Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) v. Alex Lustig
Claim Number: FA1609001696355
Complainant is Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California. Respondent is Alex Lustig (“Respondent”), Oregon.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <clubpenguinisland.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2016; the Forum received payment on September 30, 2016.
On Oct 03, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <clubpenguinisland.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@clubpenguinisland.com. Also on October 5, 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 which was compliant with the requirements of the Policy and its attendant Rules, the Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a compliant response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a producer of children’s entertainment goods and services around the world.
In connection with the operation of this business, Complainant uses the CLUB PENGUIN mark to operate an online family-friendly video game.
Complainant holds a registration for the CLUB PENGUIN trademark, which is on file with the United Stated Patent and Trademark Office (“USPTO”) as Registry No. 4,150,662, Registered May 29, 2012).
Respondent registered the domain name <clubpenguinisland.com> on or about February 23, 2016.
The domain name is confusingly similar to Complainant’s CLUB PENGUIN mark.
Respondent is not and has not been commonly known by the domain name.
Respondent is not authorized by Complainant to use the CLUB PENGUIN mark in a domain name or otherwise.
The domain name resolves to a passively held website featuring a “coming soon” page including characters from Complainant’s video game universe.
Respondent uses the domain name to confuse and attract internet users for commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the CLUB PENGUIN mark at the time the domain name was registered.
Respondent has failed to cease its use of the domain name even after receiving notice of its offense from Complainant.
Respondent’s registration and use of the domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding which was compliant with the requirements of the Policy and its attendant Rules. However, in an e-mail message addressed to the Forum, Respondent has recited as follows:
I have no interest whatsoever to defend in this matter, which, in turn, means that I agree to transfer the domain name to Disney [Complainant].
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel a decision that a domain name be transferred to it:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, 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 [by the parties] in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration to a complainant upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. 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 Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 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 [sic] to forego the traditional UDRP analysis and order the transfer of the domain names.
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the domain name <clubpenguinisland.com> be transferred to it. Rather, in the face of Complainant’s demand that the domain name be transferred, Respondent has expressed in writing its willingness to surrender it. Thus the parties have effectively agreed in writing to a transfer of the domain name from Respondent to Complainant without the need for further proceedings.
Accordingly, it is Ordered that the <clubpenguinisland.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 4, 2016
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