Delaware Sub Shops, Inc. v. Diego Batista / BelaCor Investment Group LLC / Crypto Titans
Claim Number: FA2201001981421
Complainant is Delaware Sub Shops, Inc. (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is Diego Batista / BelaCor Investment Group LLC / Crypto Titans (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, both registered with Launchpad.com Inc., are <delawaresub.com> and <delawaresubs.com>.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2022; the Forum received payment on January 21, 2022.
On January 24, 2022, Launchpad.com Inc. confirmed by e-mail to the Forum that the <delawaresub.com> and <delawaresubs.com> domain names are registered with Launchpad.com Inc. and that Respondent is the current registrant of the names. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 January 24, 2022, the Forum served the Complaint and all associated Annexes, including a Written Notice of the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, as well as to the attention of postmaster@delawaresub.com and postmaster@delawaresubs.com, setting a deadline of February 14, 2022, by which Respondent could file a Response to the Complaint. Also on January 24, 2022, 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 sufficient response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules or principles of law that the Panel deems applicable, without benefit of a sufficient response from Respondent.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In support of its position that the two domain names here in issue be treated in a single proceeding, Complainant asserts the following:
1. the domain names are nearly identical, differing only by a single letter “s;”
2. the pertinent WHOIS record reflects that both domain names have the same registrant, Respondent “Diego Batista;”
3. the registrant’s street address, phone number and e-mail address for both domain names are the same; and
4. these facts demonstrate that the two domain names are under common control.
Inasmuch as Respondent does not dispute these assertions, we conclude that Complainant has adequately established that the two domain names identified in the Complaint “are registered by the same domain name holder” within the contemplation of Rule 3(c). Accordingly, Complainant may proceed to prosecute this proceeding as to both domain names.
Complainant requests that the contested domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a restaurateur specializing in sandwiches.
Complainant has common law rights in the DELAWARE SUBS trademark based on its long-standing use of the mark and strong consumer recognition associated with the mark.
The domain name <delawaresub.com> was first registered on September 5, 2002, while the domain name <delawaresubs.com> was first registered on August 19, 2015.
The domain names are both confusingly similar to Complainant’s DELWARE SUBS mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not authorized Respondent to use its DELAWARE SUBS mark.
Respondent is not using the domain names in connection with either a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent stole both of the domain names, which were originally owned by Complainant.
Respondent does not have any rights to or legitimate interests in either of the domain names.
Respondent knew of Complainant and its rights in the domain names when it registered them in its own name.
Respondent has registered and now uses the domain names in bad faith.
On January 24, 2022, Respondent submitted to the Forum an e-mail message consenting to the transfer of the domain names to Complainant.
B. Respondent
Respondent failed to submit a sufficient Response in this proceeding. However, in an e-mail message addressed to the Forum, Respondent has recited that:
We have been attempting to return these domains to the original owner for quite some time,…. We will gladly release them back to the original owner,…. We want no ties to them….
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel a decision that a domain name be transferred:
i. the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which
Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the
domain name; and
iii. the same domain name has been registered and is being used by
Respondent in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum January 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 Enterprises, 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 [sic] to forego the traditional UDRP analysis and order the transfer of the domain names.
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain names be transferred to Complainant. Rather, in the face of Complainant’s demand that the domain names be transferred to it, Respondent has expressed in writing its willingness to surrender them. The parties have thus effectively agreed in writing to a transfer of the domain names from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that each of the domain names <delawaresub.com> and <delawaresubs.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 24, 2022
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