National Arbitration Forum




Woodfin Suite Hotels, LLC v. Texas International Property Associates

Claim Number: FA0710001094577



Complainant is Woodfin Suite Hotels, LLC (“Complainant”), represented by John C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP, 151 Meeting Street, Charleston, SC 29402.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, 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.


James A. Carmody, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2007.


On October 31, 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 November 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 23, 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 Response was received and determined to be complete on November 23, 2007.  However, the hard copy of the Response was late pursuant to ICANN Rule 5.


On November 30, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.



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




A.     Complainant

1.  The <> domain name at issue is confusingly similar to Complainant's marks.


2.  Respondent has no rights or legitimate interests in the disputed domain name.


3.  Respondent registered the disputed domain name in bad faith.


B. Respondent

Respondent filed a Response which consents to the relief requested by Complainant.





Prior to the registration of the domain name at issue, Complainant established its common law rights in the WOODFIN trademark and its family of related WOODFIN marks, including WOODFIN SUITE HOTEL, through its extensive use of such marks for almost twenty years prior to the registration of <>.  See ZRT Lab., LLC v. Tex. Int’l Prop. Assocs., FA 907499 (Nat. Arb. Forum Mar. 27, 2007) (finding Complainant had rights in marks, even in absence of federal registration, based upon use of marks for over eight years).  In addition, almost fifteen years prior to the registration of the domain name at issue by Respondent, Complainant achieved ownership of the federal registration for the design mark WOODFIN SUITES used in connection with hotel services and, over two years prior to such registration, Complainant achieved federal registration for the words WOODFIN SUITE HOTEL in connection ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration. 


The Respondent has filed a Response which does not dispute Complainants allegations and which consents to the relief requested by Respondent.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.


Preliminary Issue: Consent to Transfer the Subject Domain Name


Respondent has not disputed Complainant’s allegations regarding the <> domain name.  Rather, Respondent has consented to a decision in favor of Complainant and has authorized the immediate transfer of the subject domain name.  The Panel finds that in a circumstance such as this, where Respondent has consented to the transfer of the disputed domain name, the Panel decides to forego the traditional analysis and 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 the respondent stipulated to the transfer); see also 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (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.”).




Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


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





James A. Carmody, Esq., Panelist
Dated:  December  10, 2007







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