nbcdenver.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NBC Universal, Inc. v. Texas International Property Associates

Case No. D2008-0862

1. The Parties

Complainant is NBC Universal, Inc., Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

Respondent is Texas International Property Associates, 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 <nbcdenver.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 5, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On June 6, 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 June 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2008. The Response was filed with the Center on July 3, 2008.

The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on July 15, 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 is one of the world’s leading media and entertainment companies. Complainant owns and operates a leading television stations group, and has been a prominent broadcaster, first in radio in the 1920s, then in television since the 1940s. Complainant owns many trademark registrations in the United States of America, and elsewhere, including the United States registration for the NBC mark, Registration No. 619,641 in Class 38, registered on January 17, 1956.

Publicly available records indicate that the disputed domain name was registered on October 18, 2005.

In light of the Panel’s disposition of this Complaint, it is unnecessary to describe the parties’ contentions and factual averments in detail.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s marks. Complainant also alleges Respondent has no legitimate rights or interest in the disputed domain name, and that Respondent registered and is using the domain name in bad faith.

B. Respondent

It its response, Respondent states that Complainant never contacted Respondent to object to Respondent’s use of the disputed domain name. Respondent also states that Respondent is willing to agree to transfer of the name to Complainant.¹

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Ordinarily, a complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In this present case, however, Respondent has unilaterally consented to the remedy sought by Complainant in Respondent’s formal response to the Complaint.

Under these circumstances, as detailed below, it is unnecessary for the Panel to determine whether Complainant has established its entitlement to transfer under paragraph 4(a) of the Rules. E.g., The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (where complainant sought transfer of the disputed domain name, and Respondent consented to transfer, paragraph 10 of the Rules permit a panel to proceed immediately to make order for transfer without determination of elements of paragraph 4(a)), citing Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.

In Williams-Sonoma, Inc., supra, the panel explained:

Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide 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.

Like the panel in Williams-Sonoma, Inc., this Panel finds Respondent’s unilateral consent means that the disputed domain name can be transferred to Complainant without determination of the elements of paragraph 4(a). See also ValeroEnergy Corporation , Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336.

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, <nbcdenver.com> be transferred to Complainant.

Jeffrey D. Steinhardt
Sole Panelist

Dated: July 29, 2008

¹ In its response, Respondent wrote: “Respondent, then, herein agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral consent to transfer’ as prior Panels have deemed it.”