Wien, Inc. v. The Scribe Digital Design, Inc.
Claim Number: FA1608001690426
Complainant is Wien, Inc. (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, United States. Respondent is The Scribe Digital Design, Inc. (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wieninc.com>, registered with Network Solutions, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2016; the Forum received payment on August 22, 2016.
On August 23, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <wieninc.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2016 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@wieninc.com. Also on August 24, 2016, 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 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 uses its WIEN mark in connection with its leading staffing and personnel solution company in the southwest United States. Complainant owns common law rights in the WIEN mark based on its prominent use of the mark in the market since 1988, which has resulted in over $50 million in cumulative revenue to Complainant. The <wieninc.com> domain name is identical to Complainant’s mark as it affixes the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has not authorized or licensed Respondent to use the mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the domain name in bad faith. First, Respondent’s use of the domain name is likely to cause confusion and deceive the public. Second, Respondent was well aware of Complainant’s rights in the WIEN mark when it registered the domain name; Complainant contracted with Respondent for website design services. Respondent received payment in full from Complainant for all services, registered the domain name, but failed to transfer control of the domain name to Complainant as agreed.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue – Consent to Transfer
The Forum received a statement from Respondent, which is identified in this proceeding as “Correspondence – Respondent.” In this document, Respondent consents to the transfer of the <wieninc.com> domain name.
However, after the initiation of this proceeding, NETWORK SOLUTIONS, LLC. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. The Panel finds 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 may decide to forego the traditional UDRP analysis and order an immediate transfer of the <wieninc.com> 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 Respondent having consented to the transfer of the <wieninc.com> domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wieninc.com> domain name be TRANSFERRED from Respondent to Complainant
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 14, 2016
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