Mr. David Aplin v. David
Aplin & Associates Ltd. c/o Domain Administration
Claim Number: FA0711001106229
PARTIES
Complainant is Mr. David Aplin (“Complainant”), represented by Dena
L. Mitchell, 2300 Oxford Tower, 10235 - 101 Street, Edmonton, AB T5J 3G1,
Canada. Respondent is David Aplin
& Associates Ltd. c/o Domain Administration (“Respondent”), represented by Dena L. Mitchell,
2300
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidaplin.com>, registered with Nameview,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 2, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 17, 2007.
On January 8, 2008, Nameview, Inc. confirmed by e-mail to the
National Arbitration Forum that the <davidaplin.com> domain name is
registered with Nameview, Inc. and that
the Respondent is the current registrant of the name. Nameview, Inc.
has verified that Respondent is bound by the Nameview,
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 January 10, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 30, 2008 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@davidaplin.com by
e-mail.
A timely Response was received and determined to be complete on January 23, 2008.
On February 4, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The Complainant contends as follows:
The Complainant's company and the Respondent are
essentially the same, and so the Complaint need not be decided on its merits,
but rather on the basis of Respondent’s consent to transfer the domain name <davidaplin.com> to the
Complainant.
Complainant is both Complainant and Respondent.
Both Complainant and Respondent request that the at-issue domain name be
transferred to Complainant. A complete analysis of the Policy is
unnecessary. The original registrant,
and the party against whom Complainant sought to file against as Respondent,
changed the registration information to list Complainant as the owner of the
at-issue domain name. This amounts to an agreement to transfer the disputed
domain name to Complainant.
Notwithstanding the foregoing, the Complainant
offers its contentions regarding the three Policy factors:
Identical or Confusingly Similar. The Complainant, Mr.
David Aplin, has provided recruitment services using the "David
Aplin" mark since 1975 and asserts a common law trademark right in the
same. Complainant has established common law rights in this trademark, which
should be protected.
The Complainant submits he has obtained common
law trademark rights in his personal name because he has conducted business
under and by reference to his name on a continuous basis for a significant
number of years.
The Complainant began using the "David
Aplin" mark in 1975, when he commenced providing employment recruitment
services to clients from a home-based business.
The Complainant continued providing employment
recruitment services as a sole proprietor using the "David Aplin"
mark until 1980, when he incorporated and registered David Aplin &
Associates (1981) Ltd. in the
For the past 32 years, the Complainant has built
his personal and business reputation using the "David Aplin" mark by
providing high quality recruitment services to a diverse clientele, and service
agreements have been executed respecting the same. These agreements demonstrate
the recognition of the "David Aplin" mark in connection with these
services by high-profile corporate clients of David Aplin Recruiting. Each year, the Complainant's company budgets
and spends a considerable amount of money to market and advertise the company's
recruitment services using the "David Aplin" mark.
The Complainant also uses the "David
Aplin" mark in the
The Complainant has amassed considerable goodwill
using the "David Aplin" mark and any damage to the same would be
irreparable. "David Aplin" has become synonymous with the provision
of employment recruitment services in
Rights or Legitimate Interests. The Complainant submits that the Respondent
does not have rights or a legitimate interest in the <davidaplin.com> domain name. The Complainant's use of the
"David Aplin" mark predates the registration of the domain name <davidaplin.com> in 2001 by approximately 26 years since the
Complainant has been using the mark since 1975.
The former registrant was operating a website
using the domain name <davidaplin.com>
where the homepage displays hyperlinks to other recruitment and job-seeking
sites. Certain of these links are competitors of David Aplin Recruiting. The
domain name <davidaplin.com>
also contains pop-up advertisements. It is a reasonable inference that the
former registrant receives "pay-per-click" referral fees from these
links and advertisements. It is submitted that such use of the domain name <davidaplin.com> is not a bona
fide offering of goods and services under the Policy, or a legitimate
non-commercial or fair use of the domain name under Policy.
The former registrant is not commonly known by
the domain name under Policy. The former registrant used an Identity Shield
service to block his or her identity in WHOIS and an administrative contact
"care of'” Whois Identity Shield is provided instead. The Complainant has
not licensed or otherwise authorized the former registrant to use the
"David Aplin" mark, and the former registrant is not associated with
the Complainant in any way.
Registration and Use in Bad Faith. The former registrant
was using the <davidaplin.com>
domain name, which is identical to the Complainant's "David Aplin"
mark to divert internet users seeking the services of David Aplin Recruiting to
the former registrant’s own website for commercial gain, presumably through
"pay-per-click" referral fees. This is evidence of a bad faith
registration under Policy.
B. Respondent
The Respondent contends as follows:
The Respondent's name is substantially similar to
the Complainant's company name, David Aplin & Associates Inc. The
Respondent was named in this matter as the result of the registrar of <davidaplin.com>, Nameview Inc.,
disclosing the name of the registrant as David Aplin & Associates Ltd. The
Respondent contends that it did not register the domain name <davidaplin.com> with the registrar
and asserts that upon a complaint being made to the registrar respecting the
domain name, that it transferred the then current registrant of the domain name
to a name that is substantially similar to the Complainant's company name. This
places the Complainant in the awkward position of appearing to have made a Complaint
against itself.
In consideration of the foregoing, the Respondent
hereby agrees and consents to the Complainant's request that the domain name
registration be transferred to the Complainant.
FINDINGS
The Panel finds that the Complainant has
standing to bring this action and that Respondent consents to the domain name
being transferred to Complainant.
The Panel further finds that the former
registrant effectively consented to transfer the registration of the at-issue
domain name to the Respondent and in doing so likewise indicates its consent to
the subsequent transfer of the at-issue domain name by consent of the
Respondent, to the Complainant.
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.
Having determined that the Complainant has
standing to bring this action and that the Respondent is the nominal registrant
of the at-issue domain name, and further that the Respondent consents to the
at-issue domain name being transferred to the Complainant, the Panel is not
required to further review the merits of Complainant’s contentions under the
Policy. It is therefore unnecessary to analyze the merits of the parties’
factual contentions pursuant to paragraph 4(a) of the Policy since the parties
have in effect stipulated that relief should be granted and the Panel should
transfer the at-issue domain-name to the Complainant.
Therefore, the
Panel foregoes the traditional UDRP analysis and orders the at-issue domain
names to be transferred to the Complainant, without more. 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
Having established that the parties are in agreement that the at-issue
domain name should be transferred to the Complainant, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <davidaplin.com> domain name be TRANSFERRED
from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 18, 2008
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