Shop-Vac USA, LLC v. Todd Bingham / Buy Direct, LLC
Claim Number: FA2112001975698
Complainant is Shop-Vac USA, LLC (“Complainant”), represented by Matthew A. Saunders of Saunders & Silverstein LLP, Massachusetts, USA. Respondent is Todd Bingham / Buy Direct, LLC (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shop-vacs.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2021; the Forum received payment on December 3, 2021.
On December 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shop-vacs.com> 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 December 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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, and to postmaster@shop-vacs.com. Also on December 8, 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.
A timely Response was received and determined to be complete on December 28, 2021.
On January 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SHOP-VAC and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Set out in full, the Response is that:
“We were given permission by the original Shop Vac ownership to acquire and use the domain "Shop-Vacs.com" to pursue Shop-Vac sales. We no longer use the site for sales and will relinquish the domain to the new owners. We do not require arbitration or dispute process. Please forward any guidelines to transfer ownership to Shop-Vac USA, LLC and we will do so within timeframe required. Therefore, we see no need for a panel or decision, we will release the domain freely.”
The findings relevant to the Decision in this matter are that:
1. Complainant manufacturers vacuum cleaners under the trademark SHOP-VAC;
2. the domain name was registered on November 1, 2011, and resolves to a website which appears to have sold Complainant’s (genuine) products; and
3. on August 9, 2021, Complainant sent Respondent a letter demanding, inter alia, transfer of the domain name.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
A preliminary procedural issue arises since Respondent consents to transfer of the domain name. In these circumstances the Panel has discretion to forego application of paragraph 4(a) of the Policy and order an immediate transfer of the domain name (see, for example, Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005).
Those times when a panel has gone on to make a full analysis have been essentially limited to cases where the respondent’s actions were clearly in bad faith (see, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008)) and/or where the complainant has not agreed to transfer by consent and, explicity or implicity, expected a full determination.
Neither is the case here. Albeit that Complainant did not react to the Response, its pre-Complaint letter of demand shows its satisfaction if, amongst other things, the disputed domain name were to be transferred to it. Further, this is not manifestly a case of domain name abuse; on the contrary, (i) Respondent asserts it have approval of a kind, (ii) the use appears at least consistent with that assertion, (iii) Complainant acknowledges that the goods are its genuine goods offered for resale, and (iv) Complainant has taken over a decade since the domain name was registered to bring these proceedings.
The Panel determines that there is no cause to apply paragraph 4(a) of the Policy and instead determines in accordance with Respondent’s intention that the disputed domain name be transferred directly to Complainant without further analysis.
Accordingly, it is Ordered that the <shop-vacs.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
January 11, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page