Cengage Learning Inc. v.
Claim Number: FA0802001144008
PARTIES
Complainant is Cengage Learning Inc. (“Complainant”), represented by Alexandre
A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chiltonsdiy.com>, registered with Compana, LLC.
PANEL
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.
Mr. P-E H
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 12, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 13, 2008.
On February 14, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <chiltonsdiy.com> 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 February
20,
A timely Response was received and determined to be
complete on March 11, 2008.
On March 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. P-E H
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that
its CHILTON trademarks are, by reason of extensive use and advertising, famous
in the publishing industry.
Complainant further states
that the disputed domain name is confusingly similar to CHILTON, as it fully
incorporates the said trademark, with the generic addition “diy” (“do-it-yourself”). This generic term corresponds to the goods and
services offered under Complainant’s trademark. Complainant also claims common law trademark rights
to CHILTON DIY, extensively used in commerce in connection with Complainant’s
"do-it-yourself” goods and services.
Complainant
argues that Respondent has no rights or legitimate interests with respect to <chiltonsdiy.com>, as Respondent is
not commonly known by this domain name, has no permission from Complainant to
use CHILTON as part of a domain name and is
not making a legitimate noncommercial or fair use of the disputed domain name.
Finally,
Complainant concludes that the domain name has been registered and used in bad
faith by Respondent. According to Complainant,
Respondent is a well-known cybersquatter, named as
Respondent in 57 separate UDRP disputes before the
National Arbitration Forum since February 2007 (a list of these disputes
provided as exhibit L of the Complaint). Respondent
operates a website from <chiltonsdiy.com>,
offering sponsored links to third party websites which
offer goods and services that are directly competitive to those of Complainant
(Exhibit H of the Complaint).
Complainant
informs that a warning and demand letter was sent to Respondent on September 5,
2007, stating that Respondent’s registration and use of the disputed domain
name infringed Complainant’s legal rights. Since no response was received from Respondent,
a second demand letter was sent on October 18, 2007. On October 22, 2007, Respondent replied via
e-mail, stating that the demand letter had been forwarded to a legal
representative, and that a response would be issued within 15 to 21 days.
Complainant did, however, not receive
any such response.
B. Respondent
Respondent
refers to the communication of October 22, 2007 between the Parties and informs
that Respondent’s counsel recommended transfer of the disputed domain name. Due to a change in staff, this was not communicated to Complainant. The counsel for Respondent contacted the counsel
for Complainant prior to filing the Response to attempt suspend the instant
proceeding to effectuate the transfer of the disputed domain name but received
no reply.
Respondent
agrees to the relief requested by Complainant but states that this is not an
admission to the three elements of 4(a) of the policy but rather an offer of
“unilateral consent to transfer”
FINDINGS
Complainant is a provider
of automotive reference materials, including those which
provide “do-it-yourself” advice. Chilton Publishing
Company was founded in 1922. Complainant acquired the Chilton
automotive assets in 2003, including the CHILTON trademarks. Complainant is the owner of the following
No. 2,559,631 CHILTON (Intl Class 39)
No. 2,840,037 CHILTON’S (Intl Class 37)
No. 2,775,995 CHILTON’S
ONLINE (Intl Class 39)
No. 2,713,595 CHILTON (Intl Class 9)
No. 2,585,983 CHILTON (Intl Class 16)
No. 2,605,298 CHILTON’S (Intl Class 16)
Respondent
registered the disputed domain name on May 2, 2005.
According to Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “a Panel shall 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.”
In this case, Respondent does not contest Complainant’s request that the
disputed domain name be transferred from Respondent to
Complainant. In fact, Respondent requests that the Panel order
the transfer.
Therefore, under these special
circumstances, this Panel decides to forego the traditional UDRP analysis, not
to make any further findings or discussion, and order the immediate transfer of
the disputed 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.”).
DECISION
Giving the special circumstances in this case, the fact that Respondent
has consented to the transfer of the domain name, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered
that the <chiltonsdiy.com>
domain name be TRANSFERRED from Respondent to Complainant.
Mr P-E H
Dated: March 31, 2008
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