National Arbitration Forum

 

DECISION

 

H. Savinar Luggage Co., Inc. v. ANY-Web Ltd.

Claim Number: FA0612000874177

 

PARTIES

Complainant is H. Savinar Luggage Co., Inc. (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips, LLP, 11355 West Olympic Boulevard, Los Angeles, CA 90064.  Respondent is ANY-Web Ltd. (“Respondent”), represented by Paul Raynor Keating, Balmes 173 2 2, Barcelona 08006 Spain.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <savinar.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned 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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.

 

On December 22, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <savinar.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 January 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2007 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@savinar.com by e-mail.

 

A timely Response was received and determined to be complete on January 22, 2007.

 

On January 29, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant, H. Savinar Luggage Co., is a large distributor and seller of luggage products.  It has been offering its products and services since 1916.  Complainant’s 14,000 square- foot warehouse contains the largest selection of nationally advertised brands of luggage, briefcases, laptop cases and travel accessories at competitive prices.

 

Complainant owns a U.S. trademark registration (No. 2,343,459) for the mark H. SAVINAR LUGGAGE CO. INC., as used in connection with retail luggage store services (see Exhibit B to Complaint and Declaration of Lewis Savinar), and alleges that it has common law rights in the marks SAVINAR LUGGAGE and SAVINAR. 

 

In late spring 2006, Complainant learned that Respondent was using the disputed domain name <savinar.com>.  On July 5, 2006, Complainant sent a demand letter to Respondent (see Exhibit D to Complaint and Declaration of Lewis Savinar), who did not respond.  According to Complainant, Respondent’s website at the <savinar.com> domain name resolves into a generic search engine containing links to various other websites offering for sale, or otherwise related to, various categories of products and services, including luggage offered by Complainant’s competitors.  See Exhibit F to Complaint.

 

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s marks.  It notes that the domain name incorporates the term SAVINAR, which constitutes the dominant portion of Complainant’s marks.

 

Complainant further contends that Respondent has no rights or legitimate interests in the domain name.  According to Complainant, Respondent is not personally known as “Savinar,” is not making any bona fide offerings of goods or services under the name “Savinar,” and is not making a legitimate noncommercial or fair use of the domain name.  Complainant maintains that “Respondent is clearly using the name and trademark of a recognized business in order to generate revenue by linking users to other commercial websites through the misdirected traffic at <savinar.com>” and “no doubt gains financially by the misleading diversion of consumers to commercial websites linked to, and advertised on, <savinar.com>.”

 

With respect to the issue of “bad faith” registration and use, Complainant urges that Respondent is using the goodwill attached to Complainant’s name and marks to attract, for commercial gain, internet users to its commercial website, within the meaning of paragraph 4(b)(iv) of the Policy.

 

B. Respondent

 

In its Response, Respondent “expressly stipulates and agrees that the Domain Name be transferred to Complainant” and contends that, in view thereof, the disputed domain name should be transferred without further findings of fact or liability.  Respondent further indicates, however, that its “stipulation is made notwithstanding that Respondent has a legitimate right to the name and uses same in good faith….”

 

According to Respondent, the disputed domain name was registered by its automated software system which registers U.S. surnames as domain names.  Registered surname domain names are used to provide free email service.  Unfortunately, due to technical problems, a number of surname domain names, including <savinar.com>, were not added to the existing mail system.  Instead, the system portrayed the resulting webpage as a set of general links providing contextually related advertising and other information.  Respondent notes that it is in the process of correcting the domain name but argues that its use of the domain name is nevertheless legitimate and in good faith.  Attached to the Response as Exhibit C is a printout of the disputed site that does not show any link to Complainant or its competitors.

 

FINDINGS

For the reasons set forth below, the Panel will not make any findings of fact.

 

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.”

 

In this case, Complainant has requested that the disputed domain name be transferred to it and Respondent  “expressly stipulate[d] and agree[d] that the Domain Name be transferred to Complainant.”  Under such circumstances, and consistent with the decision of other panels, the Panel decides that it may order the transfer of the domain name to Complainant without engaging in the traditional UDRP analysis.  See, e.g., The Body Shop International plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Nat. Arb. Forum May 25, 2006); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004); Boehringer Ingelheim International GmbH v. Modern Limited – Cayman Web Development, FA 133625 (Nat. Arb. Forum Jan. 9, 2003); Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, FA 170616 (Nat. Arb. Forum Sept. 8, 2003); The Royal Bank of Scotland Group plc v. rbspayments, FA 728805 (Nat. Arb. Forum July 7, 2006); Disney Enters. Inc. v. Morales, FA 475191 (June 24, 2005).  As held in these cases, where, as here, both parties have requested that the domain name in issue be transferred, the panel has no scope to do anything other than to recognize the common request and has no mandate to make findings of fact or of compliance with the Policy.  

   

DECISION

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

 

 

 

Jeffrey M. Samuels, Panelist
Dated: February 12, 2007