Verbal Judo Institute, Inc. v. Joel Francis / Verbal Judo Institute
Claim Number: FA2101001930146
Complainant is Verbal Judo Institute, Inc. (“Complainant”), represented by Rachel L. Pearlman of HESLIN ROTHENBERG FARLEY & MESITI P.C., New York, USA. Respondent is Joel Francis / Verbal Judo Institute (“Respondent”), represented by Arthur Xanthos, Esq, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <verbaljudo.org>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2021; the Forum received payment on January 28, 2021.
On January 28, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <verbaljudo.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, to postmaster@verbaljudo.org, and to Respondent’s Representative as identified in the Complaint. Also on February 1, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On March 3, 2021, the Panel issued an Order For Additional Submissions And Extending Time For Rendering A Decision. On March 8, 2021, Complainant filed its Additional Submissions In Response To FORUM Order.
On March 10, 2021, Respondent’s Representative filed a statement with the FORUM.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Verbal Judo Institute, Inc., provides education services including live and online classes, seminars, and workshops in the field of effective verbal communication and negotiation. Complainant has rights in the trademark VERBAL JUDO based on use in commerce since 1985 and registration with the United States Patent and Trademark Office (“USPTO”) on October 25, 2016 (application filed March 16, 2016). Respondent’s <verbaljudo.org> domain name, created on March 20, 2002 and updated on July 16, 2016, is identical or confusingly similar to Complainant’s mark since it simply adds the “.org” generic top level domain (“gTLD”) to Complainant’s VERBAL JUDO mark.
Respondent does not have rights or legitimate interests in the <verbaljudo.org> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the VERBAL JUDO mark. Respondent is not an employee of, and is no longer a contractor to Complainant. Respondent is an independent contractor who previously entered into an agreement with Complainant to serve as an instructor. However, that agreement has been mutually terminated. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since the domain resolves in an inactive error message.
Respondent registered and uses the <verbaljudo.org> domain name in bad faith. Respondent uses the disputed domain name to suggest it is Complainant’s website or affiliated with Complainant. Additionally, Respondent fails to make active use of the disputed domain name. Furthermore, Respondent had actual knowledge of Complainant’s rights in the VERBAL JUDO mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
By Complainant: Although the <verbaljudo.org> domain name was first created in 2002, it was acquired by Respondent on January 17, 2016 at the very latest, after the passing of Complainant’s Vice President and National Trainer who previously owned the domain name. However, the Whois record for the disputed domain name was updated to reflect Respondent’s ownership in 2018 and its content showed Respondent as the National Director and an Instructor Trainer of the VERBAL JUDO program.
By Respondent: For various reasons, the respondent is not contesting this proceeding and has offered the subject domain to the claimant with no conditions attached. The claimant has not yet accepted that offer.
Respondent has consented to a transfer of the disputed domain name to Complainant.
PRELIMINARY ISSUE: RESPONDENT’S CONSENT TO TRANSFER
The Forum received an email from Respondent’s Representative after having served it with the Complainant. In it, Respondent consents to voluntarily transfer the <verbaljudo.org> domain name to Complainant. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <verbaljudo.org> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (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 (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 (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.”).
In its March 10, 2021 email to the Forum, Respondent’s Representative states: “For various reasons, the respondent is not contesting this proceeding and has offered the subject domain to the claimant with no conditions attached. The claimant has not yet accepted that offer.” Therefore, the Panel has determined that it is not necessary to analyze the present case under the elements of the UDRP and it is ordered that the disputed domain name be transferred to Complainant upon the Respondent’s voluntary consent.
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <verbaljudo.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 10, 2021
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