Mason Companies, Inc. v. Rosemary Muriuki
Claim Number: FA1102001370622
Complainant is Mason Companies, Inc. (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Rosemary Muriuki (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrityshoemall.com>, registered with GoDaddy.com, Inc.
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.
Hon. Nelson A Diaz (ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 1, 2011.
On February 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <celebrityshoemall.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@celebrityshoemall.com. Also on February 2, 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 February 23, 2011.
On March 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The domain name <celebrityshoemall.com> is confusingly similar to Mason’s SHOEMALL Marks. The only exception to Respondent’s name being identical is the addition of the generic term “celebrity.” The addition of a generic or merely descriptive term does not serve to distinguish a recognized trademark. The registration of a domain for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods. Moreover, Respondent has no legitimate right to the name in that it has not received permission to use the mark. Respondent’s use of a domain name is to trick consumers into visiting its website to offer advertising links is not a bona fide offering of goods or services. Respondent does not have a legitimate interest in the domain name <celebrityshoemall.com>. Mason has not licensed its SHOEMALL Marks to Respondent. Mason’s prior rights to the SHOEMALL Marks precede Respondent’s domain name registration. The domain name <celebrityshoemall.com> clearly does not refer to Respondent. Additionally, there is no evidence Respondent is commonly known by the name CELEBRITYSHOEMALL. Rather, the domain name merely adds a generic or merely descriptive term to Mason’s SHOEMALL mark. Respondent does not have legitimate rights in the name. Respondent is not making a legitimate, non-commercial, or fair use of the domain name in that its purpose in registering and using the domain name is to divert Mason’s web traffic to a search directory that contains advertisements that forward to Mason’s competitors.
B. Respondent
Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant.
The Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <celebrityshoemall.com> 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.”).
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 cancelled 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.
Accordingly, it is Ordered that the <celebrityshoemall.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A Diaz (ret), Panelist
Dated: March 3, 2011
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