National Arbitration Forum

 

DECISION

 

Haggerty Enterprises, Inc. v. Xedoc Holding SA c/o Domain Admin

Claim Number: FA0701000904173

 

PARTIES

Complainant is Haggerty Enterprises, Inc. (“Complainant”), represented by Lori S. Meddings, of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Suite 3300, Milwaukee, WI 53202-4108.  Respondent is Xedoc Holding SA c/o Domain Admin (“Respondent”), represented by Paul Raynor Keating, of Renova, Ltd., Balmes 173 2/2, Barcelona 08006, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lavalamp.com>, registered with Fabulous.com Pty Ltd.

 

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.

 

R. Glen Ayers, Jr. served as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2007.

 

On January 29, 2007, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <lavalamp.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 February 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 22, 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@lavalamp.com by e-mail.

 

A timely Response was received and determined to be complete on February 15, 2007.

 

A timely Additional Submission from Complainant was received and determined to be complete on February 20, 2007.

 

A timely Additional Submission from Respondent was received and determined to be complete on February 20, 2007. 

 

On February 22, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr. as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.                 Complainant

 

Complainant has asserted that it holds a number of marks, including “lava,” “lava lite,” “lava brand,” “lava world international,” and “lava.”  These all relate to the novelty lamp known as the lava lamp or lava light. 

 

Respondent has registered <lavalamp.com>.  Complainant asserts that the mark and name are identical or confusingly similar.  Complainant alleges that Respondent has no rights or legitimate interests in the name and assert that Respondent’s use for a “Sponsored Results” page that redirects Internet users to both Complainant’s goods and similar goods made by others does not give Complainant any rights in the name. 

 

Further, Complainant asserts that Respondent’s registration is in bad faith. 

 

B.         Respondent

 

Respondent, although its response contains some discussions defensive of its conduct, has stated that it “is more than willing to transfer the domain name to Complainant.” 

 

C.        Additional Submissions

 

            Pursuant to NAF Supplemental Rule 7, timely additional submissions, accompanied by the appropriate fee and submitted in either hard copy or electronic form, are considered.  Both Respondent and Complainant made additional submissions that were timely received and in accordance with NAF Supplemental Rule 7.  Respondent cites to a number of World Intellectual Property Organization (“WIPO”) cases in support of its allegation that the Panel may not accept additional submissions.  NAF Panels are not governed by WIPO rules or policies, therefore, any WIPO cases used by Respondent in affirmation of its claim that additional submissions must at the request of the Panel are not controlling.

 

Both parties have filed additional submissions.  Basically, Complainant has requested the Panel to make complete conclusions and findings.  This appears to be largely because Respondent has asserted, but goes on to challenge the mark once again.  Respondent in its additional submission makes a strong objection to additional filings. 

 

FINDINGS

While the Panelist has considered the additional submissions, the Panelist finds that findings and conclusions are not necessary.  Respondent has agreed to transfer the <lavalamp.com> domain name registration to Complainant and is willing to forego further action.  Respondent does not contest any of Complainant’s allegations regarding the dispute domain name.  Therefore, the Panelist may find that in circumstances where Respondent has agreed to transfer and does not contest any of Complainant’s allegations, the Panelist may decide to forego the traditional UDRP analysis and give 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.”). 

 

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 the transfer of the domain name, no discussion is included. 

 

Identical and/or Confusingly Similar

 

Rights or Legitimate Interests

 

Registration and Use in Bad Faith

 

 

DECISION

Respondent having consented to the transfer, relief shall be GRANTED.

 

                                                                                                           

 

R. Glen Ayers, Jr., Panelist

 

Dated:   February 27, 2007

 

 

 

 

 

 

 

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