'WineMonthClub.com' owner toasts to WIPO victory

International

In Wine of the Month Club Inc v Calef, a World Intellectual Property Organization (WIPO) panel has held that a US federal trademark registration for the word mark WINE OF THE MONTH CLUB does not preclude another from using the domain name 'WineMonthClub.com'.

Wine of the Month Club Inc obtained a US federal registration for the word mark WINE OF THE MONTH CLUB in August 1988 for use in connection with mail order services for the distribution of wine. It has used the mark continuously since March 1972. It also registered and is using the domain name 'WineoftheMonthClub.com'. Kris Calef registered the domain name 'WineMonthClub.com' in October 1998 to host a website marketing goods under the banner headed "The International Wine of the Month Club". Wine of the Month Club filed an action with WIPO seeking transfer of the domain name 'WineMonthClub.com'.

The panel rejected the complaint, finding that Wine of the Month Club had failed to establish that Calef had registered the disputed domain name in bad faith. The panel found that Calef had used the domain name "in a manner that is entirely descriptive of his business, that is, a service supplying wine to members on a monthly basis". Further, the panel noted that Calef had registered several other domain names that include the phrase 'of the month', which sell goods on a monthly basis. This fact, together with the widespread usage of the term 'wine of the month club', indicated that he had not registered the domain name in bad faith.

Accordingly, the panel denied the complaint.

Annie D'Agostino, Kilpatrick Stockton LLP, Atlanta

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