Barrow Industries Inc. v.
Claim Number: FA0812001239732
Complainant is Barrow Industries Inc. (“Complainant”), represented by Andrew
J. Ferren, of Goulston & Storrs, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barrowfabric.com> and <barrowfabrics.com>, 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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2008.
On December 24, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <barrowfabric.com> and <barrowfabrics.com> domain names are registered with Compana, LLC and that 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 January 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2009 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
On February 4 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett Gordon Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent consents to the transfer.
Complainant asserts trademark rights and alleges that the disputed domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
Respondent does not admit to any of the matters alleged by Complainant, but nor does it attempt to refute them. Instead it agrees to the relief sought by Complainant and to transfer of the domain names and urges the Panel to order transfer on the basis of that consent to transfer rather than through application of the Policy.
1. Complainant is, inter alia, a manufacturer of fabrics which it has sold under the trademark BARROW FABRICS since 1979.
2. The domain name <barrowfabric.com> was registered on June 15, 2006 and the name <barrowfabrics.com> was registered on Febraury 28, 2005.
3. Respondent is using the <barrowfabric.com> and <barrowfabrics.com> domain names to display per-per-click advertising and links, some of which lead to the websites of Complainant’s competitors.
4. There is no relationship between the parties, nor has Complainant authorized Respondent to use its trademark or any domain name incorporating it.
5. The evidence shows that Respondent has been the subject of prior complaints under the Policy[i].
Paragraph 4(a) of the Policy requires that 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 names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
Notwithstanding the foregoing, a panel may also grant a complainant’s requested relief when a respondent consents to that relief.
Preliminary Procedural Issue: Consent to Transfer
Where there is a clear bilateral request for transfer of a domain name it has been remarked that:
In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. 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.[ii]
In this case Complainant petitions the Panel to transfer the disputed domain names but has not expressly consented to the transfer nor withdrawn its request for the matter to be determined under paragraph 4(a) of the Policy. Some former panelists have argued that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. By way of example, in Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
No doubt there are special cases of abusive registration where that approach is justified, however it has also been observed that panelists are directed by Rule 10(c) to ensure that administrative proceedings take place with due expedition. So, for example, in the case of Citigroup Inc. v. Texas International Property Associates- NA NA, FA 1210904 (Nat. Arb. Forum August 5, 2008), it was said:
Judicial economy and the very purpose of the UDRP demands expeditious and economical resolution of UDRP disputes. … A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What amounts to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and that complainant has rights in the at-issue domain name(s), then only under particular circumstance that call into question the validity of the respondent’s consent, or for similar other good cause, might a panel need to proceed to consider the merits of the complaint via further analysis under Paragraph 4(a). Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
For these reasons, and on the facts of this case, this Panel sees no special reason to apply paragraph 4(a) of the Policy and so proceeds directly to its decision.
It is Ordered that the <barrowfabric.com> and <barrowfabrics.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Panelist
Dated: February 18, 2009
[i] See, e.g., JELD-WEN,
[ii] Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003); Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Nat. Arb. Forum Sept. 5, 2003) and Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005); Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page