WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medallion Cabinetry Inc. v. Texas International Property Associates
Case No. D2007-1015
1. The Parties
The Complainant is Medallion Cabinetry Inc., of Oak Brook, Illinois, United States of America, represented internally by Kathleen Deighan.
The Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Compana, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 16, 2007, the Center transmitted by email to Compana, LLC a request for registrar verification in connection with the domain names at issue. On July 25, 2007, 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. 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 the Respondent of the Complaint, and the proceedings commenced on July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2007. The Response was filed with the Center on August 15, 2007.
The Center appointed Angela Fox as the sole panelist in this matter on October 17, 2007. 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.
By request of the Complainant dated August 16, 2007, the proceedings were suspended until September 16, 2007 to allow time for settlement negotiations with the Respondent. On October 1, 2007, the Complainant requested the suspension to be extended until October 8, 2007 to allow the disputed domain names to be transferred under the terms of a settlement agreement with the Respondent. On October 10, 2007, the Complainant asked that the proceedings be reinstated as it had received no response from the Respondent concerning the transfers. On October 11, 2007, the Center notified the parties that it had reinstated the proceedings. On October 16, 2007, the Complainant filed a copy of the settlement agreement between the parties as a Supplemental Filing, which the Center acknowledged on the same date.
4. Factual Background
The Complainant is a maker of kitchen, bath and vanity cabinets and related accessories. It is the registered proprietor of United States federal Trademark Registration Nos. 1,964,983 for the mark MEDALLION, registered April 2, 1996 and claiming a date of first use in commerce of 1984, and 2,337,353 for the mark SCHULER, registered April 4, 2000 and claiming a date of first use in commerce of December 31, 1987.
The disputed domain name was registered on June 3, 2005; was registered on March 19, 2005; and was registered on February 4, 2005. The Complaint annexed print-outs from websites at the disputed domain names, showing their use in respect of generic search portal sites offering “resources and information on Cabinetry and Medallion cabinetry”, on “kitchen Cabinets and Schuler cabinets”, and on “Medallion Cabinet and Storage cabinets”. The sites contained links to related search results for “Kitchen Cabinets”, “Schuler Cabinets”, “Bathroom Cabinets”, “Glass Cabinets”, “Medallion Cabinet” [sic] and the like.
Annexed to the Complaint is a copy of a letter dated April 13, 2007 from the Complainant to the Respondent requesting the transfer of . In a response dated June 11, 2007 from the Respondent’s attorney, the Respondent stated that it did not regard the disputed domain name as infringing and that it did not intend to transfer it. The Complaint was filed on July 11, 2007.
In its Response, the Respondent agreed unconditionally to the transfer of the disputed domain names and requested the Panel to order their immediate transfer.
In the Complainant’s Supplemental Filing dated October 16, 2007, the Complainant annexed a copy of a signed settlement agreement dated September 14, 2007, under which the Respondent assigned the disputed domain names to the Complainant and agreed to take all reasonable action to immediately transfer them. The Complainant stated, however, that the Respondent had failed to take the required action to implement the transfers, and requested that the Panel render a decision.
5. Supplemental Filing
The Rules make no express provision for supplemental filings. Such filings are admissible in the Panel’s discretion, but in considering their admissibility, the Panel must have regard to Paragraph 10 (c) of the Rules, which requires the Panel to conduct the proceedings “with due expedition”. Supplemental filings can delay and extend the proceedings, and as noted in Metropolitan Life Insurance Company v. HLP General Partners Inc.,WIPO Case No. D2005-1323, panels are typically reluctant to accept them except where they are necessary to enable the panel to consider relevant new evidence or to enable a party to respond to new arguments.
In this case, the Supplemental Filing affirms the Response abandoning the Respondent’s claims to the disputed domain names in favour of the Complainant. It is therefore relevant to the disposition of the proceedings. The Supplemental Filing supports the grant of the relief sought by the Complainant and accepted by the Respondent. The Panel will take them into account to that extent.
6. Parties’ Contentions
A. Complainant
The Complainant asserts that the disputed domain names are identical or confusingly similar to its registered MEDALLION and SCHULER trademarks, from which they differ by only a single letter or word.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been commonly known by the domain names, and there is no evidence that, before any notice of the dispute, the Respondent was making use of, or demonstrable preparations to use, the disputed domain names or names corresponding to them in connection with a bona fide offering of goods or services.
Finally, the Complainant alleges that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on it.
B. Respondent
The Respondent agrees to the relief requested by the Complainant and states that it will, upon order of the Panel, transfer the disputed domain names.
7. Discussion and Findings
It is not necessary for the Panel to review whether the three elements of the Policy are met in a case where, as in this one, the Respondent has consented fully and unequivocally to the relief being sought. Although the Rules do not clearly provide for such cases, nonetheless Rule 10(a) empowers the Panel to conduct the proceedings in the manner that it deems appropriate under the Policy and Rules. Moreover, Rule 10(c) requires the Panel to ensure that the proceedings are conducted with due expedition, and Rule 17 requires the Panel to terminate the proceedings when the parties have agreed a settlement.
There is an established line of decisions confirming that in cases where a respondent consents to the relief requested, that relief may be granted without the need to analyse whether the requirements of paragraph 4(a) of the Policy have been met (Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207). Indeed, numerous panels have regarded the Respondent’s agreement to the relief sought as enabling the panel to deem that the paragraph 4(a) tests have been met (Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398; Deutsche Bank v. Carl Siegler,WIPO Case No. D2000-0984; Juventus F.C. S.p.a. v. Sergio Brangan�a,WIPO Case No. D2000-1466; and Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620).
The Panel agrees that the proper approach where a respondent consents fully and unequivocally to the relief requested is for that relief to be granted expeditiously. In this case, despite its assertion in its June 11, 2007 letter that the domain name did not infringe the Complainant’s rights, the Respondent (who is represented by counsel) has filed a Response clearly and unambiguously accepting the relief sought against it. Moreover, the Respondent subsequently affirmed this intent by executing a settlement agreement under which it assigned the disputed domain names to the Complainant. Nevertheless, despite multiple suspensions and extensions sought by the Complainant to allow time for the Respondent to transfer the domain names, the actual technical transfer has not yet taken place.
The Panel considers that the proper course is to order the immediate transfer of the domain names, in line with the approach adopted by the panelists in the preceding cases cited above.
8. 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 names , and be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: October 30, 2007
Full & Egal Universal Law Academy