complainant has sold over 4,000,000,000 bottles

of wine bearing the Complainant’s Marks throughout the world. In 1999, the Complainant

produced more wine than the entire country of Chile or the entire country of

Australia. The wines bearing Complainant’s trademarks are the largest selling

brands of wine in the United States.

4.3 The Complainant’s operations date back to 1933, when brothers Ernest

and Julio Gallo began producing wine in the Central California community

of Modesto. Since then, the Gallo family has produced wines that have been honored

with hundreds of awards in competitions in the United States and around the

world. Among other accolades, Gallo has been named "Winery of the Year"

and "International Winery of the Year."

The Complainant’s Trading Name and Trademarks

4.4 The Complainant’s flagship trademarks are GALLO and ERNEST & JULIO GALLO

(collectively referred to hereafter as the "GALLO Marks"). The GALLO

Marks have been used continuously in the United States since 1933, and

have been used in eighty-one countries elsewhere in the world since the 1960’s.

The GALLO Marks are used either "simpliciter" or in combination with

other words such as GALLO Livingston Cellars, GALLO Classic Burgundy, ERNEST

& JULIO GALLO, GALLO OF SONOMA, etc. Currently, Gallo owns nine federal

registrations for trademarks for wines that include the name "Gallo"

in the United States, the earliest of which dates back to 1953. The Gallo

Marks are also registered in the individual states of the United States and

in 120 other countries throughout the world.

4.5 The GALLO Marks have been the subject of three (3) significant judicial

decisions in the United States. In all three cases, the courts recognized that

the GALLO Marks are extremely strong and entitled to the broadest degree of

protection.

4.6 In Gallo Winery v. Gallo Cattle Company, 12 U.S.P.Q.2d 1657

(E.D. Cal. 1989), the owners of the E. & J. Gallo Winery sued their

younger brother who was using a GALLO trademark on cheeses. The Court concluded

that: "The GALLO brand is universally known both nationally and in California,

and has become an extraordinarily strong and distinctive mark...." (p.

1667). This holding was affirmed by the United States Court of Appeals for the

Ninth Circuit. 967 F.2d 1280 (9th Cir. 1992). The court enjoined

the use of GALLO on cheeses.

4.7 In Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp.

457 (N.D. Cal. 1991), the Court agreed with the findings in the Gallo Cattle

Company case. It further found that the GALLO Marks had "virtually universal

recognition," that they had "virtually unparalleled strength,"

and that they were a "mighty fortress" of a trademark in the United

States. The court enjoined the use of GALLO NERO on wines.

4.8 In Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403

(E.D.Cal. 1994), the court enjoined a Mexican company from selling playing

cards, board games, confetti, party streamers and poker chips. The court found

that over 60 years of extensive use and advertising had made Gallo's famous

marks "extraordinarily strong and distinctive," and that the defendants'

use of GALLO would destroy the distinctiveness and commercial value of the marks.

4.9 The fame of the GALLO Marks has also been recognized by courts outside

of the United States. In Gallo Winery v. Mighty Corporation, No. 93-850,

the Regional Trial Court of Makati City Branch 57 (Philippines) issued a decision

in December 1998, ordering Mighty Corporation to cease and desist from

using E. & J. Gallo Winery’s registered and well-known GALLO trademark

and from committing other acts of unfair competition against the Gallo Winery

by manufacturing and selling their cigarettes in the domestic or export markets

under the GALLO trademark. In so ordering, the Court held that the GALLO Marks

were "internationally well known" and entitled to broad protection

under Article 6 bis of the Paris Convention and Article 16 of the TRIPS

agreement.

4.10 The Gallo Marks have also been the subject of a UDRP Proceeding. In E & J. Gallo

Winery v. Oak Investment Group, WIPO Case

No. D2000-1213 (November 13, 2000), the Panel ordered that the

domain name <winegallo.com> be transferred to E. & J. Gallo Winery

upon a showing that the Respondent had registered and used the domain name in

bad faith.

Respondent’s Identity and Activities

4.11 The Respondent is the registrant of the domain name <e-jgallo.com>,

the Registrar of which is Tucows, Inc. The Respondent registered the domain

name <e-jgallo.com> on or about May 21, 2001. When an individual

visits the website corresponding to the domain name at issue, he is connected

to a site with the heading "E-J Gallo.com" emblazoned in blue, unstylized

text in the upper left-hand corner of the site. The site apparently is being

used as a receptacle for the Respondent’s electronic mail. The site has never

been and currently is not being used in connection with the bona fide

sale of goods and services.

4.12 Prior to the issuing of the Complaint, the Complainant made substantial

efforts to identify and contact the Respondent, using the details then current

on the Registrar’s registry. On June 1, 2001, counsel for the Complainant

sent a letter to the Respondent informing her that the trademarks ERNEST &

JULIO GALLO and GALLO were federally registered trademarks of the Complainant,

and demanding that the Respondent permanently cease all use of the <e-jgallo.com>

domain name and transfer the domain name to the Complainant. On June 22, 2001,

counsel for the Complainant received a telephone message from the Respondent's

alleged son who stated that the Respondent had recently deceased. The Respondent’s

alleged son stated that as soon as he gained control of the Respondent’s estate

he would consider transferring the domain name to Complainant. On June 25, 2001,

counsel for the Complainant sent a letter to the Respondent’s alleged son, Brent

Payne, requesting that he provide written assurances by July 5, 2001,

that he would transfer the <e-jgallo.com> domain name. When his assurances

had not been received by July 5, 2001, counsel for the Complainant

sent a second letter, requesting that counsel receive written assurances by

July 20, 2001. This request also was ignored by Mr. Payne. On

August 3, 2001, counsel for the Complainant and Mr. Payne had

a telephone conversation in which Mr. Payne agreed to transfer the domain

name to the Complainant by September 15, 2001. Counsel for the Complainant

sent a letter to Mr. Payne confirming this agreement. The Complainant has

never received a signed copy of this agreement from Mr. Payne.

5.Contentions of the Parties

The Complaint

5.1 The Complainant contends that it has trademark rights in ERNEST

& JULIO GALLO and GALLO for wine. The Complainant further contends that

it has rights in the trading name and trademark, E. & J. GALLO.

5.2 The Complainant contends that the Respondent’s domain name <e-jgallo.com>

is identical or virtually identical to and confusingly similar to the Marks

listed in paragraph 5.1, supra.

5.3 The Complainant contends that the Respondent has no rights or legitimate

interest in respect of the domain name <e-jgallo.com>.

5.4 The Complainant contends that the Respondent’s domain name has been

registered in bad faith and that the continued use of the Respondent’s domain

name is likely to cause confusion among consumers both as to ownership of the

trademark and sponsorship of the website.

The Response

5.5 The Respondent did not file a Response to the Complaint.

6.Relevant Provisions of the Uniform Policy

6.1 Paragraph 4(a) of the Uniform Policy requires the Complainant to

establish the following three elements in order to obtain relief:

(i)[The Respondent’s] domain name is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights; and

(ii)[The Respondent] has no rights or legitimate interests in respect of the

domain name; and

(iii)[The Respondent’s] domain name has been registered and is being used in

bad faith.

6.2 Paragraph 4(b) of the Uniform Policy further identifies, in particular

but without limitation, four circumstances, which, if found by the Administrative

Panel to be present shall be evidence of the registration and use of a domain

name in bad faith:

(i)circumstances indicating that you have registered or you have acquired the

domain name primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to the Complainant who is the owner of the trademark

or service mark or to a competitor of that Complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain

name; or

(ii)you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii)you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv)by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the Complainant's mark as to the

source, sponsorship, affiliation, or endorsement of your web site or location

or of a product or service on your web site or location.

7.Findings and Conclusions

Identical or Confusingly Similar Domain Name.

7.1 The domain name at issue is <e-jgallo.com>. The Complainant has

registered trademarks for ERNEST & JULIO GALLO and GALLO and uses E. & J. GALLO

as a trading name and trademark. The Respondent’s use of a hyphen rather than

an ampersand to separate the letters "e" and "j" does little

to distinguish its domain name from the various Marks in which the Complainant

has rights. In E. &. J. Gallo Winery v. Oak Investment Group, WIPO

Case No. D2000-1213 (November 12, 2000), the Panel found that the domain

name <winegallo.com> was confusingly similar to the Complainant’s Marks.

In the instant case, the Panel finds that the domain name <e-jgallo.com>

is arguably even more similar to the Complainant’s Marks and therefore likely

to create the impression that the Respondent’s domain name is related to the

Complainant. Therefore, the Panel finds that the Respondent’s domain name is

nearly identical and confusingly similar to the Complainant’s Marks.

Respondent’s Rights or Legitimate Interests in the Domain Name

7.2 The Respondent has not provided evidence of circumstances of the

type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances

giving rise to a right to or legitimate interest in the domain name. The Respondent

has no prior rights in the name "e-jgallo" and is not affiliated with

the Complainant or authorized by the Complainant to use its mark. The only apparent

reason the Respondent might have for selecting the domain name <e-jgallo.com>

is to trade off of or otherwise benefit from the Complainant’s goodwill. The

Panel therefore finds that the Respondent has no rights or legitimate interests

in the domain name.

Domain Name Registered and Used in Bad Faith

7.3 As discussed supra, paragraph 4(b) of the Uniform Policy identifies

certain non-exclusive circumstances which, when found to exist by the Panel,

constitute evidence of bad faith. The Complainant argues, and the Panel hereby

finds, that the Respondent’s site has never been and is currently not being

used in connection with the bona fide sale of goods and services. The

failure to use a domain in any manner constitutes bad faith. See Telstra

Corp. v. Nuclear Marshmallows, WIPO Case

No. D2000-0003 (February 18, 2000), (finding that passive holding

of a domain name is evidence of bad faith); Leland Stanford Junior Univ.

v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000);

Revlon Consumer Prods. Corp. v. Yosef, WIPO

Case No. D2000-0468 (July 27, 2000), (citing cases where Panel

found inaction constitutes bad faith).

7.4 Furthermore, when Respondent registered the domain name at issue she knew

or should have known of the existence of E. & J. Gallo Winery and the famous

GALLO Marks. The Complainant has been using the GALLO Marks since as early as 1933.

The Gallo Marks are used in connection with one of the most popular brands of

wine in the United States. The Complainant’s wines have been sold for decades

in Louisiana, where Respondent resides. See Document Technologies v. International

Electronic Communications, Inc., WIPO

Case No. D2000-0270 (June 6, 2000), (Respondent’s knowledge of Complainant’s

mark at the time of registration of the domain name suggests bad faith); Anheuser-Busch

Incorporated v. Gilina Rogers A/K/A Gilinda Granger, WIPO

Case No. D2001-0134 (April 4, 2001), (the registration and use of domain

names with the intent to lead ordinary consumers to an illegitimate website

by creating confusion as to ‘source, sponsorship, affiliation, or endorsement’

demonstrates bad faith).

7.5 As discussed above, counsel for the Complainant sent numerous letters

to the Respondent informing it that GALLO was a federally registered trademark

of Complainant, and demanding that Respondent permanently cease all use of the

<e-jgallo.com> domain name. Respondent never responded to the Complainant’s

letters. Failure to respond to a Complainant’s efforts to make contact provides

"strong support for a determination of ‘bad faith’ registration and use."

Encyclopaedia Britannica v. Zuccarini, WIPO

Case No. D2000-0330 (June 7, 2000).

7.6 In light of the facts discussed above, the Panel concludes that the

Respondent’s passive holding of the domain name in this particular case satisfies

the requirement of paragraph 4(a)(iii) that the domain name "is being used

in bad faith" by Respondent.

8.Decision

8.1 The Panel decides that the Complainant has proven each of the three

elements in paragraph 4(a) of the Uniform Policy. Accordingly, the Panel requires

that the domain name <e-jgallo.com> be transferred to the Complainant.

Perry J. Viscounty

Sole Panelist

Dated: April 3, 2002

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