The Complainant is Campagnolo S.r.l., of Vicenza, Italy represented by Giambrocono & C. S.p.A., Italy.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America represented by the Law Office of Gary Wayne Tucker, United States.
The disputed domain name<capagnolo.com>is registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On November 30, 2008 Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 2, 2008. The Center 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” 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 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008. The Response was filed with the Center on December 22, 2008.
The Center appointed David Levin Q.C. as the sole panelist in this matter on January 20, 2009. 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.
The Complainant is the registered owner of numerous trademarks, including:
(a) Community trademark registration number 2704641 with registration date 16 June, 1998;
(b) United States trademark registration number 0983176 with registration date May 7, 1974;
(c) United States trademark registration number 1941994 with registration date December 19, 1995;
(d) United States trademark registration number 2266421 with registration date September 29, 1986;
(e) United States trademark registration number 2622768 with registration date September 24, 2002.
It is also registered as the holder of the domain name <campagnolo.com>, a domain name registered since September 26, 1996.
By its Complaint, the Complainant maintains that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. It relies upon UDRP paragraph 4(a)(i) and the Rules paragraphs 3(b)(viii) and (b)(ix)(1). It maintains that the disputed domain name is made up of the word “capagnolo” which is confusingly similar (inter alia) to the five trademarks set out in paragraph 4 above, which it owns. Furthermore it claims that the disputed domain name is confusingly similar to the domain name registered by the Complainant since 1996, namely <campagnolo.com>.
The Complainant further contends that the disputed domain name is identical in pronunciation to the Complainant's own domain name, <campagnolo.com>, the domain name reflecting the Complainant's company name and more than 120 trademark registrations consisting of or comprising the term CAMPAGNOLO in more than 50 countries including the United States, the country of residence of the Respondent.
In this regard it relies upon the decision in LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430 in which the panel noted, in relation to the absence of the letter “o” in the disputed domain name <luisvuitton.com>:
“This small difference is not perceptible in the English or the Spanish languages, for example, so that the way to pronounce both words in these languages would be identical or almost identical.”
The Complainant contends that the Respondent has never been, and is not currently, commonly known by the disputed domain name. The name of the Respondent does not relate in any way to the name “capagnolo” nor is its business somehow connected with the products of the Complainant. Further the Respondent does not hold any trademark or right consisting in whole or in part of the word “capagnolo”. The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but on the contrary is attracting Internet users by explicitly mentioning the trademarks owned by the Complainant.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith contrary to UDRP paragraph 4(a)(iii) and 4(b) and the Rules paragraphs 3(b)(ix)(3). It supports this contention with a series of propositions supported by evidence which suggests that the registration was indeed undertaken in bad faith and the disputed domain name is currently being so used.
By its Response the Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, transfer the disputed domain name. It maintains, however, that this agreement is not an admission as 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''. Furthermore, having referred to prior panel decisions which are claimed to support the proposition that if a transfer is made on the basis of a consent no findings should be made on the merits, the Respondent submits that “if the Panel decides that analysis is required [as to whether the elements of paragraph 4(a) of the UDRP have been established], Respondent respectfully requests that Respondent be given the opportunity to prepare a more formal response”.
Numerous panels have made determinations in situations similar to the present. The Respondent refers in its Response to the well-known decision of The Cartoon Network LP, LLLP v. Mike Morgan WIPO Case No. D2005-1132. In that case the respondent had requested that “no judgment be made as (sic) have agreed to transfer names to complainant”. The panel in that decision observed that where the respondent consents to a transfer of the domain name in question there have been at least three alternative courses of action for the adjudicating Panel to take:
“(i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195);
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered 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); and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke PhilipsElectronics N.V. v. Manageware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,WIPO Case No. D2003-0745).”
Faced with these alternatives the Panel in The Cartoon Network (supra) concluded as follows:
“There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems' proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
The Panel in The Cartoon Network decision (supra) took a course this Panel proposes to follow. Notwithstanding that the Policy and the Rules make no provision for a reservation by a Respondent of any entitlement to submit a further and fuller response, it might be considered unfair to the Respondent to embark upon findings as to whether the elements of paragraph 4(a) have been established in circumstances where the Respondent has expressly sought a further opportunity to address these issues. Whether the Panel could envisage any convincing evidence being adduced is not to the point. The Complainant would have to suffer further delay for no benefit.
This is not a case such as Fry's Electronics Inc. v. Texas International PropertyAssociates, WIPO Case No. D2007-0343 where the Complainant expressly consented to the making of the order without paragraph 4(a) determinations. Nor, on the other had, is it a case such as Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc., WIPO Case No. D2008-1162 where the Complainant objected to the Panel taking the course of making an order without making findings. Whilst the Panel recognises that a Complainant has no formal entitlement to submit any further document after receipt of the Response, it is always open to a party to seek leave to rely on a further submission. In the present case the Complainant has made no application to rely on any further submission since being notified of the Response.
The Panel does find support for its proposed course in the recent decisions of Kennolyn Camp Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1208 and Kaehler Travelworks, LLC v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1326 where panels in a very similar situation to the present did follow the course suggested in The Cartoon Network (supra).
Accordingly on the basis of the agreement of the Respondent the Panel orders the transfer of the disputed domain name without making findings as to the proof of the elements of paragraph 4(a) of the policy.
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, <capagnolo.com> be transferred to the Complainant.
David Levin Q.C.
Dated: February 2, 2009
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