Simms Fishing Products LLC v.
Claim Number: FA0803001163790
Complainant is Simms
Fishing Products, LLC (“Complainant”),
represented by Antoinette M. Tease, of Antoinette M. Tease, P.L.L.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simmsfishingproducts.com>, registered with Compana, LLC.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 18, 2008.
On March 17, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <simmsfishingproducts.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 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 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 21, 2008.
On May 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Respondent is using the mark <simmsfishingproducts.com> as a domain name to direct consumers to its website for resources and information on fishing products, including the types of products sold by Simms Fishing Products LLC. In addition to using <simmsfishingproducts.com> as its domain name, the Respondent also has several references to SIMMS on various pages of its website. Respondent’s use of the <simmsfishingproducts.com> domain name, together with the other references to SIMMS on the site, are intended to and will likely confuse consumers of fishing-related products into believing that the site is affiliated with Simms Fishing Products.
The Respondent has not demonstrated a bona fide offering of goods or services under the SIMMSFISHINGPRODUCTS.COM trademark, or any other trademark confusingly similar to Complainant’s registered marks. Respondent is not commonly known by the domain name. Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. To the contrary, Respondent’s use of the <simmsfishingproducts.com> domain name is for the purpose of misleadingly diverting consumers to Respondent’s website.
The SIMMS brand is well-known brand in the fishing industry. Simms Fishing Products and its predecessors have devoted hundreds of thousands of dollars to protecting and enforcing its trademark rights throughout the world. The SIMMS brands connote the highest quality and most desirable fishing apparel in the industry.
The <simmsfishingproducts.com> domain name was registered by Respondent on December 6, 2005. Simms Fishing Products LLC, through its predecessors, Simms Fishing Products Corporation and the Simms division of Life-Link International, has been engaged in selling fishing-related products to consumers for decades. Thus, the SIMMS brand was clearly well-known both nationally and internationally when Respondent registered the <simmsfishingproducts.com> domain name.
By December of 2005, the
Complainant had obtained
Because Respondent is not in the business of selling fishing apparel or fishing-related products, the Respondent’s use of the <simmsfishingproducts.com> domain name is clearly designed to mislead consumers into believing that Respondent’s site is somehow affiliated with Simms Fishing Products LLC and/or to position Respondent to extort money from Complainant for the domain name. Complainant did send a cease and desist letter to Respondent but has not received a response.
Respondent’s use of the <simmsfishingproducts.com> domain name, without any legitimate business related to the sale of fishing products, has clearly created a likelihood of confusion among consumers of fishing-related products, particularly apparel. Accordingly, Respondent’s use of the <simmsfishingproducts.com> domain name was clearly in bad faith.
Respondent received a cease and desist letter from Complainant via courier and responded on March 11, 2008 that the request had been forwarded to Respondent’s legal representative who would respond. Seven (7) days later Complainant, rather than wait a reasonable period as requested by Respondent, initiated the instant Complaint. Respondent’s counsel, nonetheless, investigated Complainant’s claim to the disputed domain. Respondent’s counsel recommended transfer but that decision was not communicated to Complainant through a clerical error that has now been rectified. 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.
Respondent does not contest any of Complainant’s allegations regarding the
<simmsfishingproducts.com> domain name. Rather, Respondent has consented to judgment in favor of Complainant and authorized the immediate transfer of the subject domain name. Under these circumstances, where Respondent has consented to the transfer of the disputed domain name, the Panel has decided 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.”).
Accordingly, it is Ordered that the <simmsfishingproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: May 13, 2008
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