Richard Simon Jocelyn Peter
Adams a/k/a Jos Adams v. Truth About Jos
Claim Number: FA0701000907564
PARTIES
Complainant is Richard Simon Jocelyn Peter Adams a/k/a Jos Adams
(“Complainant”), represented by Linda C. Dolan Esq., 255 South Orange
Avenue, Suite 1401, Orlando, FL 32802.
Respondent is Truth About Jos (“Respondent”), represented by M.
Suzanne Green,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <josadams.com>, registered with Network
Solutions, Inc.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 31, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 1, 2007.
On January 31, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <josadams.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 8, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 28, 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@josadams.com by e-mail.
A timely Response was received and determined to be complete on February 28, 2007.
On March 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant Richard Simon Jocelyn Peter Adams, a/k/a Jos Adams,
contends that it has used his name in connection with home design and building
since March 2002. Recently, Complainant
filed for a service mark in International Class 37 for the mark JOS ADAMS. However, Complainant has been using his name
as a service mark since he began his home design and building career. Complainant promotes his homebuilding
endorsements through his Internet website, through feature articles in
newspapers, trade journals, and by word of mouth referrals by satisfied
customers. Complainant spent over ten
thousand dollars and hundreds of hours to promote his name for his home design
and construction services. As a result
of such promotion, and because of his reputation for high quality services,
Complainant has achieved recognition in the marketplace, both on the Internet
and elsewhere.
Complainant contends that the domain name at dispute is identical to
Complainant’s name and to the Mark for which Complainant has applied.
According to Complainant Respondent is using the Domain Name to divert
people who are seeking Complainant in order to disrupt his business, and to
tarnish his reputation. Since the Mark was in use for homebuilding services
since at least 2002, which is prior to Respondent's registration of the Domain
Name in 2005, and since Respondent had reason to know of its use, and since
Respondent does not use the Domain name in conjunction with his business,
Respondent has no legitimate rights in the Domain Name.
Complainant finally contends that Respondent obtained the Domain Name
not for the purpose of using it in connection with a bona fide offering of goods or services, but to tarnish Complainant
and the Mark. Since Respondent
presumably did not provide a telephone number in his application and prevented
Complainant from using his own name and service mark in a corresponding domain
name, Respondent has registered and is using the domain in bad faith.
Respondent stated in his Response amongst others the following:
Respondent
admits that the Complaint included an attachment which demonstrates that the
Complainant recently filed a service mark application for the mark JOS ADAMS. Complainant filed for this service mark well
after Respondent registered the name at issue.
However, and on that ground alone, Respondent has agreed to transfer the
domain name at issue to the Complainant and has repeatedly communicated this
offer to Complainant’s counsel. A Stay
was even executed by the undersigned, but never filed by Complainant, hence the
necessity of this response
…
Respondent
… admits that Complainant attached an application showing that he filed for the mark JOS ADAMS to his Complaint and
on that ground alone Respondent has repeatedly agreed to transfer the domain
name at issue. All other allegations are
denied.
…
The
Respondent respectfully requests that the Administrative Panel find that
Complainant has filed an application for the mark JOS MARK and, on that ground
alone, transfer the domain name to Complainant.
FINDINGS
Respondent has submitted a Response in which
he consents to the transfer of the disputed domain name 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.
Respondent Agrees to Transfer the Disputed Domain Name to Complainant
In its Response, Respondent indicates that it is willing to transfer the <josadams.com> domain name to Complainant. Respondent admits that Complainant has filed a service mark application for the JOSADAMS mark and on that ground alone, agrees to transfer the disputed domain name. Respondent claims that it has “repeatedly” offered to transfer the disputed domain name and even executed a stay of this decision but that Complainant never filed it. It appears that Respondent is agreeing to transfer the disputed domain name registration to Complainant and does not wish to retain it.
The Panel finds that in a
circumstance such as this, where Respondent has agreed to transfer the disputed
domain name, 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
DECISION
Respondent has requested that the Administrative Panel transfer the
domain name to Complainant, and, accordingly, it is Ordered that the <josadams.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: March 20, 2007
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