Norgren, Inc. v. Norgren, Inc. c/o Domain
Administrator
Claim Number: FA0603000670051
PARTIES
Complainant is Norgren, Inc. (“Complainant”), represented by Kathleen S. Herbert, of Setter Ollila, LLC, 2060 Broadway, Suite 300, Boulder, CO 80302. Respondent is Norgren, Inc. c/o Domain Administrator (“Respondent”), represented by Kathleen S. Herbert, 2060 Broadway, Suite 300, Boulder, CO 80302.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norgrenvalve.com>,
registered with Nameview, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 29, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 3, 2006. The Respondent to the Complaint
was <norgrenvalve.com> c/o DOMAIN ADMINISTRATOR.
On March 30, 2006, Nameview, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <norgrenvalve.com>
is registered with Nameview, Inc. and that Norgren, Inc. c/o DOMAIN
ADMINISTRATOR, the Respondent, is the current registrant of the name.
Accordingly, on April 12, 2006 the Complainant submitted an Amended Complaint
reflecting the registrant as Respondent. Nameview, Inc. has verified that
Respondent is bound by the Nameview, 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 April 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), accompanied by a
copy of the Amended Complaint and setting a deadline of May 3, 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@norgrenvalve.com by e-mail.
A timely Response was received and determined to be complete on May 1,
2006.
On May 9, 2006 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Norgren, Inc. contends that:
1. The domain name <norgrenvalve.com>
which is registered in the name of the Respondent is confusingly similar to the
Complainant’s trademark NORGREN, Registration Number 950,639, which was
registered with the United States Patent and Trademark Office on January 16,
1973 and also many other NORGREN trademarks registered in other countries (‘the
Norgren marks’).
2. Respondent does not have any
rights or legitimate interests in the <norgrenvalve.com>
domain name.
3. Respondent registered and used the domain name <norgrenvalve.com> in bad faith.
4.The domain name should be transferred from Respondent to Complainant.
B. Respondent
Respondent Norgren, Inc. concurs with the factual matters alleged by
Complainant and the other statements made by it and requests the same relief as
Complainant, i.e. that the domain name <norgrenvave.com>
be transferred to Complainant.
FINDINGS
Complainant is a prominent manufacturer of
motion and fuel flow control products including valves and is recognized as
such throughout the world. It is the owner of the NORGREN marks and has built
up substantial goodwill and recognition throughout the world by using those
marks.
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; and
(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.
Complainant
states in effect that when the Complaint was filed, which was on March 29,
2006, the Respondent was named as ‘<norgrenvalve.com> c/o DOMAIN
ADMINISTRATOR’. The reason why the Respondent was so described was apparently
that according to the Nameview, Inc. WHOIS data base, the registrant of the domain name was
‘NORGRENVALVE.COM c/o Whois IDentity
Shield’.
Shortly
after the Complaint was filed, the WHOIS information for the domain name was
changed so that the Registrant became Norgren, Inc. c/o Domain Administrator,
using the address in the United Kingdom of a company related to Complainant, so
that it now appears on the record that Complainant itself is the current
Registrant.
However,
Complainant is concerned that it has received no notification from the
Registrar to verify the transfer and that it has no effective control or
verifiable ownership of the domain
name. Moreover, although the administrative contact information lodged with
Nameview, Inc. invites communication by email to ‘rgrinnell@norgren.com’, the
evidence is that Mr. Grinnell maintains he has no involvement or control, to
his knowledge, in the disputed domain name and that in any event the domain
names he administers for the Complainant are registered in the name ‘IMI
Norgren Ltd’ and not ‘Norgren Inc.’
Accordingly,
Complainant took the only action open to it and amended the Complaint, naming
itself, Norgren, Inc., as the Respondent. That was done because the current
WHOIS information reflects the Respondent as the Registrant of the domain name
and Rule 3 (b)(v) provides inter alia
that the Complainant shall:
‘(v) Provide
the name of the Respondent (domain–name holder)’
Complainant
was therefore obliged by the Rules to provide its own name as Respondent.
Respondent
then filed its Response to the Amended Complaint, agreed with the submissions
of Complainant and requested the Panel to order that the domain name be
transferred to Complainant.
It is open
to the Panel when faced with such a situation, which is in effect a request for
a consent order, to forgo the usual UDRP analysis of the three issues set out
above and simply to make an order for the transfer of the domain name to
Complainant. That course was followed in Boehringer
Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb.
Forum Jan. 9, 2003). It was also followed in PSC Management Limited
Partnership v. PSC Management Limited Partnership (Nat. Arb. Forum June 6,
2005) and in 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.”)
Indeed, it
would be unwise to make any such findings in case the same issues were to arise
in later proceedings. Accordingly, the Panel will not make any findings of fact
or compliance or otherwise, but will make the only order that is appropriate in
the circumstances which is an order for the transfer of the domain name to
Complainant.
However, the
same principle results in the Panel not being able to accede to the
Complainant’s other prayer, namely to make an order that the Registrar reveal
the true identity of the original Registrant, ‘NORGRENVALVE.COM c/o Whois IDentity Shield’. There is no
power given to the Panel by the Policy to make such an order, for the only
powers in the Panel are to cancel the domain name or to transfer its
registration to Complainant.
In all the
circumstances, the proper order for the Panel to make is an order for the
transfer of the domain name from Respondent to Complainant.
DECISION
Respondent has stipulated that the domain
name <norgrenvalve.com> be
transferred to Complainant and, accordingly, the Panel concludes that the
relief be GRANTED and it is Ordered
that the domain name <norgrenvalve.com> be TRANSFERRED from
Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 23, 2006
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