Reed Elsevier Inc. v. Ilievich Anton Alekseevich / Anton Ilievich
Claim Number: FA1404001552020
Complainant is Reed Elsevier Inc. (“Complainant”), represented by Tara M. Vold of Vold & Williamson PLLC, Virginia. Respondent is Ilievich Anton Alekseevich / Anton Ilievich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capsulemoscow.com>, registered with Regtime Ltd.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2014; the National Arbitration Forum received payment on April 1, 2014. The Complaint was submitted in both English and Russian.
On April 2, 2014, Regtime Ltd. confirmed by e-mail to the National Arbitration Forum that the <capsulemoscow.com> domain name is registered with Regtime Ltd. and that Respondent is the current registrant of the name. Regtime Ltd. has verified that Respondent is bound by the Regtime 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 April 7, 2014, the Forum served the Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of April 28, 2014 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@capsulemoscow.com. Also on April 7, 2014, the Russian language Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant operates a lifestyle trade event offered across a number of cities in the United States and Europe that includes the best high-end, progressive brands and directional, independent designers from around the world. Complainant operates a website at <capsuleshow.com>.
b) Complainant has rights in the CAPSULE mark, used in connection with a lifestyle trade event. Complainant owns a registration for the CAPSULE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,546,742 registered Dec. 16, 2008). The rights in the trademark were assigned to Complainant on December 23, 2013.
c) Respondent’s <capsulemoscow.com> domain name is confusingly similar to Complainant’s CAPSULE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the geographic indicator “Moscow.”
d) Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CAPSULE mark in any way.
e) The <capsulemoscow.com> domain name resolves to a website that provides information on complainant’s premier Capsule trade event. The resolving website utilizes the same stylistic display of Complainant’s CAPSULE mark. Id. Thus, Respondent is using a confusingly similar domain name to redirect Internet users for Respondent’s own commercial benefit.
f) Respondent is using the disputed domain name to divert Internet users and profit from the exploitation of Complainant’s CAPSULE mark, which provides information on Complainant’s Capsule event and includes an exact reproduction of Complainant’s mark.
g) Respondent had knowledge of Complainant’s CAPSULE mark prior to registering the <capsulemoscow.com> domain name, which is evidenced by the content on the resolving website and Respondent’s exact stylistic reproduction of Complainant’s mark.
h) Respondent registered the <capsulemoscow.com> domain name on January 15, 2014.
B. Respondent
Although Respondent failed to submit a Response in this proceeding, Respondent submitted an email in which Respondent expressed a willingness to transfer the domain name.
Preliminary Issue: Consent to Transfer
The National Arbitration Forum received documentation from Respondent which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <capsulemoscow.com> domain name.
Respondent consents to transfer the <capsulemoscow.com> domain name to Complainant. As a result, the Panel finds that in a circumstance such as this, where 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 chooses to forego the traditional UDRP analysis and order an immediate transfer of the <capsulemoscow.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.”); 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.”).
As the Respondent has consented to the transfer of the domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capsulemoscow.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 9, 2014
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