McKee Foods Kingman, Inc. v.
Matthew Bostick
Claim Number: FA0710001104121
PARTIES
Complainant is McKee Foods Kingman, Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littledebbie.org>, registered with eNom, Inc.
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On October 29, 2007, eNom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <littledebbie.org> domain
name is registered with eNom, Inc. and
that the Respondent is the current registrant of the name. eNom, Inc.
has verified that Respondent is bound by the eNom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 28, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@littledebbie.org by
e-mail.
A Response was received and determined to be deficient on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The <littledebbie.org> domain name at issue is confusingly similar to Complainant's marks.
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent filed a Response which consents to the relief requested by Complainant but denies bad faith registration or use of the domain name at issue.
FINDINGS
Complainant and its
predecessors and affiliates have been using the trademark LITTLE DEBBIE in connection with
its snack products for over 45 years. In that connection, Complainant owns numerous
federal trademark registrations for the mark, including but not limited to,
U.S. Reg. Nos. 967,756; 735,443; and 2,594,451. Complainant also has federal trademark registrations
for the well-known LITTLE DEBBIE logo of a red-headed girl in a straw hat, including but not
limited to, U.S. Reg. Nos. 783,765 and 968,788.
Over the years, Complainant has invested
large sums of money in advertising its LITTLE DEBBIE
name and logo, and has developed a substantial degree of goodwill in the marks.
Complainant helps advertise its well-known products on its website at <littledebbie.com>. Further, Complainant has not authorized
Respondent to use the LITTLE DEBBIE mark by license or otherwise.
The Respondent, by
statement in its Response, has surrendered any claim to the domain name at
issue and does not contest the transfer of the <littledebbie.org> domain to Complainant. Specifically, however, the Respondent denies
bad faith in registration or use of the domain, and the Panel finds that there
has been no bad faith involved.
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.”
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) 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) the 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.
PRELIMINARY ISSUE:
Agreement to Transfer
Respondent contends that he has requested that the registrar, eNom, Inc., transfer the <littledebbie.org> domain name to Complainant. However, after the initiation of this proceeding, eNom, Inc. placed a hold on Respondent’s account and cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that, in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <littledebbie.org> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. 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 (Nat Arb. 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 (Nat. Arb. 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.”).
DECISION
Accordingly, it is Ordered that the <littledebbie.org> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 17, 2007
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