Converse Inc. and All Star C.V. v. Parisa Mazari
Claim Number: FA1512001650796
Complainant is Converse Inc. and All Star C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United States. Respondent is Parisa Mazari (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <conversecanada.org>, registered with PSI-USA, Inc. dba Domain Robot.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2015; the Forum received payment on December 3, 2015.
On December 4, 2015, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <conversecanada.org> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 December 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@conversecanada.org. Also on December 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant is an American athletic shoe brand with over a century of authentic sports history and footwear innovation. Complainant operates retail stores throughout the United States and in numerous countries around the world. Complainant has registered the CONVERSE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 868,375, registered April 22, 1969), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit D for copies of Complainant’s USPTO registration. The <conversecanada.org> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the geographic term “Canada” and the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to impersonate Complainant, sell directly competitive goods, and obtain Complainant’s customers names and E-mail addresses. The Panel is directed to Attached Exhibit F for screenshots of Respondent’s resolving webpages.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s disputed domain name disrupts and competes with Complainant’s business. Second, Respondent uses the disputed domain name in an attempt to pass itself off as Complainant, thereby violating Policy ¶ 4(b)(iv). Third, Respondent uses the disputed domain name in an attempt to phish for Internet users’ personal information. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent an e-mail to the FORUM indicating that it was willing to transfer the disputed domain names to Complainant as the domain name was neither registered by Respondent, nor used by Respondent. In particular, Respondent wrote to the FORUM on December 18, 2015 by email stating in the subject heading of the email “I consent to the transfer of the domain name to the Complainant” and stating in the text of the email inter alia “I consent to the transfer of the domain name to the Complainant.”.
Preliminary Issue: Consent to Transfer
The FORUM received an e-mail from Respondent on December 18, 2015 indicating unconditionally that it was willing to transfer the <conversecanada.org> domain name to Complainant. Respondent also noted in the email as follows: “While my personal name, address and telephone number have been listed as the registrant of this domain name, I did not register the domain name and I have no connection with the domain name or the website being operated at the domain name. The email address listed as mine, torrentsa12@outlook.com is not my email address. It appears that someone is using my identity in connection with this domain name.”
While Respondent expresses consent to transfer the disputed domain name to Complainant, after the initiation of this proceeding the registrar placed a lock on the domain name and has undertaken not to allow the domain name to be transferred or deleted while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain name in question to Complainant, the Panel will decide to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. 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.”).
Accordingly, for the reasons aforesaid, the Panel will order an immediate transfer of the <conversecanada.org> 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.
It is clear from the above decisions that such an analysis is not necessary where Complainant has sought the transfer of the domain name and Respondent has consented to the transfer of the domain name, as Respondent has done in the present case. Respondent has used these words in response to the Complaint, of which it had notice: “I consent to the transfer of the domain name to the Complainant.”.Respondent has also given the reasons set out above for consenting to the transfer of the domain name.
Those words can be interpreted only as an unequivocal consent by Respondent that the disputed domain name should be transferred to Complainant. As the Panel finds that these are the facts, the Panel also finds that this is an appropriate case to apply the conclusions and reasoning in the above decisions and in other decisions to the same effect, such as Citigroup Inc. v. Texas International Property Associates- NA NA, FA0806001210904 (C) and Scores Holding Company, Inc. v. jason davison, FA1403001551756 (Nat. Arb. Forum, April 26, 2014).
Accordingly, the Panel finds that it is unnecessary and inappropriate to make any other findings of fact or law and that it should proceed forthwith to order the transfer of the disputed domain name to Complainant.
For the reasons set out above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <conversecanada.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 31, 2015
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