McKee Foods Kingman, Inc. v. Matthew Bostick
Claim Number: FA0710001104121
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com by e-mail.
A Response was received and determined to be deficient on
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.”).
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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