WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SYTradingPost, Inc. v. OS Domain Holdings IV, LLC
Case No. D2008-0815
1. The Parties
Complainant is SYTradingPost, Inc., Los Angeles, California, United States of America, represented by Mandour & Associates, United States of America.
Respondent is OS Domain Holdings IV, LLC, Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with NameK.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2008. On May 26, 2008, the Center transmitted by email to NameK a request for registrar verification in connection with the disputed domain name. On May 27, 2008, NameK 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 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. The Center also informed Complainant of Respondent’s offer to expedite a transfer, which it had received on June 2, 2008. The Center indicated that the proceedings could be suspended upon request. Complainant did not so request.
The Response was filed with the Center on June 20, 2008.
The Center appointed Miriam Sapiro as the sole panelist in this matter on July 14, 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 sells imported fabrics under the common law trademark of SYFABRICS, which is derived from the name of its founder and president, Sung Yi. Complainant registered on May 7, 2003 and uses the name in trade.
Respondent registered ten months later, on March 11, 2004.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is identical to or confusingly similar to its common law trademark inasmuch as it deletes only the plural “s.” Complainant further alleges that Respondent has no rights or legitimate interests in the domain name, having no common law or registered trademark, nor rights granted by Complainant to use its mark. In addition, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but only to divert Internet users to a similar website featuring competitors’ products and fabrics, for which it receives commercial gain. This, according to Complainant, constitutes registration and use in bad faith.
B. Respondent
Respondent contends that it lacked bad faith in the registration of the disputed domain name because it was not aware of Complainant. Once it become aware of the complaint, Respondent asserts that it contacted Complainant and its representative “multiple times” to offer a voluntarily transfer of the name, but its proposal was not accepted.
Respondent does not admit fault or liability, or respond substantively to the Complaint. Given its willingness “to voluntarily transfer the Domain Names (sic) to the Complainant,” Respondent requests that transfer be ordered without findings of fact or conclusions as to whether the requirements of paragraph 4(a) of the Policy are met.
6. Discussion and Findings
Absent a respondent’s consent to transfer, under paragraph 4(a) of the Policy a complainant must prove that each of the following elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Were this Panel to address these questions, it might conclude that Complainant has satisfied paragraphs 4(a)(i) and (ii) of the Policy on the basis of the evidence in the record and the lack of a substantive rebuttal from Respondent on either issue.
The question whether Respondent registered or used the disputed domain name in bad faith, however, is a matter of contention. Respondent claims it was unaware of Complainant’s existence prior to notice of the Complaint. Were the Panel to reach the merits of the Complaint and decide if the third element of paragraph 4(a) were met, it might find for Complainant on the basis of evidence in the record that Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on [the] web site or location.” In addition, similar to the finding by the panel in another case involving this Respondent, the term “syfabrics” cannot “by any stretch of the imagination be classified as [a] ‘generic’ or ‘descriptive’ [word].” See BHP Billiton Innovation Pty Ltd. v. OS Domain Holdings IV LLC,WIPO Case No. D2008-0488.
This Panel, however, does not need to reach a decision on the merits of the Complaint because Respondent has consented to transfer of the disputed domain name. Under paragraph 10 of the Rules, which addresses the “General Powers of the Panel,” a panel is authorized to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” provided that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Under paragraph 15 of the Rules, a panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Finally, it is instructive that under paragraph 17 of the Rules if parties agree on a settlement before the Panel’s decision is issued, the Panel shall terminate the proceeding.
This Panel considers that, in light of these rules, consent by Respondent to transfer provides a sufficient basis for an order for transfer and for concluding the proceeding without deciding at this time whether the requirements of paragraph 4(a) are met. Accord, In fonxx. Inc v. Lou Kerner, WildS ,WIPO Case No. D2008-0434, and Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207.
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 be transferred to Complainant.
Miriam Sapiro
Sole Panelist
Dated: July 31, 2008
Full & Egal Universal Law Academy