National Arbitration Forum




VistaPrint USA, Inc. v. Texas International Property Associates - NA NA

Claim Number: FA0808001219057



Complainant is VistaPrint USA, Inc. (“Complainant”), represented by Jessica Costa, of VistaPrint USA, Inc., Massachusetts, USA.  Respondent is Texas International Property Associates- NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.



The domain names at issue are <>, <>, <>¸ <>, <>, <> and <>, registered with Compana, LLC.



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


Sandra J. Franklin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2008.


On August 6, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <>, <>, <>¸ <>, <>, <> and <> domain names are registered with Compana, LLC and that the Respondent is the current registrant of the names.  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 August 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 2008 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,,,,, and by e-mail.


A timely Response was received and determined to be complete on September 2, 2008.


On September 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.



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



            A.  Complainant makes the following assertions:


1.      Respondent’s <>, <>, <>¸ <>, <>, <> and <> domain names are confusingly similar to Complainant’s VISTAPRINT mark.


2.      Respondent does not have any rights or legitimate interests in the <>, <>, <>¸ <>, <>, <> and <> domain names.


3.      Respondent registered and used the <>, <>, <>¸ <>, <>, <> and <> domain names in bad faith.


B.  Respondent does not admit nor deny the above contentions but consents to the transfer of the domain names to Complainant.



Complainant is the owner of the trademark VISTAPRINT, registered with the U.S. Patent and Trademark Office in March, 2001.  Respondent registered the disputed domain names between January and November of 2005, and uses them to direct traffic to sites which compete with Complainant.



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.



Respondent consents to transfer the <>, <>, <>, <>, <>, <> and <> domain names to Complainant.  Respondent does not contest the transfer of the disputed domain names but instead unequivocally agrees to transfer the domain names in question to Complainant.  That is enough to order the transfer of the domain names to Complainant.  Some Panels nevertheless go forward with an analysis and finding on the three elements of the Policy.  In this Panel’s view, however, it is not incumbent upon UDRP Panels to provide specific ammunition for either side where the parties agree.  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 <>, <>, <>, <>, <>, <> and <> domain names be TRANSFERRED from Respondent to Complainant.




Sandra J. Franklin, Panelist
Dated:  September 24, 2008







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