Doug Mockett & Company,
Inc. v. OS Domain Holdings IV, LLC c/o Admin
Claim Number: FA0906001267044
PARTIES
Complainant is Doug Mockett & Company, Inc. (“Complainant”), represented by Mina
Hamilton, of Lewis Brisbois Bisgaard & Smith LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dougmocket.com>, registered with Nameking.com, 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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 8, 2009; the
National Arbitration Forum received a hard copy of the Complaint on June 9, 2009.
On June 8, 2009, Nameking.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <dougmocket.com> domain name is
registered with Nameking.com, Inc. and
that the Respondent is the current registrant of the name. Nameking.com,
Inc. has verified that Respondent is bound by the Nameking.com, 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 June 17, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 7, 2009 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@dougmocket.com by e-mail.
A Response was received in electronic copy on July 13, 2009 after the Response
deadline; no hard copy was received. The National Arbitration Forum therefore does
not consider the Response to be in compliance with ICANN Rule 5.
On July 16, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a manufacturer of furniture components that markets its
products under the name DOUG MOCKETT and variations thereof, in which
Complainant claims rights at common law and based upon existing and pending
federal trademark registrations.
Complainant contends that the disputed domain name <dougmocket.com> is identical or confusingly similar to these
marks. Complainant further contends that
Respondent lacks rights or legitimate interests in the domain name, on the
grounds that Respondent is not using it for a bona fide offering of goods or services, has never been commonly
known by the domain name, and is not making a legitimate noncommercial or fair
use of the domain name. To the contrary,
Complainant asserts, Respondent intends to profit from Internet users who are
seeking Complainant but mistakenly visit the website to which the disputed domain
name resolves. Finally, Complainant
contends that the domain name has been registered and is being used in bad
faith. In support thereof, Complainant
asserts that Respondent is intentionally attempting to profit from confusion
among Internet users, and that Respondent’s primary intention was to disrupt
Complainant’s business.
B. Respondent
Respondent acknowledges the late filing of the Response, and requests
that it be considered on the grounds that such consideration would not be prejudicial
to Complainant. The Response does not
address the allegations in the Complaint, but rather merely offers a voluntary
transfer of the disputed domain name:
Respondent owns a portfolio of generic domain names which it acquired
through lawful and fair methods. As part
of its business practice, it has a well-known dispute resolution policy whereby
it invites putative complainants to contact it regarding domain names that
complainants believe violate a trademark.
And, it has a liberal transfer policy whereby it typically agrees to
voluntarily transfer domain names, irrespective of the legitimacy of the
complainant’s arguments, in an effort to avoid the needless time and expense
associated with litigation and administrative hearings. Transfers are typically done within one (1)
business day.
Complainant is a company with a personal name for a trademark that
Respondent had never heard of prior to the filing of this matter. Upon learning of this matter and, pursuant to
its business practices, in an effort to resolve this matter expeditiously and
without a substantial investment of time and expense by either party or the
Panel, Respondent contacted Complainant to offer a voluntary transfer of the
domain name at issue. Complainant did
not accept this proposal.
Therefore, without admitting fault or liability and without responding
substantively to the allegations raised by Complainant herein, to expedite this
matter for the Panel so that its time and resources are not otherwise wasted on
this undisputed matter, Respondent stipulates that it is willing to voluntarily
transfer the Domain Names to the Complainant.
For the reasons stated below, Respondent respectfully requests that the
transfer be ordered without findings of fact or conclusions as to Policy 4(a)
other than the Domain Names be transferred.
FINDINGS
The Panel finds that the disputed domain name
<dougmocket.com> is
confusingly similar to a mark in which Complainant has rights, that Respondent
lacks rights or legitimate interests in respect of the disputed domain name,
and that Respondent registered and has used the disputed domain name in bad
faith.
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 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant 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.
The Panel declines Respondent’s request that it decide the case without
making the findings required by Paragraph 4(a) of the Policy.
The disputed domain name is identical to a
mark in which Complainant claims rights, but for the omission of the final
letter and the addition of the “.com” top-level domain suffix, and Complainant
has offered sufficient evidence to support its claim of common-law rights in
the corresponding mark. Accordingly, the
Panel finds that Complainant has met its burden of proving that the disputed
domain name is confusingly similar to a mark in which Complainant has rights.
Complainant’s contentions relating to rights
or legitimate interests, together with the evidence presented in support
thereof, suffice to make out a prima
facie case that Respondent lacks rights or legitimate interests in respect
of the disputed domain name. The burden
of production therefore shifts to Respondent to come forward with concrete
evidence of its rights or legitimate interests.
See, e.g., Shahrad Yazdani v.
Domain Deluxe, FA1219173 (Nat. Arb. Forum Oct. 2, 2008). In the absence of such evidence, the Panel
finds that Complainant has met its burden of proof on this issue.
Complainant’s contentions and evidence
relating to registration and use in bad faith are similarly sufficient and
unchallenged within this proceeding. The
Panel therefore finds that Complainant has met its burden of proof as to the
bad faith issue.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dougmocket.com> domain name be TRANSFERRED
from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 28, 2009
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