BBY Solutions, Inc. v. Zip.ca / Curt Millar
Claim Number: FA1012001365325
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Zip.ca / Curt Millar (“Respondent”), represented by Glen A. Bloom of Osler, Hoskin & Harcourt LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cinemanowmovies.com>, registered with 3684458 CANADA, INC. d/b/a QUARK.CA INTERNET SERVICE.
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 (the "Forum") electronically on December 28, 2010; the Forum received payment on December 29, 2010.
On January 3, 2011, 3684458 CANADA, INC. d/b/a QUARK.CA INTERNET SERVICE confirmed by e-mail to the National Arbitration Forum that the <cinemanowmovies.com> domain name is registered with 3684458 CANADA, INC. d/b/a QUARK.CA INTERNET SERVICE and that Respondent is the current registrant of the names. 3684458 CANADA, INC. d/b/a QUARK.CA INTERNET SERVICE has verified that Respondent is bound by the 3684458 CANADA, INC. d/b/a QUARK.CA INTERNET SERVICE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cinemanowmovies.com. Also on January 12, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 27, 2011.
An Additional Submission was received from Complainant on February 1, 2011. An Additional Submission was received from Respondent on February 4, 2011.
On February 1, 2011, 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.
A. Complainant
Complainant operates a digital entertainment service under the CINEMANOW mark, which has been in operation for over ten years. The mark is registered on the Principal Register of the U.S. Patent and Trademark Office. Respondent is the registrant of the disputed domain name <cinemanowmovies.com>. Complainant alleges that this domain name is confusingly similar to Complainant’s CINEMANOW mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain name, on the grounds that Respondent is not commonly known by the name, has no legitimate connection to Complainant’s mark, and is not currently using the domain name for a website. Complainant contends that the domain name was registered and is being used in bad faith on the grounds, inter alia, that Respondent is a provider of services similar to those offered by Complainant under its CINEMANOW mark, and Respondent has previously used the disputed domain name to divert customers seeking Complainant’s services to Respondent’s own website.
B. Respondent
Respondent consents to the transfer of the disputed domain name to Complainant without admitting that the requirements set forth in Paragraph 4(a) of the Policy have been met. In the event that the Panel decides to proceed with an analysis as to whether the requirements of Paragraph 4(a) have been established, however, Respondent requests that it be provided an opportunity to supplement its Response.
C. Additional Submissions
In its Additional Submission, Complainant requests that the Panel make findings that the requirements of Paragraph 4(a) have been met and order transfer of the disputed domain name, and reiterates allegations made in the Complaint. Respondent’s Additional Submission reiterates Respondent’s request that the Panel grant the relief requested by Complainant without analyzing whether the requirements of Paragraph 4(a) have been met. Neither Additional Submission was solicited by the Panel, and in the Panel’s view they shed little or no additional light on the matter before the Panel.
In light of Respondent’s consent to transfer the disputed domain name, the Panel finds that Complainant is entitled to the requested transfer.
Paragraph 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Where a Respondent unilaterally consents to transfer a domain name in a proceeding under the Policy, the Panel may forego analyzing the elements set forth in the Policy and simply order a transfer of the domain name. On the other hand, where the consent to transfer is itself offered in bad faith (for example, to permit a serial cybersquatter to avoid having adverse findings entered against it), the Panel may proceed with the traditional analysis notwithstanding the Respondent’s request. See, e.g., Enterprise Holdings, Inc. v. Muscari Holding Limited / Administration Dom, FA 1346463 (Nat. Arb. Forum Nov. 8, 2010).
The Panel here considers it appropriate to proceed as suggested by Respondent in the interest of efficiency and expedience. The Panel therefore concludes, solely for purposes of this proceeding and without analyzing the specific requirements set forth in Paragraph 4(a) of the Policy, that Complainant has met its burden of proving these requirements and is entitled to the relief it seeks.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cinemanowmovies.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 7, 2011
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