Carollo Engineers, P.C. v.
Claim Number: FA0902001247053
PARTIES
Complainant is Carollo Engineers, P.C. (“Complainant”), represented by Nicholas
D. Myers, of BURKHALTER KESSLER
GOODMAN & GEORGE, LLP, California, USA. Respondent is Texas International Property Associates
- NA NA (“Respondent”), represented
by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <carolloengineers.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On February 12, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <carolloengineers.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 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 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 postmaster@carolloengineers.com by e-mail.
A timely Response was received and
determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent requests that the Panel order the immediate transfer of the disputed domain name to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant avers as follows:
Complainant states that Complainant
began using its trademark CAROLLO ENGINEERS in the
Complainant has rights to the
trademark CAROLLO ENGINEERS by virtue of its valid principal and supplemental
registrations with the United States Patent and Trademark Office (hereinafter
“USPTO”) U.S. Registration No. 2,895,339 and U.S. Registration No. 2,596,248,
respectively, and its pending application for the stylized mark with the USPTO.
Respondent’s domain name <carolloengineers.com> is identical to Complainant’s trademark as it is wholly incorporated into Respondent’s domain name.
Complainant has invested substantial time and money and effort in advertising, promoting and marketing its business and its CAROLLO ENGINEERS trademark, and has developed tremendous goodwill and consumer loyalty therein. Use of the disputed domain name <carolloengineers.com> will result, and has likely already resulted, in consumer confusion of the sort that is extremely detrimental to Complainant and its loyal customers.
Respondent registered the disputed
domain name on
Respondent has acted in bad faith in that Respondent has no legitimate rights to the domain name, has never been known by the domain name and has never used the domain name in connection with any non-commercial or fair use.
Furthermore, Respondent has taken active steps to conceal its true identity by failing to provide administrative, technical and registrant contact information. Finally Respondent has been party to several domain name disputes where it was found that Respondent acted in bad faith.
B. Respondent
Respondent avers as follows:
Respondent agrees to the relief requested by the Complainant. However, the Respondent states that this offer is not an admission to the three elements of 4(a) of the Policy, but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
Respondent further states that the remedies available to a Complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of the domain name or the transfer of the domain name registration to the Complainant.
A Panel’s only purpose in rendering substantive paragraph 4(a) findings is relegated to that end, and that end alone.
For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
FINDINGS
Respondent’s unilateral consent to transfer serves as a basis for the Panel’s immediate order for transfer, without an analysis of the elements of paragraph 4(a) of the Policy.
DISCUSSION
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.
The Panel has reviewed the statements and documents submitted in accordance with the Policy, Policy Rules, and rules and principles of law that panel deems applicable.
In the case at bar,
Respondent, in his Response, states that Respondent agrees to the relief
requested by Complainant and will, upon order of the Panel, do so. This is not
an admission to the three elements of the Policy, but rather an offer of “unilateral consent to transfer” as prior
Panels have deemed it.
Paragraph 4(a) of the Policy requires Complainant to prove the above-cited three elements of the Policy to obtain an Order that a domain name should be transferred or cancelled. This Panel rules that Complainant’s burden of proof is alleviated where Respondent has tendered an offer, in the form of agreement, with Complainant’s request for relief that Respondent’s domain name be transferred from Respondent to Complainant. Thus, the Panel is alleviated of the duty to analyze or to verify Complainant’s pro-offered evidence and may proceed summarily to order the transfer of the disputed domain name.
A prior panel,
faced with a like issue, decided to transfer the domain name registration where
the respondent stipulated to the transfer.
See Boehringer Ingelheim Int’l
GmbH v. Modern Ltd. Cayman Web Dev., FA 133625 (Nat. Arb. Forum
DECISION
Having established that Respondent has consented to judgment in favor of Complainant and that the Panel is thereby authorized to forego the traditional UDRP analysis and to order the immediate transfer of the disputed domain name, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is Ordered that the <carolloengineers.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq.,
Panelist
Dated: April 03, 2009
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