Maverick Multimedia, Inc. v.
Demand Domains, Inc.
Claim Number: FA0711001112068
PARTIES
Complainant is Maverick Multimedia, Inc. (“Complainant”), represented by Shannon
M. Jost, of Stokes
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mavericklable.com>, registered with Enom2 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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
On November 20, 2007, Enom2 Inc. confirmed by e-mail to the National
Arbitration Forum that the <mavericklable.com> domain name is
registered with Enom2 Inc. and that the
Respondent is the current registrant of the name. Enom2 Inc.
has verified that Respondent is bound by the Enom2
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 December 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 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@mavericklable.com by
e-mail.
A timely Response was received and determined to be complete on January 2, 2008.
On January 10, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it was founded in 1994. Complainant offers a
complete range of custom printed, roll, fanfold, sheet,
digital and stock labels via its website <mavericklabel.com>. Complainant
has done business using the names Maverick Label and MAVERICKLABEL.COM for many
years. Since at least as early as January 2000 and June 1995, respectively,
Complainant has used the names MAVERICKLABEL.COM and MaverickLabels.com, and
the corresponding domain names, in connection with its business. Since 1995,
Complainant's business has been primarily web-based. Complainant's customers
and vendors communicate with Complainant via its website, and most customer
orders are placed via Complainant's website.
Furthermore Complainant is the owner of the
MAVERICKLABEL.COM, Ser. No. 77/139,326, Filing Date March 23, 2007 for
labels, stickers and tags; namely, pre-printed, custom printed, roll, fanfold,
sheet, digital and stock labels, stickers and tags (016); plastic labels,
stickers and tags (020); printing and designing labels, tags and sticker for
others (042) and
MAVERICK, Ser. No. 77/139,330, Filing Date
March 23, 2007 for printing and designing labels, tags and stickers for others
(042).
Complainant owns and uses the domain names <mavericklabel.com> and
<mavericklabels.com> to direct Internet traffic to its website at <mavericklabel.com>.
Complainant contends that Respondent has registered the domain name <mavericklable.com>, which is
substantially identical and/or confusingly similar to Complainant's MAVERICKLABEL.COM
Mark and <mavericklabel.com> domain name. That Respondent misspelled
"label" by transposing the "e" and "1" in
Complainant's <mavericklabel.com> domain name does not materially change
the commercial impression of the domain name. Indeed, Respondent appears to
have transposed the letters intentionally to capitalize on the traffic of
Internet users who mistype Complainant's domain name.
In this regard Complainant contends that prior decisions under the
ICANN Policy have consistently held that a domain name that is comprised of a
common misspelling of the trademark and domain name of another will be
confusingly similar to the trademark in question and the domain name of the
trademark owner.
Complainant contends that it has offered its products and services in connection with its MAVERICKLABEL.COM mark and <mavericklabel.com> domain name since at least as early as 2000, and in connection with the <mavericklabels.com> domain name since 1995. In contrast, Respondent's <mavericklable.com> domain name was registered on October 26,2007, which is seven (7) years after Complainant established rights in the MAVERICKLABEL.COM mark and registered its <mavericklabel.com> domain name, and twelve (12) years after Complainant's first use of the <mavericklabels.com> domain name.
Upon information and belief, Respondent has never been known by or operated a business under the "MAVERICKLABEL.COM" name and has no trademark or service mark rights in the terms. Respondent has no relationship to Complainant and is not authorized to use the MAVERICKLABEL.COM mark or any variations thereof.
According to Complainant the domain at dispute resolves to a website
providing links to third-party websites that purports to offer labels and other
goods and services, some in direct competition with Complainant, and which includes
"sponsored links" from which Respondent presumably earns revenue.
Such use by Respondent for commercial benefit does not represent either a bona fide offering of goods or services
under Policy 4(c)(i), or a legitimate noncommercial or
fair use under Policy 4(c)(iii).
Thus, Complainant contends that Respondent has no rights or legitimate interests in the <mavericklable.com> domain name and that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further contends that Respondent's effort to disguise its true identity by using the privacy protection of the Registrar is an example of bad faith conduct.
According to Complainant the evidence of record demonstrates that Respondent adopted and registered the <mavericklable.com> domain name intentionally for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or services.
The registration of a domain name that Internet users are likely to employ inadvertently as they misspell Complainant's mark and domain name when attempting to access Complainant's website demonstrates a Respondent's bad faith intent in registering a domain name.
Respondent's selection and registration of a close variation or misspelling of Complainant's MAVERICKLABEL.COM mark and domain names was deliberate. The fact that the Internet website corresponding to the domain name at issue includes various links to third parties offering goods similar to Complainant's indicates that Respondent was aware of Complainant's mark.
Respondent's use of the <mavericklable.com> domain name in connection with the operation of a commercial website containing several links to third party websites offering products and services in competition with Complainant demonstrates bad faith
Respondent
stated the following response:
“[a.] Respondent is the registrant of the domain name <mavericklable.com>.
[b.] When Respondent assumed ownership in the domain name <mavericklable.com>, it had no knowledge of Complainant’s claimed trademark rights in the <mavericklable.com> domain.
[c.] Respondent has a policy against holding domain names in derogation of legitimate rights holders.
[d.] In accordance with Respondent’s policy against holding domain names in derogation of legitimate rights holders, on November 30, 2007, corporate counsel for Respondent spoke with counsel for Complainant via a telephone call, explaining that it was unaware of Complainant’s purported rights in this domain at the time of registration of <mavericklable.com> and offered immediate transfer of the domain to Complainant.
[e.] On November 30, 2007, corporate counsel for Respondent sent an email to counsel for Complainant reiterating Respondent’s desire for a quick and amicable settlement in this matter and again offered immediate transfer of the <mavericklable.com> domain to Complainant. See Annex A.
[f.] On November 30, 2007, counsel for Complainant responded via email clarifying the correct domain in dispute and acknowledging receipt of Respondent’s offer to transfer the <mavericklable.com> domain. See Annex A.
[g.] On December 5, 2007, corporate counsel for Respondent spoke with counsel for Complainant and was notified that Complainant had no intention of suspending the current proceeding and was not interested in settlement at that time. Complainant agreed to reconsider and discuss Respondent’s offer to transfer the domain with Complainant. Corporate counsel for Respondent sent counsel for Complainant a recap of this conversation via email. See Annex A.
[h.] Corporate counsel for Respondent received an email from counsel for Complainant on December 6, 2007, which stated Complainant was not interested in agreeing to a temporary suspension of the current proceeding so that Respondent could simply transfer the domain to Complainant. See Annex A.
[i.] Throughout this dispute, Respondent has acted with the utmost good faith, responding promptly upon receipt of this action and offering immediate transfer the domain name <mavericklable.com>.
[j.] In light of the foregoing, Respondent respectfully requests that the Panel dismiss the complaint inasmuch as Respondent has acted only in good faith. Upon dismissal, Respondent agrees to immediate transfer <mavericklable.com> to Complainant.
[k.] In the alternative, Respondent respectfully requests that the Panel refrain from making any formal finding that Respondent acted in “bad faith.” Rather, Respondent respectfully requests that the Panel simply endorse Respondent’s offer to transfer <mavericklable.com> to Complainant.
FINDINGS AND 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.”
Preliminary Issue: Consent to Transfer the
Subject Domain Name
Respondent does not contest any of Complainant’s allegations regarding
the <mavericklable.com>
domain name. Rather, Respondent has consented to
judgment in favor of Complainant and authorized the immediate transfer of the
subject domain name. The Panel
finds that in a circumstance such as this, where Respondent has consented to
the transfer of the disputed domain name, the Panel may decide to forego the
traditional UDRP analysis and order the immediate transfer of the 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
Having established and determined that the requests of the parties in
this case are identical, in that Respondent does not contest Complainant’s
remedy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mavericklable.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 24, 2008
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