WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Learning Express, lnc. v. Texas International Property Associates - NA NA Case No. D2009-0582 1. The Parties
Complainant is Learning Express, lnc. of Devens, Massachusetts, United States of America, represented by Law Offices of Suzanne C. Cummings & Associates, P.C., United States of America.
Respondent is Texas International Property Associates - NA NA of Dallas, Texas, United States of America, represented by Rothstein Rosenfeldt Adler, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2009. On May 6, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On May 7, 2009 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” 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2009. The Response was filed with the Center on May 28, 2009.
The Center appointed Thomas Webster as the sole panelist in this matter on June 15, 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. 4. Factual Background
The undisputed facts are as follows:
The Complainant, Learning Express, is a franchisor of children's specialty toys across the United States under the trademark LEARNING EXPRESS (Complaint paragraph 10-11). Complainant registered the domain name in 1996 and has also registered the domain name (complaint paragraph 13, 14, Annex 3, Annex 4). Further, Complainant registered the trademarks LEARNING EXPRESS in 1991 and has also registered LEARNING EXPRESS TOYS ALWAYS THE PERFECT TOY (Complaint paragraph 15,16, Annex 5, Annex 6).
Respondent, Texas International Property Associates, has provided no factual background as to its activities or registration of the disputed domain name. Cases cited by the Respondent describe Respondent's activities in the following terms:
Respondent were named in over 70 UDRP complaints. This history of cybersquatting on a grand scale reflects a flagrant disregard for intellectual property rights of others and is further evidence of Respondent's bad faith in this matter. (Citigroup Inc. v. Texas International Property Associates –NA NA, NAF Claim No FA1210904.
A review of domain name disputes filed with the Center reveals that Respondent and has been involved in several domain name disputes. (For example, see BzzAgent, Inc. v. Texas International Property Associates,WIPO Case No. D2008-1966; Tractor Supply Company v. Texas International Property Associates NA NA,WIPO Case No. D2008-1547; F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0752; Reece & Nichols Realtors, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0494)
The domain name was registered by Respondent on February 19, 2005 (Complaint, Annex 1). It is uncontested that the Respondent has no connection or affiliation with the Complainant nor has Complainant “assigned, sold, or transferred any rights in its Learning Express® or Learning Express Toys always the perfect toy® marks to Respondent or granted permission to Respondent to use or register either mark as a domain name.” (Complaint, paragraph 31, 32). 5. Parties' Contentions A. Complainant
The Complainant claims that:
With respect to the domain name being identical or confusingly similar to a trademark or service mark to which the Complainant has rights, the Complainant claims that:
‘24. The Disputed Domain Name and the [] domain name are identical
25. The only differences between the Disputed Domain Name
and the [] domain name in written form are the presence in the Disputed Domain Name of a hyphen between “Express” and “Toys.”
26. The differences between the Disputed Domain Name and the Learning
Express® mark and Learning Express Toys domain name are so discrete and inconsequential that they will be overlooked by many Internet users.'
With respect to the absence of rights or legitimate interests of Respondent in respect of the domain name, Complainant claims that:
“33. The Disputed Domain Name is not associated with any business operated by Respondent. The site using the Disputed Domain Name simply provides a list of links to sites of retailers and manufacturers of children's toys.
34. The Respondent is not commonly known or referred to by the domain name or any portion thereof.
35. Respondent has not been using the domain name in connection with a bona fide offering of products or services.
[…]
37. Respondent is not engaged in noncommercial or fair use of the Disputed Domain Name. When entered into a web browser, the Disputed Domain Name resolves to a site advertising children's toys substantially similar to those offered by Complainant and its franchisees.”
With respect to registration and use, Complainant claims that the registration and use of the disputed domain name was done in bad faith. In support of this claim, Complainant makes the following arguments:
“44. Respondent has engaged in “typo-piracy,” hoping to attract users who incorrectly enter the domain name into their browser instead of the Complainant's domain name . This typo-piracy constitutes compelling evidence of illegitimate use and bad faith on the part of Respondent.”
Complainant seeks the transfer of the domain name to Complainant. B. Respondent
In response to Complainant's transfer request based on claims and accusations that Respondent's registration of domain name is a bad faith use of a domain name that is confusingly similar such that the Respondent is engaged in typo-piracy, the Respondent takes the following position:
‘[5.] Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel transfer the domain names at issue . This is not an admission of the three elements of 4(a) of the Policy but rather an offer of a “unliteral [sic] consent to transfer,” as prior Panels have deemed it.'
Respondent further submits that a panel may engage in three courses of action where a Respondent consents to the relief sought by the Complainant. Respondent makes the assertion in the following terms:
“[6]… (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claims (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 (see 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 Philips Electronics N.V. v. Mangeware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Societe Francaise du Radiotelephone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745).”
Respondent then cites its own history in domain name dispute settlement for support of its request that the Panel immediately transfer the domain name without analysis of the facts (Citigroup Inc., supra. Lastly, Respondent seeks to reserve the right to submit a more formal response if the Panel deems that analysis is required (Response, paragraph 7). 6. Discussion and Findings
The Panel is guided in its decision by the Policy and the Rules.
Paragraph 10 of the Rules requires both expedition in rendering an award (paragraph 10 (c) of the Rules) and fairness and equality in hearing the positions of the Parties paragraph 10 (b) of the Rules).
Pursuant to paragraph 4 (a) of the Policy, Complainant “must prove” three elements, namely:
i. Identical or Confusingly Similar;
ii. Rights or Legitimate Interests; and
iii. Registered and Used in Bad Faith.
Pursuant to paragraph 15 (a) of the Rules the Panel is bound to reach its decision based on “the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In light of the above, Complainant owns several trademarks that are confusingly similar to the disputed domain name . Complainant has presented assertions and support for the elements provided for in paragraph 4 (a) of the Policy. Respondent does not admit that the elements presented in paragraph 4 (a) of the Policy are present in this case. However, Respondent does not refute the assertions made by Complainant either. Instead, Respondent consents to the transfer and requests that it “be given the opportunity to prepare a more formal response” if an analysis is to take place.
Pursuant to paragraph 4 (i) of the Policy, the only remedies available to Complainant in these proceedings are transfer or cancellation of the disputed domain name. Complainant seeks the transfer of the disputed domain name. Respondent consents to the transfer of the disputed domain name.
One of the main functions of domain name dispute settlement under the Policy is to provide efficiency and expediency. To that end and as a result of Respondent's consent to transfer, the Panel will forgo any further analysis of: i. Identical or Confusingly Similar; ii. Rights or Legitimate Interests; and iii. Registered and Used in Bad Faith, as those elements are not in dispute, paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4 (a), 10 (b), 10 (c) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Thomas Webster
Sole Panelist
Dated: June 18, 2009
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