Halcyon Yarn, Inc. v. Texas International Property Associates – NA NA
Case No. D2008-0174
1. The Parties
The Complainant is Halcyon Yarn, Inc., of Bath, Maine, United States of America, represented by Perkins Thompson, P.A., United States of America.
The Respondent is Texas International Property Associates – NA NA, of Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <halyconyarn.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 5, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On February 7, 2008, Compana LLC 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”), 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 Respondent of the Complaint, and the proceedings commenced on February 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2008. The Response was filed with the Center on February 28, 2008.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 7, 2008. 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.
4. Factual Background
Complainant and its predecessors have used the HALCYON YARN mark in connection with the sale of yarn and related goods and services since 1979. Complainant is also the registrant of the <halcyonyarn.com> domain name, which it registered and has been using since February 13, 1996.
Respondent registered the disputed domain name, <halyconyarn.com>, on January 4, 2005. The domain name resolves to a website claiming to be “For resources and information on Halcyon and Knitting yarn”. The site features links that direct to pages containing pay-per-click advertising links. A number of these advertising links resolve to the web pages of companies that are direct competitors of Complainant.
5. Parties’ Contentions
A. Complainant
Complainant asserts that HALCYON YARN is its well-known trademark, in use since 1979. Complainant also notes its registration of the domain name <halcyonyarn.com>.
Complainant contends that the disputed domain name is identical – except for the transposition of the “y” and “c” resulting from a common misspelling of the word “halcyon” – and confusingly similar to its HALCYON YARN mark and <halcyon.com> domain name.
Complainant contends that Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of any goods or services. Complainant further contends that Respondent is using the domain name misleadingly for commercial gain to divert traffic away from Complainant and toward Respondent’s website, where Respondent advertises the websites of Complainant’s competitors and subjects users to numerous pop-up windows containing third-party advertisements. Complainant believes that Respondent earns revenue for diversion of users to the websites of Complainant’s competitors, as well as for the pop-up advertisements.
Complainant asserts that Respondent has no trademark rights in the HALYCONYARN mark, is making no business use of the mark, has not been commonly known by the name “Halyconyarn”, and has no cognizable rights or legal interest in the disputed domain name.
Complainant further contends that Respondent has registered and used the disputed domain name in bad faith.
B. Respondent
In its response, Respondent agrees to the relief requested by Complainant and asserts that it will, upon order of the Panel, transfer the domain name. Respondent notes that it has not made an admission to the three elements of Policy 4(a), but rather an offer of unilateral consent to transfer the domain name.
6. Discussion and Findings
In The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132, the panel explained that when presented with a “unilateral consent to transfer”, panels have taken three different approaches. Some panels have granted the relief requested on the basis of respondent’s consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,
WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,
WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the policy. Société Française du Radiotelephone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,
WIPO Case No. D2003-0745.
In particular, the panel in Williams Sonoma, Inc. v. EZ Port,
WIPO Case No. D2000-0207, offered the following guidance:
Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to "ensure that the proceeding takes place with due expedition." Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.
The Panel agrees with the rationale set forth in that decision. Accordingly, the Panel makes no findings in this case, and orders the transfer of the disputed domain name to the Complainant pursuant to the parties’ agreement to that action.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <halyconyarn.com> be transferred to Complainant.
Michael A. Albert Sole Panelist
Dated: March 21, 2008
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