Skullcandy, Inc. v. Wesley Financial Services
Claim Number: FA1111001413926
Complainant is Skullcandy, Inc. (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is Wesley Financial Services (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skullcandyreviews.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 November 2, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skullcandyreviews.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@skullcandyreviews.com. Also on November 3, 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 November 14, 2011.
On November 22, 2010, 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
Complainant Skullcandy, Inc. (“Skullcandy” or “Complainant”) is an international producer of high quality headphones, earbuds and related accessories featuring innovative designs and color schemes. Since first entering the market in January 2003, Skullcandy has revolutionized the industry, creating a market for its products based on consumer appreciation not only of the quality of its goods, but also of the wide range of individualized and unique designs that make SKULLCANDY® products an attractive form of self-expression. Through Complainant’s sales and marketing efforts, consumers the world over have come to associate the SKULLCANDY brand names with quality head phones, ear buds and accessories. Having built up considerable goodwill in the minds of consumers in connection with the SKULLCANDY trademark, Complainant has registered the SKULLCANDY mark with the U.S. Patent and Trademark Office under Registration Numbers 3,381,050; 3,726,304; 3,880,588; 3,788,707; and 3,168,695. Respondent, Wesley Financial Services, (“Respondent”) registered <SKULLCANDYREVIEWS.COM> (the “Domain Name”) on August 16, 2011. It is currently active and resolves to a pay-per-click (“PPC”) page featuring several hyperlinks to the websites of parties who are not sponsored by or affiliated with Complainant. Complainant has not licensed or otherwise authorized Respondent to use the SKULLCANDY trademark, or any of its other trademarks, in the Domain Name at issue, at the Website, or for any other purpose. Respondent has registered the Domain Name in this case, which is identical and/or confusingly similar to Complainant’s.
B. Respondent
Respondent alleges he registered the domain name to do some reviews of their headsets and ear buds. The purpose being simply because he wanted to share a positive experiences about the SkullCandy products, and secondly because he is an Amazon Affiliate and can sell the SkullCandy products under the Amazon Affiliate agreement. Obviously, his intention is for a “review” themed site. Respondent contends that it is NOT as the Complainant alleges to be some sort of competing site. Quite the opposite is true. Respondent goes on to state, “If my intentions were to compete, then I would have registered a different domain name…” After going through this complaint process, and after some careful thought. He has decided to voluntarily transfer the domain name back to the Complainant - Skull Candy.
C. Additional Correspondance
Respondent sent a letter prior to the Response that says even though he disagrees with the complaint will likely voluntarily transfer this domain to the Complainant.
While Respondent does make contentions under the Policy, Respondent also consents to transfer the <skullcandyreviews.com> domain name to Complainant. After the initiation of this proceeding, 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. As a result, the Panel finds that in a circumstance such as this, where Respondent has contested the transfer of the disputed domain name and 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 <skullcandyreviews.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.”).
Respondent has admitted in his Response to the Complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skullcandyreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret), Panelist
Dated: November 22, 2011
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