Alcoa, Inc. v. CK Ventures, Inc.
Claim Number: FA1108001401511
Complainant is Alcoa, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is CK Ventures, Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alcoafasteningsystem.com> (“the Domain Name”), registered with FABULOUS.COM PTY LTD.
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.
Clive Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2011; the National Arbitration Forum received payment on August 3, 2011.
On August 3, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 August 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@alcoafasteningsystem.com. Also on August 4, 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 August 25, 2011.
On September 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the world's leader in aluminum smelting capacity and leads the world in alumina production and capacity. It serves the aerospace, automotive, building, construction, commercial transportation, and industrial markets, bringing design, engineering, production, and other capabilities of its businesses as a single solution to customers.
Complainant advises that it is the owner of its family of marks which are registered in the United States and throughout the world. The U.S. trade mark ALCOA FASTENING SYSTEMS was registered in 2004 and the Australian trade mark ALCOA FASTENING SYSTEMS was registered in 2003 (collectively herein referred to as "Complainant’s Marks").
Complainant contends that it has made extensive use of Complainant’s Marks by providing the Complainant's goods and services throughout the United States and due to the extensive use and registration of Complainant’s Marks around the world, such marks have become famous under the laws of the United States.
Complainant states that the Domain Name was registered in July 2005, which is after the registration of Complainant’s Marks, and that it resolves to a website featuring various pay-per click advertisements for various goods and services, and making specific reference to Alcoa's main product line, aluminum.
Complainant states that it has not given Respondent any license, permission, or authorization by which Respondent could make any use of Complainant’s Marks.
Complainant contends that the Domain Name is identical and confusingly similar to Complainant’s Marks because it consists of a typographical error of its ALCOA FASTENING SYSTEMS trade mark, in that the “s” has been deleted from the word “systems” and the <.com> TLD has been added.
Complainant also contends that Respondent lacks rights or legitimate interests in the Domain Name as it has never been commonly known by any of Complainant's Marks nor any variations thereof.
Complainant submits that Respondent has registered the Domain Name with either actual or constructive knowledge of Complainant's rights in Complainant’s Marks.
In conclusion Complainant submits that it has legitimate trade mark rights to the Domain Name; and that as well as the Domain Name being confusingly similar and/or nearly identical to Complainant's Marks, Respondent has no legitimate interests in the Domain Name, and further that the Domain Name was registered, and has been used, in bad faith.
B. Respondent
Respondent denies that it registered the Domain Name in bad faith and states that it registered the Domain Name when it was deleted and expired and became available for registration. Respondent asserts that it had no intention to target Complainant or improperly use its trade mark when it registered the Domain Name, did not register the Domain Name with Complainant's trademark in mind, and never intended to target or profit from Complainant's trademark. Respondent requests, in the interest of saving the cost involved in defending its rights to the Domain Name, that the Panel transfer the Domain Name to Complainant.
Respondent notes that where a Respondent stipulates to transfer a domain name to a complainant, the Panel may immediately transfer the domain name, without issuing an opinion on the merits of the case. Accordingly, Respondent respectfully requests that the Panel issue an order transferring the Domain Name to Complainant, without undergoing an analysis under Policy.
Transfer of the Domain Name to Complainant is ordered on the basis that Respondent has consented to and Complainant has not resisted such 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 three elements to obtain an order that a domain name should be cancelled or transferred. However, as noted above, in the present case Respondent has consented to a transfer of the Domain Name to Complainant.
It is open to the Panel to find that in a circumstance such as this, where Respondent has not contested the transfer of the Domain Name but instead agrees to its transfer, that it is appropriate to 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.
Alternatively, the Panel may decide that Complainant has not implicitly consented in its Complaint to the transfer of the Domain Name without a decision on the merits by the Panel. It is of course well known that the “consent-to-transfer” approach is but one way for cybersquatters to try to avoid adverse findings against them.
Nevertheless, in the present case the Panel is minded to order an immediate transfer, for the following reasons:
· Respondent has given its unilateral and unambiguous consent on the record to the remedy sought by Complainant, thereby enabling the Panel to order transfer at its discretion;
· Complainant has had the opportunity to file an additional submission and contend that immediate transfer is, for some reason, inappropriate. It has chosen to not do so;
· Respondent denies that it registered the Domain Name in bad faith and states that it registered the Domain Name when it was deleted and expired and became available for registration;
· It appears that the Domain Name was registered as far back as July 2005 and no explanation is given as to why it has taken this long for the Complaint to be lodged; and
· There is no suggestion that Respondent is a repeat or serial cybersquatter or has in the past or is now using the “consent-to-transfer” process to avoid adverse findings.
For all of the foregoing reasons the Panel concludes that it is appropriate that transfer be made on the basis requested and that relief should be GRANTED.
Accordingly, it is Ordered that the <alcoafasteningsystem.com> domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott, Panelist
Dated: September 14, 2011
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