Triarco Arts & Crafts, Inc. v. Texas International Property Associates - NA NA
Case No. D2008-1271
1. The Parties
The Complainant is Triarco Arts & Crafts, Inc., of the United States of America, represented by Boyle Frederickson Newholm Stein & Gratz, S.C., of the United States of America.
The Respondent is Texas International Property Associates - NA NA, of the United States of America, represented by the Law Office of Gary Wayne Tucker, of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <triarcoartsandcrafts.com> (the “Domain Name”) is registered with Compana LLC dba budgetnames.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in electronic form on August 19, 2008 and in hard copy on August 21, 2008. On August 21, 2008, the Center transmitted by email to Registrar a request for registrar verification in connection with the domain name at issue. On August 22, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 29, 2008 the Center requested confirmation from the Registrar that the Domain Name was locked and would remain on registrar lock during the pending arbitration. On September 1, 2008, the Registrar confirmed the registrar lock was in place and would remain so during the pending proceedings. On September 2, 2008, the Center notified the Complainant that the Complaint was administratively deficient The Complainant filed an amendment to the Complaint on September 2, 2008. The Center then verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2008. The Response was filed with the Center on September 23, 2008.
The Center appointed James H. Grossman as the sole panelist in this matter on October 3, 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.
On October 6, 2008, the Center received an email communication from the representative of the Complainant pointing out that the Respondent in its Response had agreed to transfer the Domain Name and therefore the Complainant requested a transfer without a decision of the Panel. On October 7, 2008, the Center advised the Complainant with a copy to the Respondent that since the Panel had already been appointed, it would be at the discretion of the Panel if the Panel might consent to order a transfer of the Domain Name, simply on the basis of consent or to proceed to a consideration of the substantive merits of the case. The Center further advised that a direct settlement between the parties could resolve the matter but that only the Panel could resolve the matter in accordance with the UDRP.
4. Factual Background
The Domain Name was registered on December 6, 2005 and expires December 6, 2008. Pursuant to the Registration Agreement (“Agreement”) with Registrar, the Respondent has agreed to resolve disputes as to the Domain Name in accordance with the Policy. Further, Paragraph 7 of the Agreement allows the Respondent to transfer the Domain Name to a third party of its choice subject to certain obligations set forth therein. However, Paragraph 6 of the Agreement states that the transfer may be refused “if there is a dispute concerning the domain name...”.
The Complainant is in the business of selling arts and crafts supplies. The Complainant is the owner of U.S. Registration No. 2,669,088 for the trademark TRIARCO. The Complainant uses its domain name <triarcoarts.com> to advertise and sell its arts and crafts products. A review of the Domain Name site by the Panel shows links to a myriad of different products being sold, including the arts and crafts products of competitors of the Complainant including Mothercare, QVC, Craftingdirect.com as well as such other products as dog toys and products (scruffmcduff.co.uk) and even cameras and toys (shopica.co.uk).
5. Parties' Contentions
A. Complainant
The Complainant alleges that it is not only the owner of the above referenced trademark but also that it has been using the name “Triarco Arts & Crafts” since 1946. The Complainant asserts that the Domain Name is identical to the Complainant's trade name and contains its registered trademark. The Respondent, a well known “typo-squatter” according to the Complainant in Exhibits 5 and 6 to the Complaint, is an habitual registrant of domain names in which it has no legitimate interest, as evidenced by the fact that the Respondent has been named as a respondent in sixty UDRP decisions (Exhibit 7). The Complainant also alleges that the Respondent will be unable to show any rights or legitimate interests in the Domain Name since it offers no goods or services relating to Triarco Arts and Crafts, is not commonly known by that name, and is not making any legitimate non commercial use of the Domain Name. The Complainant further asserts that due to its longtime use of the TRIARCO mark, the U.S. trademark registration of such name, and the Internet use of the mark for at least two years prior to the Respondent's registration, the Respondent should have been aware of the Complainant's rights. Nonetheless, according to the Complainant, the Respondent registered and has used the Domain Name to misdirect the Complainant's customers to the Respondent's website and from there by link to competing arts and crafts suppliers. These facts, according to the Complainant, together with the Respondent's history of registration and wrongful use of marks constitute a clear case of bad faith. For all of the above reasons, the Complainant requests the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent agrees to the relief requested by the Complainant and thus states its agreement to the requested transfer of the Domain Name. The Respondent states that its agreement to such a transfer is without any admission of the three elements of paragraph 4(a) of the Policy, but rather, according to the Respondent, “an offer of ‘unilateral consent to transfer' as prior panels have deemed it.” The Respondent then urges the Panel to take the “best and most expeditious course” in granting “a genuine unilateral consent to transfer” without consideration of the merits which is a position consistent with the decision in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132. The Respondent finally requests that it be given the opportunity to prepare a more formal response should the Panel decide to determine the case on a merits basis.
6. Discussion and Findings
The Panel obviously has to make a choice between evaluating the merits regarding a transfer under paragraph 4 (a) of the Policy or, alternatively, to grant a unilateral transfer as requested by the Respondent. Prior panels have held in favor of both of these alternatives in their decisions, leaving this Panel free to reasonably choose for itself either alternative. See e.g. United Pet Group, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039 (finding that a detailed review of merits is not necessary when both parties have consented to a transfer); Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133 (finding full analysis of merits was appropriate despite the respondent's willingness to unilaterally transfer the domain name); Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 (panel while admitting that it has the alternatives described above decides to address the merits under paragraph 4(a) since the respondent “appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels.”)
Despite the appeal of the reasoning of the panel's decision in Brownells, Inc. v. Texas International Property Associates, supra (to add another decision to the many already decided on the merits against this serial cyber-squatter), this Panel finds instead that it should allow the unilateral transfer of the Domain Name, since simply stated there is no dispute between the parties. The reasoning in Citigroup Inc. v. Texas International Property Associates- NA NA, NAF Case No. 1210904, as described in part by Respondent in its Response, appears to this Panel to be the appropriate reasoning in this particular case as well. In the latter decision, the panel therein stated:
“Judicial economy dictates that the Panel should simply proceed to its decision since there is no dispute between the parties. Thus, this Panel disagrees with the proposition that even though a respondent consents to transferring an at-issue domain name, a substantive review may be required.”
In response to the argument that to allow the domain name to be transferred by consent shields cybersquatters from adverse findings, the panel further states in Citigroup Inc. v. Texas International Property Associates- NA NA, supra as follows:
“… the UDRP has no business serving a policing function or exposing cybersquatters apart from that which is entailed in deciding the instant dispute.
Judicial economy and the very purpose of the UDRP demands expeditious and economical resolution of UDRP disputes.”
This Panel believes that there is a need to deal with serial cybersquatters who may be said to be “playing the system” as Respondent appears to be doing, but as of this date there is not a mandate for this Panel to take on any such policy making role. Instead, this Panel's role, based on existing mandates of the UDRP, is to deal with the case at hand in the most expeditious manner. Thus, in light of the Respondent's consent, a decision to review the merits in detail may be said to go beyond the strictly necessary role of this Panel in making an appropriate order giving effect to transfer consented to in this specific case. The Panel is also reluctant to seek to create an advisory opinion as to the need for a new mandate to deal with such cybersquatting problems. For present purposes, the Panel simply notes with concern the numbers of these cases against this particular Respondent and others. It is the role of the Panel, as this Sole Panelist sees it, to follow the narrow task before it and not to assume the function of reaching to find a broader based policy resolution than called for by the specific case before it.
It is not clear to the Panel that the Complainant contacted the Respondent directly to seek a settlement of this matter prior to initiating this proceeding. The Panel is aware that on October 6, 2008 the Complainant wrote to the Case Manager as follows:
“Respondent in the above-referenced case has consented to a transfer of the domain name in question. Are there any procedures I can employ to simply go forward with the transfer, without necessitating a panel decision?
Please advise. Thank you.”
The Case Manager responded as follows:
“The Center notes that in this case a panel has already been appointed.
It would in any event need to be at the discretion of the appointed panel as to whether it, for example, might chose to order transfer of the domain name simply on the basis of consent, or to proceed to a consideration of the substantive merits. Other than (for example) by way of direct settlement negotiations between the parties themselves, there is no mechanism as such under the UDRP by which a domain name may simply be ordered transferred without a panel decision on the issue.”
The Panel has taken notice of the language in the panel's decision in Brownells, Inc. v. Texas International Property Associates, supra, wherein the Respondent also filed a response expressing willingness to transfer and the proceedings were suspended but, for reasons not clear, no settlement was reached. The Panel in that case appears to have determined this to be another bad faith aspect of Respondent's actions in that matter. The Panel in that case also cites other examples of such delaying tactics by Respondent. However, the evidence in this case does not show any of such tactics by Respondent. Following notification by the Center of any decision of this Panel to transfer the Domain Name to the Complainant, the concerned registrar would then be under an obligation to implement that transfer order in accordance with the terms of paragraph 4.k of the Policy. The Respondent's only option under the UDRP, if indeed it wished to delay implementation by the registrar of such a decision, would in effect be to timely commence legal proceedings in a court of competent jurisdiction in accordance with the requirements set out in the above-referred paragraph 4.k.
In conclusion the Panel cites the decision in United Pet Group, Inc. v. Texas International Property Associates, supra, matter as follows;
“In this case, the parties have both asked for the domain name to be transferred to Complainant. This Panel holds that in this UPRP proceeding, in accordance with a general legal principle governing arbitrations as well as national court proceedings, that it would not be appropriate for it to act nec ultra petita nec infra petita, that is, that it should not here issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy.”
A. Identical or Confusingly Similar
For reasons indicated above, the Panel need not consider this element of the Policy.
B. Rights or Legitimate Interests
For the reasons indicated above, the Panel need not consider this element of the Policy.
C. Registered and Used in Bad Faith
For the reasons indicated above, the Panel need not consider this element of the Policy.
7. Decision
For all the foregoing reasons, and in view of the common request of the parties, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <triarcoartsandcrafts.com> be transferred to the Complainant.
James H. Grossman Sole Panelist
Dated: October 19, 2008
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