National Arbitration Forum

 

DECISION

 

Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited v. K Myers

Claim Number: FA0508000547795

 

PARTIES

Complainants are Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited (“Complainants”), represented by Stephen J. Strauss, of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045.  Respondent is K Myers (“Respondent”), P.O. Box 16184, Newport Beach, California 92659.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <elizabethtaylor.com>, registered with Enom, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on August 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2005.

 

On August 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <elizabethtaylor.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 2, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 22, 2005 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@elizabethtaylor.com by e-mail.

 

An untimely Response was received on September 26, 2005.  Although the Response was not received in hardcopy form as required by Rules ¶ 5(a), the Panel, in its discretion, shall consider the Response. 

 

An Additional Submission from Complainants was received after the deadline for submissions pursuant to Rules ¶ 7.

 

All submissions were considered by the Panel.

 

On October 5, 2005, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A. Complainants, Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company and Interplanet Productions Limited, make the following assertions:

 

            1.            Respondent’s <elizabethtaylor.com> domain name is confusingly similar to Complainants’ ELIZABETH TAYLOR mark.

 

            2.            Respondent does not have any rights or legitimate interests in the <elizabethtaylor.com>domain name.

 

            3.            Respondent registered and used the <elizabethtaylor.com> domain name in bad faith.

 

B. Respondent

Respondent does not contest the allegations of the complaint and agrees to the transfer of the domain name.

 

C. Additional Submissions

Complainant argues that, since Respondent has agreed to transfer the domain name to Complainants, the Panel may decide to forego the traditional UDRP analysis and order the transfer of the domain name.

 

FINDINGS

For the reasons set forth below, the Panel finds that the domain name should be transferred.

 

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 Complainants 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 Complainants 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 has agreed to transfer the <elizabethtaylor.com> domain name to Complainants.  Where Respondent has agreed to comply with Complainants’ request, the Panel may decide to forego the traditional UDRP analysis and order the transfer of the domain name.  See Mary Frances Accessories, Inc. v.  Shoe Salon, FA 528458 (Nat. Arb. Forum Sept. 6, 2005).  See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd., 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 name.”).

 

DECISION

Accordingly, the Panel concludes that relief shall be GRANTED.

 

It is ORDERED that the <elizabethtaylor.com> domain name be TRANSFERRED from Respondent to Complainants.

 

 

Honorable Karl V. Fink (Ret.), Panelist
Dated:  October 18, 2005