Blueprint Studio, LLC d/b/a Bergman & Bowen v. George Rudderow
Claim Number: FA2103001935607
Complainant is Blueprint Studio, LLC d/b/a Bergman & Bowen (“Complainant”), represented by Gregory S. Bernabeo of FisherBroyles, LLP, Pennsylvania, USA. Respondent is George Rudderow (“Respondent”), represented by Carol S. Harding of Earp Cohn, PC, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bergmanandbowen.com> (“Domain Name”), registered with Tucows Domains Inc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2021; the Forum received payment on March 5, 2021.
On March 8, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <bergmanandbowen.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2021 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 postmaster@bergmanandbowen.com. Also on March 12, 2021, 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 April 5, 2021. On April 9, 2021 Complainant filed an Additional Submission in this matter which, given the Respondent’s consent to transfer, it has not been necessary to consider.
On April 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant, Blueprint Studio, LLC d/b/a Bergman & Bowen, is a provider of interior design, kitchen design, and cabinetry installation services in Pennsylvania and New Jersey. Complainant asserts common law rights in the BERGMAN & BOWEN mark through its use of the mark in commerce since March 2020. Respondent’s <bergmanandbowen.com> domain name is identical or confusingly similar to Complainant’s BERGMAN & BOWEN mark, only differing by substituting the ampersand (&) for the word “AND” between the words “BERGMAN” and “BOWEN,” along with adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bergmanandbowen.com> domain name as it is not commonly known by the Domain Name and is neither an authorized user or licensee of the BERGMAN & BOWEN mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to redirect users to the <mainstreetcabinet.com> domain name, which is owns and operates to sell products that compete with Complainant’s business.
Complainant argues that Respondent registered and uses the <bergmanandbowen.com> domain name in bad faith. Complainant states that it provided cabinetry/cabinetry installation services through Respondent’s business, Main Street Cabinet Company, from 2011 to 2017 and continued to do business with Respondent from 2017 through September of 2020. Complainant rebranded to BERGMAN & BOWEN and began selling their own line of cabinets. Given the competitive nature of their business, Complainant argues that Respondent likely registered the <bergmanandbowen.com> domain name to disrupt Complainant’s business and seek commercial gain. Additionally, given their previous business relationship, Respondent possessed actual knowledge of Complainant’s rights in its mark prior to registering the Domain Name.
B. Respondent
Respondent does not accept the allegations set out in the Complainant but indicates that it is ready and willing to transfer the Domain Name to the Complainant. In particular Respondent maintains the <bergmanandbowen.com> domain name was registered in connection with a business relationship between the parties.
Respondent consents to transfer the <bergmanandbowen.com> domain name to Complainant. However, after the initiation of this proceeding, Tucows Domains Inc., Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the Domain Name while this proceeding is still pending.
In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <bergmanandbowen.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
As the remedy of the Complainant and the request of the Respondent both sought to transfer the Domain Name from the Respondent to the Complainant, the Panel concludes that such relief shall be GRANTED.
Accordingly, it is Ordered that the <bergmanandbowen.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 13, 2021
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