Digg Inc. v. Damien Overeem
Claim Number: FA0611000836770
PARTIES
Complainant is Digg Inc. (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diggxxx.com>, registered with Go Daddy
Software.
PANEL
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.
The Honourable Neil Anthony Brown QC as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 8, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 9, 2006.
On November 9, 2006, Go Daddy Software confirmed by e-mail to the
National Arbitration Forum that the <diggxxx.com> domain name is
registered with Go Daddy Software and
that the Respondent is the current registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software 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 November 9, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 29, 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@diggxxx.com by e-mail.
A timely Response was received and determined to be complete on November 29, 2006.
On December 6, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant Digg Inc. contends that:
1. The domain name <diggxxx.com> which is registered in the name of Respondent
is identical or confusingly similar to Complainant’s unregistered service mark,
DIGG, in which Complainant has rights and with respect to which Complainant has
also made application for registration in the United States of America and in
several other jurisdictions worldwide.
2. Respondent does not have any rights
or legitimate interests in the <diggxxx.com>
domain name.
3.
Respondent registered and is using the domain name <diggxxx.com> in bad faith.
4.
The domain name should be transferred from Respondent to Complainant.
B. Respondent
Respondent Damien Overeem contends that he came to register the disputed
domain name by installing a computerised article voting system and by
subsequently deciding to make a website out of it and registering the domain
name <diggxxx.com>. However, being alerted to the fact that this
name might give rise to trademark issues, he changed the appearance of the site
and added a clear statement on each page disclaiming affiliation with
Complainant’s web site. However, now
that the Complaint has been lodged, he realises that he should do more and is
therefore happy to renounce the domain name entirely. He emphasises, however, that he never
intended to impinge on Complainant’s trademark rights. Accordingly, Respondent expressly stipulates
and requests that the domain name <diggxxx.com>
be transferred to Complainant.
FINDINGS
Since at least December 1, 2004, Complainant Digg Inc. has operated a successful
social content website on the internet at <digg.com>. The way
it works is that users submit content, read content submitted by others and
vote for their favorites. Submitted
content that receives enough user votes is promoted to the front page of the
site for Internet users to see and read.
Complainant has more than 500,000 registered users of this service
around the world and it has thus become
one of the world’s best-known online social content providers. Accordingly, it has established
Respondent Damien Overeem registered the disputed domain name
after installing a computerised article voting system and subsequently deciding
to use it in a website. He then
registered the domain name <diggxxx.com>
on July 25, 2006. He subsequently posted
a statement on his site disclaiming affiliation with Complainant and its web
site. As he realises now that he should do more to avoid transgressing the
Complainant’s trademark rights, he stipulates and requests that the domain name
<diggxxx.com> be transferred
to Complainant.
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.
However, it is clear from a reading of the Complaint and Response that
this matter is now a request for a consent order. That
is so because, first, Complainant asks for an order that the domain name be
transferred to it for the reasons set out above. For his part, Respondent says that he never intended to impinge on
Complainant’s trademark rights and therefore also asks for an order that the domain
name be transferred to Complainant. Both
parties are therefore asking for the same order.
It is open to the Panel when faced with such a
situation to forgo the usual UDRP analysis of the three issues set out above
and simply make an order for the transfer of the domain name to
Complainant. That course was followed in
Boehringer Ingelheim Int’l GmbH v. modern
Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Management Limited
Partnership v. PSC Management Limited Partnership (Nat. Arb. Forum June 6, 2005) and in 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.”). The same course was
followed recently by the panel as presently constituted in Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, FA 670051 (Nat. Arb. Forum
May 23, 2006) and Diners Club
International Ltd. v. Nokta Internet Technologies FA 720824 (Nat. Arb.
Forum July 24, 2006) and also by the panel in The Body Shop International plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Nat. Arb. Forum
May 25, 2006). The Panel respectfully
adopts the position as expressed in The
Body Shop International plc v. Agri, Lacus, and Caelum LLC, supra:
Consistent with a general legal principle governing arbitrations as
well as national court proceedings, this Panel holds that it cannot issue a
decision that would be either less than requested, or more than requested by
the parties. Because both Complainant and Respondent request the transfer
of the disputed domain name to Complainant, the Panel must recognize the common
request of the two parties.
Indeed, as has often been said, it would be
unwise to make any other findings in case the same issues were to arise in
later proceedings. Accordingly, the Panel will not make any findings of fact or
compliance or otherwise with respect to the detailed provisions of the Policy,
but will make the only order that is appropriate in the circumstances, which is
an order for the transfer of the domain name to Complainant.
DECISION
The Panel concludes that for the above reasons relief shall be GRANTED.
Accordingly, it is Ordered that the <diggxxx.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: December 20, 2006
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