Pivot Works, Inc. v.
Claim Number: FA0804001181334
Complainant is Pivot Works, Inc. (“Complainant”), represented by Camille
L. Urban, of BrownWinick Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pivot-works.com>, registered with Compana, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2008; and the National Arbitration Forum received
a hard copy of the Complaint on April 28, 2008.
On April 28, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <pivot-works.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 May 5, 2008, Complainant amended the Complaint in response to the National Arbitration Forum’s request. The Complaint was amended as to Respondent’s name; deletion of “www” before references to the disputed domain name; the provision of a signed copy of the Complaint; and the provision of a copy of the ICANN Policy and Table of Contents for all evidence.
On May 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 27, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 27, 2008.
On June 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner Esq., as Panelist.
Complainant requests that the domain name <pivot-works.com>be transferred from Respondent to Complainant.
Respondent requests that the Panel order the immediate transfer of the disputed domain name to the Complainant.
Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 2,641,000 for PIVOT WORKS. The mark was first used in interstate commerce on December 2, 1999 and was registered with the USPTO on October 22, 2002. The goods for which the mark is registered are bearing and seal rebuild kits for motorcycles, all-terrain vehicles, and snowmobiles.
The disputed domain name <pivot-works.com>, registered on November 23, 2005, is identical to Complainant’s mark, with the exception of the addition of a hyphen between “pivot” and “works.” The hyphen does not change the punctuation, meaning or commercial significance of Complainant’s mark.
Complainant alleges that Respondent has no legal rights in the domain name as Respondent is not engaged in any business having any connection to the goods or services represented by Complainant’s mark. On information and belief, Respondent has not been known by the disputed domain name or any derivation of the disputed domain name. Further, Respondent is not engaged in any known legitimate use of the domain name. Complainant alleges that the only conceivable purpose for the disputed domain name and associated content is to divert and/or mislead customers as to the source or origin of specific goods and related information.
Complainant further alleges that Complainant has tendered an offer of good and valuable consideration to Respondent, believed to be well in excess of Respondent’s out-of-pocket costs, in order to obtain transfer of the disputed domain name to Complainant, and that Respondent has refused to respond to said offer. Complainant believes that Respondent’s principal interest in acquiring domain name registrations is to prevent legitimate and lawful trademark owners from exploiting their trademarks, and that this is an established and documented pattern of conduct.
Complainant lastly alleges that Respondent’s sole purpose for registering and acquiring the disputed domain name is to divert and/or to mislead customers as to the source or origin of specific goods and related information. The content presently at the website in question is highly likely to confuse consumers, as the site purports to offer a search function for products on which Complainant’s registered trademark is used (e.g., seals ands bearings), and directs users to third-party sites unaffiliated with Complainant.
B. Respondent contends as follows:
Respondent states in its Response that Respondent agrees to the relief requested by Complainant; that is, that the Panel order the immediate transfer of the disputed domain name to Complainant. Respondent says that this agreement is not an admission to the three elements of ¶ 4(a) of the Policy, but rather is an offer of “unilateral consent to transfer” as prior panels have deemed it”.
Given Respondent’s offer to transfer, and the various options upon which the Panel may proceed, Respondent requests that the Panel be conscious of Rule 10(c)’s caution for true expedition. Therefore, Respondent requests a finding by the Panel that Respondent’s “unilateral consent to transfer” serve as a basis for the Panel’s immediate order for transfer, without an analysis of the elements of ¶ 4(a) of the Policy.
Respondent’s unilateral consent to transfer serves as a basis for the Panel’s immediate order for transfer, without an analysis of the elements of ¶ 4(a) of the Policy.
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.
The Panel has reviewed the statements and documents submitted in accordance with the Policy, Policy Rules, and rules and principles of law that it deems applicable.
In the case at bar, Respondent, in his Response, states that “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.”
Paragraph 4(a) of the Policy requires Complainant to prove the above-cited three
elements of the Policy to obtain an Order that a domain name should be transferred or cancelled.
This Panel rules that Complainant’s burden of proof is alleviated where Respondent has tendered an offer, in the form of an agreement, with Complainant’s request for relief that Respondent’s domain name be transferred from Respondent to Complainant. Lex non requirit verificari quod apparet curiae. The law does not require that to be verified [or proved] which is apparent to the court. Blacks Law Dictionary, Centennial Edition, p. 912. Similarly, the Panel is alleviated of the duty to analyze or verify Complainant’s proffered evidence and may proceed summarily to order the transfer of the disputed domain name.
A prior panel, faced with a like issue, decided to transfer the domain name registration where the respondent stipulated to the transfer. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd.-- Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain registration where the respondent has stipulated to the transfer); 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 that Respondent has consented to judgment in favor of Complainant and that the Panel is thereby authorized to forego the traditional UDRP analysis and to order the immediate transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pivot-works.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Dated: June 18, 2008
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