National Arbitration Forum




West Publishing Corporation v. Texas International Property Associates-NA NA

Claim Number: FA0709001076565



Complainant is West Publishing Corporation (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402.  Respondent is Texas International Property Associates-NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 70341, Dallas, TX 75370.




The domain name at issue is <>, registered with Compana, LLC.



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.


Jeffrey M. Samuels, as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.


On September 24, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On September 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A timely Response was received and determined to be complete on October 15, 2007.



On October 23, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant


Founded in 1872 by John B. West, Complainant West Publishing Corp. is a leading provider of authoritative legal information.  Over the last 135 years, Complainant has extensively used the trademark WEST and other marks incorporating the word WEST in connection with legal products and services.  Complainant owns a number of U.S. trademark registrations for its WEST family of marks, including Registration No. 1,226,635 for the mark WEST, Registration Nos. 1,225,285, 1,591,846, and 2,547,621   for the mark WESTLAW, and Registration No. 2,380,400 for the mark WESTLAW.COM.  See Complaint, Attachment D.  Complainant’s WESTLAW and WESTLAW.COM service has been in use since at least as early as 1989.  It provides quick and easy access to Complainant’s legal materials.  See Complaint, Attachment E.


Upon information and belief, Complainant contends that the disputed domain name, <>, was registered and is being used by Respondent to redirect Internet users to a search portal with “Sponsored Listings” featuring links to third party web sites and search categories related to West’s services.  Upon information and belief, Respondent receives click-through fees every time an Internet user clicks to a link to a third-party website.


Upon discovering of Respondent’s use of the disputed domain name, Complainant sent Respondent a “cease and desist” letter demanding immediate transfer of the domain name.  See Complaint, Attachment G.  This letter followed close on the heels of another UDRP complaint filed by Complainant in connection with Respondent’s registration of the domain names <> and <>.[1]   In response to the “cease and desist” letter in this case, Respondent indicated that its legal representative would respond within 15-21 days and instructed that if Complainant did not hear from Respondent’s counsel after 21 days, Complainant should re-contact Respondent.  See Complaint, Attachment I.


Complainant maintains that the disputed domain name <> appropriates Complainant’s WESTLAW and WESTLAW.COM marks.  The addition of the letter “s” at the end of the <> domain name does not create a distinct mark or defeat a claim of confusing similarity, Complainant argues.


Complainant further contends that Respondent has no trademark rights in the domain name <>.  Upon information and belief, Complainant indicates that Respondent is not commonly known as <>. 


Complainant also asserts that Respondent is not using the domain name in connection with a bona fide offering of goods and services.  Misdirecting consumers through the use of Complainant’s mark does not qualify as a bona fide offering of goods and services, Complainant declares.


Respondent is not making a legitimate noncommercial or fair use of the domain name <>, Complainant maintains.  Complainant indicates, upon information and belief, that Respondent receives commercial gain by featuring “sponsored” links on its search engine and that even if Respondent receives no commercial gain from its <> site, such use would still not qualify as noncommercial or fair use.


With respect to evidence of bad faith registration and use, Complainant argues that: (1) its WEST family of marks is sufficiently distinctive or famous to give constructive notice to Respondent that the registration of <> would violate Complainant’s rights; (2) Respondent’s use of the <> domain name to direct users to a search portal with ads of third parties is evidence of bad faith; (3) Respondent’s use of the disputed domain name is likely to cause confusion as to the source or sponsorship of the <> site; and (4) Respondent has a pattern of bad faith registration of domain names. 


B. Respondent


In its Response, Respondent “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.”  Respondent adds that “[t]his is not an admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral consent to transfer.’”




Under the particular circumstances of this case, where Respondent has consented to transfer of the disputed domain name, there is no need for the Panel to undergo the traditional UDRP analysis.  Instead, the Panel may order the immediate transfer of the domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant …. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); Disney Enters., Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).





Consistent with the above-noted precedent, the Panel concludes that, under the circumstances of this case, it need not engage in the traditional UDRP analysis and may proceed directly to order the transfer of the domain name.



Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Jeffrey M. Samuels, Panelist
Dated: November 5, 2007





[1] The Panel in that case ordered the transfer of the domain names.  See West Publishing Corp. v. Texas International Property Associates, FA 944496 (Nat. Arb. Forum May 15, 2007).  See Complaint, Attachment H.



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