Complainant is Roll-N-Lock Corporation of Pompano Beach, Florida, United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America.
Respondent is L. Van Mier, VanMierMedia of Zevenaar, the Netherlands.
The disputed domain name <rollnlock.org> is registered with Mijn InternetOplossing B.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2012. On December 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. On January 3, 2013, the Center received a suspension request from Complainant. On the same date, the Center notified the Parties the suspension of the proceedings. On February 20, 2013, the Center received Complainant’s request to reinstitute the proceedings. On February 21, 2013, the Center notified the Parties the reinstitution of the proceedings. Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process on February 21, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 1, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant manufactures and sells retractable truck bed cover made as well as related products and services since the year 1992 in the United States. Roll-N-Lock official website is available at “www.rollnlock.com.”
Complainant is the owner of the registered trademark ROLL-N-LOCK in IC class 12 in the United States, since March 8, 1994
The disputed domain name was registered on September 25, 2012.
Complainant argues that it has trademark rights on ROLL-N-LOCK and that the disputed domain name is identical to its trademark.
Complainant states that Respondent will be unable to demonstrate rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name, and there is no bona fide offer of goods or services by Respondent. There is no license to use the disputed domain name.
Respondent registered the disputed domain name in bad faith. Respondent is using the disputed domain name to disrupt the business of Complainant. Complainant also states that Respondent has used the disputed domain name to create a likelihood of confusion in order to attract Internet users for commercial gain. With respect to bad faith use Complainant argues that:
- Respondent has created likelihood of confusion with Roll-N-Lock customers,
- The disputed domain name is identical to the ROLL-N-LOCK trademark and the ROLL-N-LOCK official website,
- Respondent uses the ROLL-N-LOCK trademarks on the website at the disputed domain name.
Complainant requests the transfer of the disputed domain name.
Respondent did not reply to the Complainant’s contentions.
On December 12, 2012, Respondent sent an electronic mail to the Center and Complainant stating:
“Dear sir/madam,
I already responded to the lawyer of Rollnlock and I did agree to transfer the domain to them.
Kind regards,
Luuk van Mier”.
Several communications from Respondent and Complainant followed and it is clearly evidenced in the record that Respondent agreed and attempted to transfer the disputed domain name to Complainant, but the service provider has apparently refused Respondent’s request to transfer the disputed domain name. There were at least six Respondent communications to the Center. The proceedings were suspended and then reinstituted upon Complainant’s request.
As a threshold matter, the Panel must decide whether to address the conditions for transfer under paragraph 4(a) of the Policy, or rather to grant a “unilateral transfer” as requested by Respondent.
Prior decisions illustrate that it is within the Panel’s discretion to choose either approach. See, e.g., United Pet Group Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039 (finding that a detailed merits discussion is not necessary when both parties have consented to a transfer order); Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133 (finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer).
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
However, this Panel considers that a genuine unilateral consent to transfer by Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, when a complainant seeks the transfer of a domain name, and respondent consents to transfer, the panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the Parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to Complainant. This is clearly the most expeditious course. Id.; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.
On December 12, 2013, Respondent filed a Response stating that it was willing to transfer the disputed domain name. The UDRP proceedings were then suspended and extended for short periods, upon Complainant’s requests, so that the parties could pursue settlement. For reasons that are not clear from the record, a transfer was not possible. The Panel notes however that at the time of issuing this decision the WhoIs publicly available information shows the name of Complainant as registrant of record for the disputed domain name, so it seems that the transfer may have been implemented.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rollnlock.org> be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Date: March 14, 2013