NGP Software, Inc. v. Planetary Corporation
Claim Number: FA0901001244747
PARTIES
Complainant is NGP Software, Inc. (“Complainant”), represented by Collin B. Foulds, of Gray, Plant, Mooty,
Mooty & Bennett, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <askngp.com>,
registered with Godaddy.com, 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.
Bruce E. O’Connor, as Panelist.
PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 27, 2009; the National Arbitration Forum received a
hard copy of the Complaint on January 28, 2009.
On January 28, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <askngp.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the Policy.
On February 2, 2009, Complainant filed the Complaint by e-mail with the
National Arbitration Forum, and sent a copy by e-mail to the Respondent.
On February 3, 2009 Respondent sent an e-mail to the National
Arbitration Forum, stating that it had no desire or intent to “confuse” anyone
as to the source of the information at its website using the domain name at
issue, and inquiring as to the procedure for relinquishing the domain name to
Complainant. Respondent also sent an
e-mail to Complainant, stating its intent to relinquish the domain name to
Complainant and inquiring as to a preferred method to expedite the transfer.
On February 9, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 2, 2009 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@askngp.com by e-mail.
A timely Response was received and determined to be complete on March
2, 2009.
On March 6, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the trademark NGP.
The domain name at issue is confusingly similar to that trademark.
Respondent has no rights or legitimate interest in the domain name at
issue.
Respondent registered and has used that domain name at its website in
bad faith.
Complainant states that the parties are presently engaged in a legal
dispute in another forum regarding false advertising and related claims, but
that the domain name at issue is not a subject of that dispute.
B. Respondent
Respondent contends that it has disabled its website and consents to
transfer of the domain name to Complainant.
Respondent contends that Complainant’s evidence shows no evidence of an
attempt to misleadingly divert consumers or to tarnish the trademark or service
mark at issue. Rather, Respondent
contends that Complainant’s evidence shows that the website was set up by
Respondent to provide a means by which visitors could ask Nathaniel G. Pearlman
(“NGP”) questions about his company’s deceptive marketing.
Respondent states that there are other legal proceedings between the parties, and that none have been commenced or terminated in
connection with or relating to the domain name at issue.
FINDINGS
Complainant seeks transfer of the domain name
at issue, and Respondent consents to that transfer. As discussed below, there will be no other
findings in this matter.
DISCUSSION
¶ 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.
¶ 4(i) of the Rules states that
the remedies available to Complainant shall be limited to requiring the
cancellation of the domain name or transfer of the domain name to the
Complainant.
¶ 15(a) of 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.”
After the initiation of this proceeding, the registrar, Godaddy.com, Inc., placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain name, but instead agrees to transfer the domain name at issue to Complainant, the Panel may forego the traditional UDRP analysis and order an 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.”).
Other panels have decided to proceed with analysis and findings under ¶
4(a) of the UDRP despite the
Respondent’s consent to transfer. See President and Fellow of Harvard Coll. v.
This Panel finds it appropriate to
grant Respondent’s request to transfer under ¶ 15(a) of the Rules, without
making findings under ¶ 4(a). ¶ 4(i) of
the Policy limits the remedies of Complainant, to either cancellation or
transfer of the disputed domain name.
The consent to transfer gives Complainant the relief to which it is
entitled and that the Panel is authorized to give – nothing less, nothing more.
DECISION
For the foregoing reason, the Panel orders
that the <askngp.com> domain name be TRANSFERRED from
Respondent to Complainant.
___________________________________
Bruce E. O’Connor, Panelist
Dated: March 20, 2009
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