Doug Mockett & Company, Inc. v. OS Domain Holdings IV, LLC c/o Admin
Claim Number: FA0906001267044
Complainant is Doug Mockett & Company, Inc. (“Complainant”), represented by Mina
Hamilton, of Lewis Brisbois Bisgaard & Smith LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dougmocket.com>, registered with Nameking.com, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2009.
On June 8, 2009, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dougmocket.com> domain name is registered with Nameking.com, Inc. and that the Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 June 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 7, 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 firstname.lastname@example.org by e-mail.
A Response was received in electronic copy on July 13, 2009 after the Response deadline; no hard copy was received. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On July 16, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a manufacturer of furniture components that markets its products under the name DOUG MOCKETT and variations thereof, in which Complainant claims rights at common law and based upon existing and pending federal trademark registrations. Complainant contends that the disputed domain name <dougmocket.com> is identical or confusingly similar to these marks. Complainant further contends that Respondent lacks rights or legitimate interests in the domain name, on the grounds that Respondent is not using it for a bona fide offering of goods or services, has never been commonly known by the domain name, and is not making a legitimate noncommercial or fair use of the domain name. To the contrary, Complainant asserts, Respondent intends to profit from Internet users who are seeking Complainant but mistakenly visit the website to which the disputed domain name resolves. Finally, Complainant contends that the domain name has been registered and is being used in bad faith. In support thereof, Complainant asserts that Respondent is intentionally attempting to profit from confusion among Internet users, and that Respondent’s primary intention was to disrupt Complainant’s business.
Respondent acknowledges the late filing of the Response, and requests that it be considered on the grounds that such consideration would not be prejudicial to Complainant. The Response does not address the allegations in the Complaint, but rather merely offers a voluntary transfer of the disputed domain name:
Respondent owns a portfolio of generic domain names which it acquired through lawful and fair methods. As part of its business practice, it has a well-known dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark. And, it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, irrespective of the legitimacy of the complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. Transfers are typically done within one (1) business day.
Complainant is a company with a personal name for a trademark that Respondent had never heard of prior to the filing of this matter. Upon learning of this matter and, pursuant to its business practices, in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue. Complainant did not accept this proposal.
Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the Domain Names to the Complainant. For the reasons stated below, Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Names be transferred.
The Panel finds that the disputed domain name <dougmocket.com> is confusingly similar to a mark in which Complainant has rights, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and has used the disputed domain name in bad faith.
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 declines Respondent’s request that it decide the case without making the findings required by Paragraph 4(a) of the Policy.
The disputed domain name is identical to a mark in which Complainant claims rights, but for the omission of the final letter and the addition of the “.com” top-level domain suffix, and Complainant has offered sufficient evidence to support its claim of common-law rights in the corresponding mark. Accordingly, the Panel finds that Complainant has met its burden of proving that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant’s contentions relating to rights or legitimate interests, together with the evidence presented in support thereof, suffice to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden of production therefore shifts to Respondent to come forward with concrete evidence of its rights or legitimate interests. See, e.g., Shahrad Yazdani v. Domain Deluxe, FA1219173 (Nat. Arb. Forum Oct. 2, 2008). In the absence of such evidence, the Panel finds that Complainant has met its burden of proof on this issue.
Complainant’s contentions and evidence relating to registration and use in bad faith are similarly sufficient and unchallenged within this proceeding. The Panel therefore finds that Complainant has met its burden of proof as to the bad faith issue.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dougmocket.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 28, 2009
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