Foundation Systems of Michigan, Inc. v. YP.COM YP.COM / YP Domain Support / Digital Operations
Claim Number: FA1612001708238
Complainant is Foundation Systems of Michigan, Inc. (“Complainant”), represented by Brian B. Brown of Carlson, Gaskey & Olds P.C., Michigan, USA. Respondent is YP.COM YP.COM / YP Domain Support / Digital Operations (“Respondent”), represented by Laura A. Kees of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <drymichigan.net> and <waterproofingdrymich.com>, registered with Tucows Domains 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <drymichigan.net> and <waterproofingdrymich.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@drymichigan.net, postmaster@waterproofingdrymich.com. Also on December 20, 2016, the 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.
A timely Response was received and determined to be complete on January 9, 2017.
On January 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims common law rights in the DRY MICH mark and has spent over nine years and millions of dollars establishing a strong association between Complainant and the DRY MICH mark. Respondent’s domain names are allegedly confusingly similar to Complainant’s DRY MICH mark. Respondent’s <drymichigan.net> domain name includes the entire DRY MICH mark and differs only through the addition of “igan,” to spell Michigan, and the generic top-level domain name (“gTLD”) “.net.” Respondent’s <waterproofingdrymich.com> is confusingly similar as the domain name as the addition of “waterproofing” describes Complainant’s services.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names. Respondent’s use of the disputed domain names, to resolve to a website offering competing goods and services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name <waterproofingdrymich.com> was created on February 13, 2015 and the <drymichigan.net> domain name was created on April 18, 2016. Respondent has registered and is using the disputed domain names in bad faith. Respondent intended to attract internet users to its website for commercial gain through creating confusion with Complainant’s mark.
B. Respondent
Respondent does not deny Complainant’s contentions of whether the disputed domain names are confusingly similar to Complainant’s marks, whether Respondent has rights or legitimate interests in the domains, or whether the domain names have been registered or used in bad faith. Respondent consents to the transfer of the disputed domain names.
Complainant has set forth claims in accordance with the UDRP, Respondent has not contested those claims and has consented to the relief requested.
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.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
Respondent consents to transfer the <drymichigan.net> and <waterproofingdrymich.com> domain names to Complainant. However, after the initiation of this proceeding, Tucows Domains Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <drymichigan.net> and <waterproofingdrymich.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (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 (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 having not contested Complainant’s allegations under the ICANN Policy, and consenting to the relief requested, the Panel concludes that relief shall be GRANTED.
It is hereby ORDERED that the domain names be transferred from Respondent to Complainant.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: February 2, 2017
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