National Arbitration Forum

 

DECISION

 

EQmedia Direct, LLC v. EQmedia c/o Domain Administrator

Claim Number: FA0607000747647

 

PARTIES

 

Complainant is EQmedia Direct, LLC (“Complainant”), represented by Joseph P. Costa, of Costa, Abrams & Coate, LLP, 1221 2nd Street, Third Floor, Santa Monica, CA 90401.  Respondent is EQmedia c/o Domain Administrator (“Respondent”), 453 W 24 St, New York, NY 10011.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name in dispute is <instantfisherman.com>, registered with Nameview, Inc.

 

PANEL

 

Bruce E. O’Connor 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.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2006.

 

On July 19, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <instantfisherman.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name.  Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@instantfisherman.com by e-mail.

 

A timely Response was received and determined to be complete on August 9, 2006.

 

On August 14, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name in dispute be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant alleges that it is the exclusive licensee of the trademark INSTANT FISHERMAN that is the subject of U.S. Trademark Registration No. 2,200,264 for a “fishing rod and reel assembly.”[1] 

 

Complainant contends that the domain name in dispute is identical to that trademark.

 

Complainant contends that Respondent has no right or legitimate interest to the domain name in dispute, for three reasons.

 

First, Complainant contends that Respondent’s use of the domain name in dispute was not in connection with any bona fide offering of goods or services.  In support of this contention, Complainant has submitted evidence showing that the domain name in dispute originally was being used on a Web site as a search portal to refer users to other Web sites, including those relating to various fishing equipment and fishing-related sites.  Complainant argues that such use was misleading and diverting Complainant’s customers to competitor sites and creating a likelihood of confusion as to the sponsorship or affiliation of Respondent’s Web site.  Complainant sent a cease and desist letter to Respondent at its contact address and to the Registrar of the domain name in dispute on November 21, 2005, but received no response.

 

Second, Complainant contends that Respondent is not commonly known by the domain name in dispute.  In support of this contention, Complainant has submitted evidence showing that no service, business or individual, other than Complainant and its products marketed and sold under the trademark, can claim to be commonly known by the trademark.

 

Third, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the domain name in dispute.  In support of this contention, Complainant has submitted evidence showing that Respondent continues to operate its Web site as a search portal, albeit without links to fishing-related Web sites of others, and that a user going to Respondent’s Web site is immediately subjected to commercial pop-up and pop-under advertisements.

 

Finally, Complaint contends that Respondent is using the domain name in dispute in bad faith.  In support of this contention, Complainant points out that its trademark registration issued on October 27, 1998 and that the domain name in dispute was registered on July 18, 2005.  Complainant contends that, before and after its cease and desist letter, Respondent has used the domain name in dispute intentionally attempting to attract for commercial gain users to Respondent’s Web site by creating a likelihood of confusion with the trademark as to the source, sponsorship and/or affiliation of Respondent’s Web site.  Complainant also contends that the domain name in dispute is currently being “parked” on Web servers not currently being used by their owners.

 

B. Respondent

 

Respondent’s submission was filed by Nancy Green who represents herself as a founder of Donovan/Green, a consulting firm specializing in branding, marketing and information design solutions, and having a Web site using the domain name <dgtwo.com>.  Ms. Green also states that Respondent’s contact e-mail address is frances@dgtwo.com.  She points out that she is a founding partner of Complainant and that her previous assistant at Donovan/Green was a Frances Wu whose e-mail address was that of Respondent.  She also states that no one to her knowledge instructed Ms. Wu to register the domain name in dispute and that she was unaware of the domain name in dispute until receiving the Complaint.

 

Ms. Green consents to judgment in favor of Complainant and requests that the domain name in dispute be transferred to Complainant.

 

FINDINGS

 

Because Respondent has not contested any of Complainant’s contentions (and Complainant has not sought to contest of Respondent’s contentions), all such contentions are accepted by the Panel as true.

 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Because Respondent has consented to judgment in favor of Complainant and to transfer the domain name in dispute to Complainant, the Panel is entitled to conclude that all requirements of Paragraph 4(a) of the Policy has been proven.  See Sanofi-Aventis v. Day Corp., D2004-1075 (WIPO Mar. 25, 2005) (“[C]onsidering this consent to a transfer of the domain names and other facts of this case, this Administrative Panel concludes that the requirements of Paragraph 4 of the Policy are fulfill (sic).”).  Where Respondent has consented to the transfer of the domain name in dispute, the Panel may decide to forego the traditional UDRP analysis and order the 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); 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.”).

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <instantfisherman.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Bruce E. O’Connor, Panelist
Dated: August 25, 2006

 

 

 

 

 

 

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