NATIONAL ARBITRATION FORUM

DECISION

 

The Lunada Bay Corporation v. Lunada Bay Corporation

Claim Number: FA0601000632820

 

PARTIES

Complainant is The Lunada Bay Corporation (“Complainant”), represented by Diane M. Reed, of Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth Floor, Irvine, CA 92614.  Respondent is Lunada Bay Corporation (“Respondent”), represented by Diane M. Reed, of Knobbe, Martens, Olson & Bear, LLP2040 Main Street, Fourteenth Floor, Irvine, CA 92614.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <beccaswim.com>, registered with Compana, Llc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Carol M. Stoner, Esq.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically

on January 20, 2006 citing Manila Industries, Inc. as the respondent, and the National Arbitration Forum received a hard copy of the Complaint on January 20, 2006.

 

On January 20, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <beccaswim.com> domain name is registered with Compana, Llc and that the Owner is The Lunada Bay Corporation, so that it appears that Complainant

is the current Registrant of the domain name, having been amended by the former owner,  Manila Industries, Inc.  Compana, Llc has verified that Respondent is bound by the Compana, Llc 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”). However, the disputed domain name is password protected, and, as such, Complainant is unable to access the domain name to assert control over same. Therefore, Complainant amended the Complaint on January

25, 2006 to cite Lunada Bay Corporation as Respondent, and to request an official transfer of the disputed name registration to Complainant. 

 


On January 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of

February 15, 2006 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@beccaswim.com by e-mail.

 

A timely Response was received and determined to be complete on January 26, 2006.

 

On February 1, 2006, pursuant to Complainant’s request to have the dispute decided

by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant, The Lunada Bay Corporation, contends that:

 

1.  Respondent’s <beccaswim.com> domain name is confusingly similar Complainant’s various registered marks, including BECCA, BECCA (Stylized) and BECCA SWIM, collectively referred to as the Lunada Bay Marks. 

 

            2.  Respondent does not have any rights or legitimate interests in the                                          <beccaswim.com> domain name.

 

3.  Respondent registered and used the <beccaswim.com> domain name in bad faith.

 

B. Respondent, Lunada Bay Corporation, has consented to the transfer of the

disputed domain name to Complainant.

 

FINDINGS

Complainant, The Lunada Bay Corporation, is a California corporation which designs, manufactures and distributes a broad line of clothing, swim wear and accessories under the Lunada Bay Marks. The Lunada Bay Corporation is the owner of U.S. Trademark Registration No. 2,440,880 for the BECCA (Stylized) mark which was issued on April 3, 2001; and is also the owner of U.S. Registration No. 2,664,570 for the BECCA mark which issued on December 17, 2002.  These registrations constitute constructive use of the Marks, conferring rights of priority, nationwide in effect, as of their respective filing dates. Further, through their use, advertising and development, these Marks have created substantial goodwill, throughout the world, for The Lunada Bay Corporation.

 

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 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.

 

 

The WHOIS information currently reflects that the <beccaswim.com> domain name   

is registered to The Lunada Bay Corporation. Prior to initiation of the Complaint, the Registrant of the disputed domain name was listed as Manila Industries.  After the Complaint was filed, the WHOIS contact information for the disputed domain name

was changed to Complainant’s name, so that is appears that Complainant is the current Registrant of the domain name.  However, Complainant is unable to exercise dominion and control over their domain name, as same is password protected. 

 

Therefore, Complainant has amended its Complaint to cite Lunada Bay Corporation

as Respondent, consistent with the current WHOIS information.

 

Respondent, Lunada Bay Corporation, in response to the amended Complaint, agreed

to authorize the transfer of the domain name to Complainant.  In a procedural case such as this, the Panel finds that when such a stipulation is made, the usual UDRP

analysis would be a useless thing; and therefore, without further analysis, orders the transfer of the domain name registration to Complainant.  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.

 

In PSC Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum

June 6, 2005), a previous UDRP decision, involving not only nearly identical circumstances, but also featuring Manila Industries, Inc as the originally-listed Registrant, the Panel authorized transfer of the disputed domain name, wherein the complainant and the respondent were listed as the same party, that is, PSC Management Limited Partnership, and the transfer request was uncontested. 

 

DECISION

Respondent having agreed to the transfer, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <beccaswim.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Carol M. Stoner, Esq., Panelist

Dated: February 15, 2006

 

 

 

 

 

 

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