Paint With Pearl C/O Matthew Donley v. Peter Gjonlekaj
Claim Number: FA1504001615884
Complainant is Paint With Pearl C/O Matthew Donley (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Peter Gjonlekaj (“Respondent”), represented by Sarah Cohen, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kandypearls.com>, registered with Godaddy.Com, Llc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2015; the Forum received payment on April 22, 2015.
On April 24, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <kandypearls.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 April 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2015 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@kandypearls.com. Also on April 28, 2015, 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 May 14, 2015.
On May 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richrd Hill 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 has registered the CANDY PEARLS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,691,226, first use in commerce Oct. 15, 2005, filed May 8, 2014, registered Feb. 24, 2015). Complainant also asserts unregistered common law rights in the mark dating back to October 15, 2005. The mark is used on or in connection with the sale of retail color pigments for automotive use. The disputed domain name is confusingly similar to the CANDY PEARLS mark because the generic top-level domain (“gTLD”) “.com” fails to provide distinguishing relief, and the substitution of the letter “k” for “c” is meaningless as the domain name is still phonetically identical to the mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain names, as indicated by the available WHOIS information. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to host a website that offers competing services to that of Complainant.
Respondent has registered and used the disputed domain name in bad faith. Respondent uses the disputed domain name to intentionally redirect Internet users to its own website for its own commercial gain, by capitalizing on the confusing similarity between its website and Complainant. Respondent had actual notice of Complainant and its rights in the CANDY PEARL mark when it registered the disputed domain name.
B. Respondent
Respondent consents to transfer the disputed domain name. He states:
“Respondent, through counsel, has conferred with Complainant and reached settlement terms pursuant to which Respondent stipulates to transfer the disputed domain name <kandypearls.com> to Complainant in this matter and requests that the Panel enter a decision ordering transfer.”
For the reasons set forth below, the Panel will not make any findings of fact.
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.
In this case, the parties have both asked for the domain name to be transferred to Complainant. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy. 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 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 names.”).
For the reasons set forth above, the Panel holds that it need not analyse this element of the Policy.
For the reasons set forth above, the Panel holds that it need not analyse this element of the Policy.
For the reasons set forth above, the Panel holds that it need not analyse this element of the Policy.
For the reasons set forth above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kandypearls.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 23, 2015
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