American Petroleum Institute v. Lynn Matthews
Claim Number: FA1307001507800
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Lynn Matthews (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apiq1.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2013; the National Arbitration Forum received payment on July 1, 2013.
On July 3, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <apiq1.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 July 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@apiq1.com. Also on July 8, 2013, 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 July 29, 2013.
On July 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 contends as follows:
Complainant has registered the API mark, used in connection with its lobbying association and certification programs within the oil and gas industry.
Complainant certifies various oil and gas companies that meet its standards, while providing information about legislation and other industry-related news.
Complainant uses the registered API SPEC Q1 REGISTERED mark to identify its certification services.
Respondent has registered the <apiq1.com> domain name, which adds the generic top-level domain to the mark along with the Complainant’s marks.
Respondent is not commonly known by the <apiq1.com> domain name. Respondent’s WHOIS information lists “Lynn Matthews” as registrant and Respondent’s business is known as “Key Management Consulting.” Respondent is not authorized or licensed to make use of Complainant’s trademarks in domain names.
Respondent uses the <apiq1.com> domain name to operate a competing business. Respondent sells consulting and certification services to Internet users, employing Complainant’s marks for its own gain.
Respondent’s use of the <apiq1.com> domain name to operate a competing business evidences a bad faith attempt to disrupt Complainant’s business.
Respondent operates its own oil and gas consulting business on the <apiq1.com> domain name, creating a false impression of Complainant’s affiliation with the domain name.
Respondent had actual knowledge of Complainant’s rights, as evidenced by the content of the <apiq1.com> domain name’s websites.
B. Respondent
Through two informal email responses from Respondent to the dispute resolution provider, Respondent effectively contends as follows:
Respondent has taken down the website at <apiq1.com>.
Respondent intends that the at-issue domain name be transferred to Complainant as soon as possible.
Complainant has trademark rights in API mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the at-issue domain name.
Respondent has unequivocally agreed to transfer the domain name to Complainant.
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.
Consent to Transfer
Given the congruity of the issues and fact pattern in the instant case with that in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd., decided by this Panel earlier this year, the Panel adopts the relevant part of its Universal Protein Supplements Corporation decision almost verbatim below. See FA1471116 (Nat. Arb. Forum January 2, 2013).
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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. 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.”)
As a prerequisite to obtaining the relief requested even where, as here, Respondent consents to such relief, Complainant must nevertheless demonstrate under Policy ¶4(a)(i) that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. That Complainant does. Complainant establishes rights in the API mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, the <apiq1.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name is constructed by adding “q1” after Complainant’s mark, and then appending the generic top-level domain, “.com,” to the resulting string. These trivial changes are insufficient to distinguish the at-issue domain name from Complainant’s API mark under Policy ¶4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Since the at-issue domain name is confusingly similar to Complainant’s registered trademark, it is outcome determinative that Respondent unequivocally agrees to transfer the at‑issue domain name to Complainant.
Given the foregoing and as discussed below, the Panel sees no basis for including any substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in the instant decision. When a respondent consents to transfer its domain name, judicial economy dictates that the arbitrating panel simply proceeds to grant Complainant’s requested relief in recognition that there is no dispute between the parties regarding the domain name’s ultimate disposition. The “consent to transfer” situation is somewhat analogous to where a complainant withdraws its complaint. In both cases there is no need for the arbitrating panel to issue a decision based on the merits of either Policy ¶4(a)(ii) or ¶4(a)(iii).
Some panels may disagree with this Panel’s position and urge that even though a respondent consents to transfer an at-issue domain name, the panel in such cases should nonetheless proceed to a decision containing analysis under Paragraph 4(a)ii and/or 4(a)iii. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel states:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
While the Graebel Van Lines panel suggests that allowing a domain name to be transferred by consent without complete paragraph 4(a) analysis shields cybersquatters from adverse findings, this Panel respectfully considers such concern to be misplaced. Rather, this Panel is of the opinion that the UDRP’s charge is limited to determining whether or not an at-issue domain name should be transferred from a respondent.
Judicial economy and the intent of the UDRP to provide an abbreviated low cost process to settle domain name disputes demands the expeditious and efficient resolution of such disputes to the extent reasonably possible. A respondent that consents to a complainant’s requested relief allows the parties, the dispute resolution provider, and the Panel, to dispense with having to consume time and resources on matters that are unessential to resolving the dispute. See Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc. D2008-1406 (WIPO December 8, 2008) (finding that “[w]hen a respondent consents to transfer … it serves little purpose to expend the panel's and the parties resources in an exercise which will have no impact on the ultimate outcome of the decision process.”). In Tokyu, like in the instant case, the respondent’s consent to transfer was unequivocal and express.
Furthermore where, as here, the respondent consents to the complainant’s requested relief such respondent’s submissions will typically offer little or no substantive challenge to the Paragraph 4(a) claims made by the complainant. In such cases it is likely that the response will be less effective in addressing Paragraph 4(a) concerns, if addressed at all, than where the respondent decides to defend its domain name on the merits. Conclusions drawn from analysis under Paragraph 4(a)ii and 4(a)iii that are based on the usually terse response of a respondent who has agreed to transfer its domain name are thus of dubious validity.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied, or the case dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What may be equated to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and the complainant has established rights in a confusingly similar or identical at-issue domain name, then only if surrounding circumstances call into question the cogency of the respondent’s consent need a panel proceed to engage in additional Paragraph 4(a) analysis. Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
Having established that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and further having established that Respondent consents to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apiq1.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 30, 2013
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