Association Solutions Network, LLC v. REDACTED FOR PRIVACY
Claim Number: FA1810001809914
Complainant is Association Solutions Network, LLC (“Complainant”), represented by Scott E. Johnson of Moran Kidd Lyons Johnson, PA, Florida. Respondent is REDACTED FOR PRIVACY (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uspca.net>, registered with The Registrar Company B.V.
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 October 1, 2018; the Forum received payment on October 1, 2018.
On October 2, 2018, The Registrar Company B.V. confirmed by e-mail to the Forum that the <uspca.net> domain name is registered with The Registrar Company B.V. and that Respondent is the current registrant of the name. The Registrar Company B.V. has verified that Respondent is bound by the The Registrar Company B.V. 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 October 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2018 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@uspca.net. Also on October 8, 2018, 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 November 2, 2018, 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.
Preliminary Issue: Required Language of Complaint
The Panel notes that the Registration Agreement is written in the Dutch language, thereby making the language of the proceedings Dutch. However, Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in the English language. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent corresponded with Complainant in English. See Compl. Exs. C-E. Additionally, Respondent’s registration information for the disputed domain name locates the Respondent in London, Great Britain. Further, Respondent’s disputed domain name’s resolving website is entirely in English. In those circumstances, the Panel determines that the language of the proceeding shall be English.
A. Complainant
Complainant made the following contentions.
Complainant owns and operates its business in connection to the USPCA mark (standing for “United States Personal Chef Association”). Complainant has rights in the USPCA mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,797,125, registered Aug. 25, 2015). See Compl. Ex. A. The <uspca.net> domain name is identical or confusingly similar to the USPCA mark.
Respondent registered the <uspca.net> domain name on August 3, 2017.
A. Respondent
Respondent did not submit a Response in this proceeding. However, in correspondence from Respondent to the Forum, dated October 13, 2018, October 16, 2018 and again on October 16, 2018, Respondent has apologized to Complainant for the situation and stated unequivocally that it consents to the transfer of the disputed domain name to Complainant.
1. Complainant has established its trademark rights in the USPCA mark by virtue of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,797,125, registered Aug. 25, 2015).
2. Respondent registered the disputed <uspca.net> domain name on August 3, 2017 and after Complainant acquired its rights in USPCA mark.
3. The disputed domain name is identical to the USPCA mark.
4. Respondent has agreed to transfer the disputed 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Consent to Transfer
Respondent has consented to transfer the <uspca.net> domain name to Complainant. However, after the initiation of this proceeding, The Registrar Company B.V. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel has power to find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <uspca.net> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (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 (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 (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.”).
The Panel as presently constituted has also made such orders in cases such as Navy Federal Credit Union v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA1708001743401 (Forum Sept. 13, 2017).
In the present case, it is very clear that Respondent consents in full and without any pre-conditions, to transfer the disputed domain name to Complainant and the Complainant agrees to this course being followed.
In addition to the foregoing principles the Panel has also given consideration to the recent decision in Amazon Technologies, Inc. v. Ezequiel Santos Damasceno / ezequielsdbinario@gmail.com , FA1810001810304 (Forum Oct. 8, 2018) , where the learned panelist wrote persuasively that “… as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name.” This establishes the standing of Complainant and a necessary pre-requisite to having the domain name transferred to it. That is a view that was also expressed by the same panelist in Microsoft Corporation v. Simon Ward / Game Codes Ltd, Forum, FA1312001534229 January 16, 2014 and other decisions where the matter has been discussed at length.
The Panel takes the view that there is merit in that view and that in the interests of consistent decision-making the Panel should follow such an approach.
The first question that arises is whether Complainant has a trademark on which it may rely in this proceeding. Complainant submits that it has rights in the USPCA mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,797,125, registered Aug. 25, 2015). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the USPCA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The second question that arises is whether Respondent’s <uspca.net> domain name is identical or confusingly similar to the USPCA mark. Complainant submits that the domain name is identical and confusingly similar to the trademark. The Panel finds that the disputed domain name is identical to the USPCA mark. The Panel notes that the sole difference between the disputed domain name and the USPCA mark is the addition of a “.net” generic top-level domain (“gTLD”). The addtion of a gTLD to a complainant’s mark is not sufficient to negate a finding that a domain name is otherwise identical or confusingly similar to the trademark in question. See Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, FA 1732602 (Forum July 6, 2017) (“Respondent’s <textron.net> is identical to Complainant’s TEXTRON mark.”). Therefore, the Panel finds Respondent’s disputed domain name is identical to Complainant’s USPCA mark per Policy ¶ 4(a)(i).
Complainant has thus established both of the issues which on the above analysis it is obliged to prove.
In light of the foregoing, Respondent’s consent to transfer the disputed domain name permits the Panel to order that the domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uspca.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 5, 2018
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