WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CCA Global Partners, Inc. v. Texas International Property Associates- NA NA Case No. D2009-0879 1. The Parties
The Complainant is CCA Global Partners, Inc. of Earth City, Missouri, United States of America, represented by Husch Blackwell Sanders LLP, United States of America.
The 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 July 1, 2009. On July 2, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name, noting that Texas International Property Associates was the named Respondent.
On July 3, 2009, Compana LLC transmitted by email to the Center its verification response stating that Texas International Property Associates- NA NA is listed as the registrant and specifying the same locator information for that company as set forth in the Complaint for the Respondent. 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009. The Response was filed with the Center on July 29, 2009. At the Complainant's request, the proceedings were suspended from August 3, 2009 to September 2, 2009. The proceedings were re-instituted at the Complainant's request on September 1, 2009.
The Center appointed Thomas L. Creel as the sole panelist in this matter on September 14, 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 Complainant, CCA Global Partners, Inc. is one of the largest privately held companies in the United States, having aggregated annual sales of billions of dollars. It has partnered with entrepreneurial retailers to create cooperative retail businesses. One such business is Carpet One Floor & Home, commonly known as “Carpet One”. The Complainant owns a family of trademarks and service marks in the United States containing the term “Carpet One”, as well as many other such trademark applications and registrations around the world.
The Respondent is a United States company engaged in the secondary domain name market. Scores of UDRP decisions have been issued where this company is the Respondent.
The domain name appears to have been registered by the Respondent on November, 15, 2005. The web site at this domain name contains sponsored links and related searches that link to competitive flooring companies to the Complainant. Apparently the Respondent receives consideration for customers directed to the sponsored links.
Prior to instigating this proceeding, the Complainant sent at least two cease and desist letters to the Respondent, to which it received no reply. 5. Parties' Contentions A. Complainant
The Complainant offered extensive evidence of its trademark interest in the CARPET ONE mark, including numerous trademark and service mark registrations incorporating the term “Carpet One”.
It is otherwise contended that:
(i) the disputed domain name is deceptively similar or identical to the Complainant's mark;
(ii) The Respondent has no right or legitimate interest in the domain name; and
(iii) The Respondent registered and uses the domain name in bad faith. B. Respondent
The Respondent, without admitting the Complainant's allegations that the three elements of paragraph 4(a) of the Policy are present here, consents to the transfer of the domain name as requested by the Complainant. It then requests that the Panel order immediate transfer of the domain name at issue.
It contends that upon being satisfied that the Respondent's consent to transfer is genuine, the Panel should adopt the course followed by other panels and order the transfer without consideration of the merits of the allegations against the Respondent. It cites The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 and Citigroup Inc. v. Texas International Property Associates- NA NA, NAF Claim No. FA1210904 as decisions which adopted such a judicially expedient approach. 6. Discussion and Findings
A number of panel decisions have considered what procedure is appropriate or required when a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least four courses of action proposed. First, to grant the relief requested by the complainant on the basis of the unilateral consent without reviewing the facts, as in the two decisions above. Second, granting the transfer after first establishing there is an appropriate trademark interest in the complainant, which was considered a foundation issue for the exercise of power to order a transfer (See ABB Asea Brown Boveri Ltd. v. Texas International Property Associates,WIPO Case No. D2009-0873). Third, finding that the consent to transfer means that the three elements of paragraph 4 (a) are deemed to be satisfied and thereby ordering transfer on this basis (See Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620). Fourth, to proceed to consider whether on the evidence presented the three elements of paragraph 4(a) are satisfied because a respondent's offer to transfer is not an admission of a complainant's rights or because there is some reason to doubt the genuineness of a respondent's consent (See Koninklijke Philips Electronics N.V. v. Manageware,WIPO Case No. D2001-0796 and Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386).
The very purpose of the UDRP requires expeditious and economical resolution of UDRP disputes. Policy paragraph 4(i) provides that the remedies available to a complainant are limited to requiring the transfer or cancellation of the domain name. The panel has a narrow task to determine whether the requested relief should be granted. A panel's only purpose in rendering substantive findings is for that purpose. Furthermore, the Rules (paragraph 10) provide that the proceeding is to be conducted in such a manner as the panel deems appropriate and that the panel must ensure that the proceeding takes place with due expedition.
Also, by bringing this proceeding, the Complainant invoked a contractual obligation of the Respondent arising from the registration of the domain name. The Complainant was the third party beneficiary of that contract. Where the agreement to transfer actually reduces the work of the Panel and does not prejudice the Center, the registrar Compana or the Panel, nor increase their activities, the Panel believes the parties should be able to resolve their dispute, without more, just as any other contractual matter may be resolved between the parties.
So no substantive findings need be made. The Panel agrees with the decisions that adopt the first procedure outlined above. It is noted, however, that the Complaint is directed towards Texas International Property Associates (hereinafter “Texas”) as Respondent and claims that Texas registered the name at issue with Compana LLC. The Complaint attached a WhoIs database sheet (apparently from a website of Budget Names) which is said to show Texas as the proper Respondent. The Response also confirms Texas is the proper Respondent. However, pursuant to WIPO procedures, after the filing of the Complaint, the Center requested the registrar Compana to confirm that Texas is the current registrant of the domain name in question. The response (from Budget Names) identified “Texas International Property Associates- NA NA” (hereinafter “Texas NA NA), with the same address and locator information as for Texas.
Neither party appears to have placed any significance on this possible difference in the Respondent as named in the Complaint and registrant. The addition of NA NA to Texas International Property Associates is unexplained. It may be no more than a computer field which was not completed or some other glitch. Or it may be a significant difference. As noted below, there are scores of UDRP decisions which list Texas NA NA as a respondent, so it can be inferred that NA NA has some meaning as part of a company name.
In any event, having considered all of the information before the Panel regarding Texas and Texas NA NA, the Panel finds no infirmity in the offer to transfer or the Panel's jurisdiction. For example, all of the parties, the Center and the registrar Compana have treated Texas and Texas NA NA to be one and the same in this proceeding. Previous UDRP decisions also seem to use the names interchangeably. See, for example, the decisions above of ABB Asea Brown Boveri Ltd. Case, supra and Citigroup Inc. Case, supra. See also Les Parfumeries Fragonard v. Texas International Property Associates NA NA,WIPO Case No. D2009-0835. Indeed, there are scores of WIPO decisions using one name and scores using the other. Finally, even if Texas and Texas NA NA are not the same entities, there is no reason to doubt that Texas has the power to transfer the name in question, as it has agreed to do.
In view of the above, and the dictates of common sense, the Panel will order transfer of the domain name as requested by both parties without further findings. While there may be some situations where the materials presented to a panel on their face indicate some possible defect in either the complainant's rights or the offer to transfer such that the panel may believe it appropriate to make findings regardless of agreement, this is not such a situation. 7. Decision
For all of the forgoing 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 the Complainant.
Thomas L. Creel
Sole Panelist
Dated: September 27, 2009
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