Nevada Diamond Exchange, Inc., dba T-Bird Jewels v. John Calleri
Claim Number: FA2306002047349
Complainant is Nevada Diamond Exchange, Inc., dba T-Bird Jewels (“Complainant”), represented by Kim Cooper of Greenberg Traurig, LLP, Nevada, USA. Respondent is John Calleri (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tbirdjewelers.com>, registered with GoDaddy.com, LLC.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 05, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <tbirdjewelers.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 June 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2023 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@tbirdjewelers.com. Also on June 8, 2023, 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.
A timely Response was received and determined to be complete on June 14, 2023.
On June 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Antonina Pakharenko-Anderson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <tbirdjewelers.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy 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 decides to forego the traditional UDRP analysis and order an immediate transfer of the <tbirdjewelers.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.”).
A. Complainant
Complainant has been using its trademark in connection with retail jewelry stores and jewelry-related goods and services since 1962. Complainant asserts longstanding common law rights in the T-BIRD JEWELS trademark and attaches evidence of a United States Patent and Trademark Office (“USPTO”) trademark application dated May 12, 2023. See Compl. Annex 5. The <tbirdjewelers.com> domain name is identical of confusingly similar to Complainant’s trademark because the infringing domain name includes the dominant portion of the T-BIRD JEWELS mark, T-BIRD, along with the term JEWELERS as opposed to the nearly-identical JEWELS. The infringing domain name also excludes the hyphen and adds the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <tbirdjewelers.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the T-BIRD JEWELS mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the infringing domain redirects users to its own website.
Respondent registered and uses the <tbirdjewelers.com> domain name in bad faith. Respondent was a former employee of Complainant. Respondent is diverting Internet users to its own competing website. Additionally, Respondent had actual knowledge of Complainant’s rights in the T-BIRD JEWELS mark prior to registration of the disputed domain name.
B. Respondent
Respondent, John Calleri, registered the <tbirdjewelers.com> domain name on April 4 2019. See Compl. Annex 7. Chris and his wife Jennifer Calleri (former employee of the Complainant) are now the owners of Huntington Jewelers.
Sometime in 2015 Respondent entered into negotiations with the owner of the Complainant for the purchase of TBIRD Jewels. These negotiations proceeded periodically on numerous occasions from 2015 until March 2022 and were unsuccessful.
Respondent and his wife have no wish or desire to enter into any dispute with TBird Jewels or [its owner] Darryl Kulwin. The ownership and use of the <tbirdjewelers.com> domain name no longer has any value to Chris Calleri or his company. He will willingly transfer, if possible, or revoke any ownership rights to <tbirdjewelers.com> domain name to Complainant.
Respondent has provided his written explicit consent that the domain name <tbirdjewelers.com> be transferred to Complainant.
Accordingly, it is Ordered that the <tbirdjewelers.com> domain name be TRANSFERRED from Respondent to Complainant .
____________________________________________________________
Antonina Pakharenko-Anderson, Panelist
Dated: June 21, 2023
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