James L. Throneburg v.
Claim Number: FA0803001157267
Complainant is James L. Throneburg (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thurlosocks.com>, registered with Compana, LLC.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2008.
On March 12, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <thurlosocks.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 2, 2008.
On April 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant developed the following arguments:
1. The Accused Domain Name Is Confusingly Similar to Complainant's Mark
Complainant owns valid and enforceable common law
rights in the THORLO mark in the
Further, Complainant owns valid statutory rights in the THORLO mark in the United States by virtue of his licensee's use and his registration of that mark in the United States Patent and Trademark Office (U.S. Trademark Reg. No. 1,119,696) (15 U.S.C. § 1065).
The disputed domain name is strikingly similar to Complainant's THORLO mark. In fact, it is similar to Complainant's mark except that it includes a typographical error and the generic term "socks."
It is well established
that such domain names are confusingly similar to the underlying third-party mark
despite the inclusion of additional terms. See Skyhawke Techs., LLC
2. Respondent Has No Rights Or Legitimate Interests In The Accused Domain Names
Respondent has no preexisting rights in "Thurlo" or "ThurloSocks" as a trademark, service mark or trade name. Hence, it may be presumed that Respondent has no rights or legitimate interests in <thurlosocks.com> as a domain name.
3. Respondent Has Registered And Is Using The Domain Name In Bad Faith
The subject domain name is being "used" inasmuch as an active commercial website offering competing products is accessible via the domain name. The evidence also indicates that Respondent did not register or begin using the subject domain name until no earlier than November 23, 2005 – long after Complainant's THORLOS mark had acquired its fame. Without any pre-existing rights in either "Thurlo" or "ThurloSocks" as a trademark, service mark, or trade name, the only plausible purpose for registering the <thurlosocks.com> domain name is to misdirect individuals seeking Complainant's website to Respondent's website.
Further, Respondent has registered numerous domain names that incorporate third party marks, as evidenced by the over eighty UDRP proceedings brought against it since February, 2007. Although Respondent has consented to some of the transfers resulting from these proceedings, these proceedings serve as evidence of Respondent's consistent pattern of bad faith use and registration of domain names that contain third party marks. Thus, Respondent's actions demonstrate that it has used and registered the subject domain name in bad faith.
Respondent argues as follows: Had Complainant contacted Respondent prior to the institution of the proceeding, it could have saved itself the filing fee and fees for the preparation of the Complaint. Prior to filing the Response, counsel for Respondent attempted to contact counsel for Complainant to attempt to effectuate a quicker transfer of the disputed domain than via a consent to transfer which still takes time for the appointment of the Panel and for the Panel to issue the decision and then there is the 10 business day waiting period before the Registrar is allowed to transfer the domain. Nevertheless, since Respondent was willing to transfer prior to today’s date, Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
In Cartoon Network LP, LLLP v. Mike Morgan, D2005-1132 (WIPO Jan. 5, 2006) the Panel noted that where the Respondent has made an offer to transfer there were numerous ways the Panel could proceed:
(i) to grant the relief requested by the complainant
on the basis of the respondent’s consent without reviewing the facts supporting
the claim See Williams-Sonoma, Inc. v.
EZ-Port, D2000-0207 (WIPO May 8, 2000); see also Slumberland
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis See Qosina Corp. v. Qosmedix Group, D2003-0620 (WIPO Nov. 10, 2003); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Jan. 19, 2001).
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right or because there is some reason to doubt the genuineness of the Respondent’s consent See Koninklijke Philips Electronics N.V. v. Manageware, D2001-0796 (WIPO Oct. 25, 2001); see also Société Française du Radiotéléphone-SFR v. Karen, D2004-0386 (WIPO July 22, 2004); see also Eurobet UK Limited v. Grand Slam Co., D2003-0745 (WIPO Dec. 17, 2003).
The Panel, conscious of Rule 10(c)’s caution for “due expedition” decided that the best and most expeditious course was that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.” See Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000).
For the foregoing reasons, Respondent requests that the Panel orders the immediate transfer of the disputed domain name.
Respondent does in no way contest the transfer claimed by Complainant.
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.
Respondent does not contest any of Complainant’s allegations regarding the <thurlosocks.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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thurlosocks.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: April 22, 2008
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