Zappos.com, Inc. v.
Claim Number: FA0902001249562
Complainant is Zappos.com, Inc. (“Complainant”),
represented by Seán F. Heneghan,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com>, 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2009.
On February 26, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com> domain names are 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 March 6, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 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
A timely Response was received and determined to be complete on March 26, 2009.
On 7 April 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. The Complainant’s submissions are as follows:
FACTUAL AND LEGAL GROUNDS
Complainant, Zappos.com, Inc (hereinafter “Zappos”), is the owner of the trademarks ZAPPOS and ZAPPOS.COM. Complainant’s ZAPPOS and ZAPPOS.COM trademarks are used in connection with its popular online retail store specializing in shoes and accessories. Complainant’s ZAPPOS.COM has been used in connection with these services since as early as 1999. The ZAPPOS mark has been used in connection with its online services since 2003.
Complainant also operates the website 6pm.com in connection with online retail services and acquired the trademarks 6PM and 6PM.COM (and all associated goodwill) from eBags, Inc. in September 2007. The 6PM and 6PM.COM marks have been used in connection with the cited services since November 2005.
Finally, this forum and the World Intellectual Property Organization (hereinafter “WIPO”) have recognized Complainant’s rights in its ZAPPOS.COM family of trademarks in fourteen UDRP proceedings, namely Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO Oct. 15, 2008); Zappos.com, Inc. v. Umbeke Membe et al., FA 1181276 (NAF June 4, 2008); Zappos.com, Inc. v. Web Services Pty c/o Aditya Roshni, FA 1138443 (NAF March 3, 2008); Zappos.com, Inc. v. Craig Pratka, FA 1120105 (NAF Feb. 6, 2008); Zappos.com, Inc. v. Zappos.com Inc., FA 999674 (NAF July 18, 2007); Zappos.com, Inc. v. Jeonggon Seo, Case No. D2006 -0677 (WIPO Aug. 4, 2006); Zappos.com, Inc. v. Univer and Andrea et al., FA 664337 (NAF May 16, 2006); Zappos.com, Inc. v Spiral Matrix, FA 650258 (NAF April 7, 2006); Zappos.com, Inc. v. MEI Gagne, FA 624408 (NAF Feb. 23, 2006); Zappos.com, Inc. v. RENATA Svensdotter, FA 624407 (NAF Feb. 22, 2006); Zappos.com, Inc. v. AAA Marketing World, FA 528209 (NAF Sept. 20, 2005); Zappos.com, Inc. v WhoisGuard Prtected, FA 408128 (NAF March 17, 2005); Zappos.com, Inc. v. Turvill Consultants, FA 404546 (NAF Feb. 28, 2005); and Zappos.com, Inc. v. Turvill Consultants Ltd., FA 227655 (NAF Mar. 4, 2004).
Respondent Texas International Property Associates (hereinafter “Respondent”) registered the confusingly similar domain names <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com> (hereinafter “the subject domain names”) with the registrar Compana, LLC, d/b/a BudgetNames.com (hereinafter “Compana”). All of the subject domain names were registered after Complainant adopted the above-cited trademarks, or with regard to the 6PM and 6PM.COM marks, after these marks were adopted by the predecessor in interest eBags: <zzppos.com> (registered on Jan. 6, 2005), <zapoosshoes.com> (registered Nov. 23, 2005), <zappaos.com> (registered Dec. 17, 2004), <wwzappos.com> (registered Feb. 10, 2005), <zaposhoes.com> (registered Jan. 4, 2005), <zapoos.net> (registered Jan. 31, 2006), <sapposshoes.com> (registered June 9, 2006), <zappols.com> (registered Feb. 10, 2005); <lzappos.com> (registered March 25, 2005) and <6pmshoes.com> (registered Dec. 20, 2005).
Respondent has been using the subject domain names primarily to misdirect Web users to a pay-per-click search service that prominently features links to online footwear services that are virtually identical to, and that directly compete with, Complainant’s services, such as Shoes.com, Shoebuy.com and OnlineShoes.com.
Upon the discovery of most of the subject domain names and in accordance with Complainant’s usual practice for dealing with third parties it believes are attempting to trade on the good will of its valuable trademarks, Complainant’s legal counsel sent a cease and desist letter to Respondent on January 4, 2008. The letter gave notice to Respondent that the registration and use of the subject domains infringed and diluted the ZAPPOS and ZAPPOS.COM marks. Complainant requested, among other things, that Respondent immediately cease all use of the subject domains and prepare to transfer the domains to Complainant.
Respondent replied on January 8, 2008, stating that the January 4 letter had been forwarded to its legal representative and that a substantive reply would be forthcoming within 21 days.
Respondent did not meet its own deadline for a substantive reply so Complainant’s counsel sent an email on February 7, 2008 requesting the promised response as well as citing several UDRP decisions that had been decided against Respondent since the initial January 8 demand letter. After no reply was received, Complainant’s counsel sent another reminder to Respondent on February 21, 2008.
On February 28, 2008, Respondent replied stating its intention to transfer the subject domain names and offered two ways to transfer the domains.
On March 3, 2008, Complainant’s counsel communicated to Respondent that it opted for the transfer of the subject domains directly to Complainant’s registrar and requested the assigned authorization codes for the respective domains to initiate the transfer request. Because Respondent never replied to the March 3 email, Complainant’s counsel sent another email to Respondent on March 14, 2008, reiterating its requests.
Complainant’s counsel sent its final communication to Respondent on November 21, 2008, giving notice that it is the owner of the trademarks 6PM and 6PM.COM and that it learned of Respondent’s registration of 6PMSHOES.COM as well as demanding Respondent allow the subject domains scheduled for renewal to expire.
Respondent never replied to Complainant’s March 3 and 14 and November 21 emails, renewed the registrations for virtually all of the subject domains and Respondent is still using the domain names at the time of the filing of this Complaint.
Complainant’s research indicates that Respondent has been the
respondent party in over 100 cases filed with NAF and more than 75 proceeding
before WIPO. The Panel in Asian World
of Martial Arts Inc. v.
Complainant’s research also indicates that the search service
Respondent is using in connection with the subject domain names is affiliated
with HitFarm.com, which advertises itself as providing “domain portfolio
holders with an easy way to earn revenue from their domain assets through our
professional domain solutions.”
Respondent has admitted to being the registrant of thousands of domain
names and that it contracts with Hitfarm which connects its own websites
to Respondent’s domain names. See
Finally, Complainant notes that prior Panelists have found Respondent has engaged in a “pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits.” See Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1121 (WIPO Dec. 12, 2007). In many of these proceedings, Respondent has been engaged in the same transfer delaying tactics as in the instant case, as
cited by the Panel in Legacy Health System v. Texas International Property Associates, Case No. D2008-1709 (WIPO Jan. 7, 2009):
“A detailed review of relevant UDRP panel decisions involving Respondent reveals a pattern of practice generally involving:
(1) registering domain names that are confusingly similar to another’s legitimate intellectual property;
(2) responding to the legitimate intellectual property owner’s inquiries by setting dates for which it will respond that never actually arrive or in the alternative, agreeing to domain name transfers that never occur;
(3) frustrating the legitimate intellectual property owner to the point of filing a UDRP action to force a domain name transfer; and
(4) responding to UDRP complaints, reiterating consent to a transfer admitting no fault and requesting that “in the interest of judicial economy” that no paragraph 4(a) of the Policy analysis be conducted by the panel under the rules.” (Emphasis added)
In sum, Respondent has been involved in a pattern of bad faith domain name registration and use, and Respondent’s conduct with regard to the subject domain names serves as a classic example of the type of behavior the UDRP was instituted to remedy.
1. The Subject Domain Names Are Confusingly Similar To Trademarks In Which Complainant Has Senior Rights
Complainant Zappos was founded in June 1999 and has since become one of the most successful retail services on the Internet. Complainant’s Zappos.com website features dress, casual and athletic shoes for men and women and a wide selection of styles from each brand of footwear in every size, width, and color. Included among the more than 1,200 brands of shoes are Nine West, Florsheim and Ecco. Complainant’s website also includes well-known brand name apparel and accessories, including handbags, purses and wallets . In addition, Complainant markets footwear and accessories under its own exclusive brands, including TYPE Z and GABRIELLA ROCHA.
Complainant has generated over $1 billion in
gross sales since its inception, and has shipped shoes and
accessories to well over 25,000 cities across the
By virtue of the quality of its services, numerous years of continuous use, and extensive advertising and promotion, the ZAPPOS and ZAPPOS.COM marks are well known to, and well regarded by, the consuming public. Complainant has established clear senior common law trademark rights in ZAPPOS and ZAPPOS.COM for the purposes of the UDRP by the continuous use of the marks in commerce since 1999 and 2003 respectively. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) [noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”].
Complainant has also established additional rights in ZAPPOS and ZAPPOS.COM through its registrations on the Principal Register of the U.S. Patent & Trademark Office that incorporate the marks, namely U.S. Registration Nos. 2,691,842, 2,747,104, 2,791,052, 2,867,708, 2,963,312, 2,998,094, 3,198,639, 3,198,976, 3,198,977, 3,198,978, 3,198,979, 3,393,525 and 3,393,526, primarily for online retail store services featuring footwear and related goods. In addition, Complainant has registered ZAPPOS and ZAPPOS.COM with the Canadian Intellectual Property Office.
Complainant also operates the website 6pm.com in connection with online retail services and acquired the 6PM and 6PM.COM marks (and all associated goodwill) from eBags, Inc. in September of 2007. Through extensive use and promotion of 6PM and 6PM.COM, Complainant and eBags established valuable goodwill in the trademarks and consumers have come to associate the 6PM and 6PM.COM marks with its own goods and services. In addition, Complainant owns U.S. Registration Nos. 3,308,946 and 3,308,948 for the 6PM mark and U.S. Registration Nos. 3,308,947 and 3,308,950 for the 6PM.COM mark, all for online retail store services.
This evidence of trademark registrations proves Complainant’s rights in ZAPPOS, ZAPPOS.COM, 6PM and 6PM.COM. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (NAF Sept. 16 2002) [“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”]; see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) [finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption].
Turning to the subject domain names, all are nearly identical to - and confusingly similar to - Complainant’s cited trademarks. With regard to the domains <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, all are similar to Complainant’s ZAPPOS and ZAPPOS.COM because they incorporate common misspellings of Complainant’s marks. For example, ZZPPOS.COM includes an additional “z” and omits “a”; ZAPPAOS.COM includes an additional letter “a” and WWZAPPOS.COM includes “ww”. A number of Panels have found that, under the UDRP, common misspellings of a trademark does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error. See Ganz v. Texas International Property Associates, FA 991778 (NAF July 19, 2007) [finding that <webkinzz.com>, <webkniz.com>, and <weblinz.com> are not generic words and/or common surnames and are confusingly similar to Complainant’s WEBKINZ mark]; and see also JELD-WEN Inc. v. Texas International Property Associates FA882053 (NAF Feb. 2, 2007) (holding that <geldwin.com>, <jeldwan.com>, <jeld-wend.com>, <jeldweld.com>, among others were confusingly similar to Complainant’s JELD-WEN mark).
With regard to <zapoosshoes.com>, <zaposhoes.com> and <6pmshoes.com>, these domains are confusingly similar because they include variations of Complainant’s cited marks and add the generic or descriptive term “SHOES”. There is a long line of prior Panel decisions have established that where a domain name merely adds generic or descriptive terms to a trademark, and where those terms are related to the goods or services offered under that mark, such domain name should be considered confusingly similar to the trademark pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (NAF Sept. 14, 2000) [finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy]; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) [finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business].
Furthermore, the minor differences such top-level domains are not sufficient to distinguish the subject domain names from the Complainant’s trademarks under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) [finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar].
Clearly, the obvious similarity of the subject domain names with Complainant’s senior trademarks as well as Respondent’s clear pattern of registering domains that are confusingly similar to third party trademarks, make it evident that the subject domains are confusingly similar to Complainant’s marks. The subject domains are likely to confuse Complainant’s customers and potential customers into believing that there is some affiliation, connection, sponsorship, approval or association between the Respondent and Complainant when in fact none exists, and that is precisely the intent of the Respondent.
Thus, Section 4(a)(i) of the UDRP is satisfied.
2. Respondent Has No Rights Or Legitimate Interests In the Subject Domain Names
Respondent has no legitimate rights or interests in the subject domain names because Respondent has neither used, nor has made any demonstrable preparations to use, the subject domain names or corresponding names in connection with any bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.
On the contrary, Respondent is currently using the subject domain names
to misdirect consumers attempting to access Zappos.com or 6pm.com
to pages at the “cost per click” search engine.
Users are confronted with search results and a Web directory that
displays a search box titled “Popular Links” and features links to competing
footwear services to those at Zappos.com. Respondent’s attempt to profit from the
goodwill Complainant has built up around the cited trademarks does not evidence
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and
cannot be considered a legitimate noncommercial or fair use of the domains
pursuant to Policy ¶ 4(c)(iii).
Complainant also argues that Respondent is not commonly known by any of
subject domain names.
Finally, Complainant states that it has no affiliation, association, or business relationship of any kind with Respondent and Complainant has not licensed or authorized Respondent to use the cited trademarks in any manner. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) [finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name].
Therefore, the subject domains, because they are used to misdirect consumers to third party commercial websites and not in connection with any bona fide business, are not legitimately used for the provision of any goods and services.
Thus, Respondent has no legitimate interests in the subject domain names, as legitimate interests are defined in Section 4(c)(i)-(iii) of the UDRP, and therefore the second element of Zappos’ Complaint under Section 4(a)(ii) of the UDRP is also satisfied.
3. The Subject Domain Names Have Been Registered And Are Being Used In
Respondent has registered and used the confusingly similar subject domain names in bad faith under Sections 4(b)(iii) and (iv) of the UDRP. Respondent has registered the subject domain names in bad faith because they are being used to intercept consumers intending to access Complainant’s Zappos.com and 6pm.com websites and, instead, divert such users to third party commercial websites that features links to competing services, including Shoes.com and ShoeBuy.com.
Respondent registered the subject domain names after Complainant had adopted and began using the cited trademarks. Moreover, when registering the subject domain names, Respondent was clearly aware of the existence of the Complainant and its trademark rights, given that the only differences between the subject domain names and Complainant’s trademarks are either they incorporate common typographical errors and/or generic and/or descriptive terms that are directly related to Complainant’s service.
After Complainant learned of the registration and use of the subject domains, legal counsel sent Respondent a demand letter requesting that it (1) cease using the subject domain names and (2) transfer the domains to Complainant. After several communications between the parties over several months, Respondent never transferred the subject domain names, recently renewed their registrations and the domains are still in use at the time of the filing of this Complaint.
Addressing the Section 4(b)(iii) first, Respondent is functioning as a competitor of Complainant by linking to similar online retail services which operate in the same channel of trade with Complainant’s trademarks and Zappos.com service. Such unauthorized offering of services in connection with domain names that are confusingly similar to Complainant’s trademarks is evidence that Respondent registered the subject domains primarily to disrupt Complainant’s business and that Respondent is using the subject domains in bad faith under 4(b)(iii). See Persohn v. Lim, FA 874447 (NAF Feb. 19, 2007) [finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the Complainant’s competitors]; see also IndyMac Bank, F.S.B. v. Jason U Carpenter d/b/a Jason U Internet Inc., FA 474818 (NAF June 24, 2005) [Use of a domain name to redirect to search engine website that features links to competing service constitutes disruption and is evidence that Respondent registered and used domain in bad faith pursuant to Policy ¶ 4(b)(iii)].
Turning to the Section 4(b)(iv) claim,
Respondent is using the subject domain names in bad faith as it attempts to
attract, for commercial gain, Web users to a commercial search service that
hosts links to commercial entities including the Complainant’s competitors, and
by creating a likelihood of confusion with Complainant’s long-used trademarks
and the associated popular websites. By
using the subject domain names to host links to commercial entities including
the Complainant’s competitors, Respondent has attempted to attract, for
commercial gain, Web users to its websites by creating a likelihood of
confusion with the Complainant’s trademarks as to source, sponsorship,
affiliation or endorsement of the linked sites. Such conduct is evidence of the
registration and use of the subject domain names in bad faith under paragraph
4(b)(iv) of the Policy (see inter alia ChoicePoint
Asset Company LLC v.
Finally, Respondent has engaged in similar conduct with respect to
registering domain names that are confusingly similar to trademarks of third
parties. Respondent's pattern of typosquatting is additional evidence of
bad faith registration and use. See United Consumers Club, Inc.
In light of the facts discussed above, the inescapable conclusion is that Respondent is attempting to benefit commercially from the confusion created by the registration and use of the subject domain names, which are virtually identical and confusingly similar to Complainant’s cited trademarks. Respondent’s activities in the instant case prove that the registration and use of the subject domains is in bad faith, as such registration and use is defined in Sections 4(b)(iii) and (iv) of the UDRP and, therefore, the third and final element of Zappos' Complaint under Section 4(a)(iii) of the UDRP is satisfied.
Based on the foregoing, Complainant Zappos submits that the evidence shows that the subject domain names are confusingly similar to trademarks in which Complainant has rights; the Respondent has no rights or legitimate interests in the domain names; and the subject domains have been registered and are being used in bad faith by Respondent. Accordingly, Complainant requests that this Panel order the transfer of the subject domain names to Complainant, which holds clear senior rights in the ZAPPOS, ZAPPOS.COM, 6PM and 6PM.COM trademarks. A decision by this Panel to preserve the status quo would serve only to reward Respondent for engaging in bad faith and unlawful conduct with respect to the domain name registrations, and would encourage others like Respondent to do the same.
B. The Respondent’s submissions are as follows:
Respondent’s Consent to Transfer
[1.] Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This 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.
[2.] In The Cartoon Network LP, LLLP v. Mike Morgan, Case No. D2005-1132 (WIPO January 5, 2006)[i] the Panel noted that where the Respondent has made an offer to transfer there were numerous ways the Panel could proceed:
(i) to grant the relief requested by the Complainant on the basis of the
Respondent’s consent without reviewing the facts supporting the claim
(see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland
The Panel, conscious of Rule 10(c)’s caution for “due expedition” decided that the best and most expeditious course was that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.” (citing from Williams-Sonoma, Inc. v. EZ-Port, Case No. D2000-0207 WIPO May 5, 2000)[ii]
[3.] The Panel in Citigroup Inc. v.
Judicial economy dictates that the Panel should simply proceed to its
decision since there is no dispute between the parties. Thus, this Panel disagrees with the
proposition that even though a respondent consents to transferring an at-issue
domain name, a substantive review may be required. See Graebel
Van Lines, Inc. v.
Judicial economy and the very purpose of the UDRP demands expeditious and economical resolution of UDRP disputes. A respondent that consents to requested relief avoids having to expend the time and resources necessary to respond. Furthermore, having consented to the relief requested, the respondent’s pleadings will normally not offer a substantive defense. Why should it? A panel’s focus on Policy 4(a) elements in a dispute where the respondent avoids a substantive response for reasons of economy may thus result in a bias toward the complainant’s position. Alternatively, requiring a respondent that consents to the requested relief to substantively respond to a complaint or face a decision and adverse findings based solely on the aversions of the complainant does not further the UDRP’s interest in providing an abbreviated economical procedure for resolving domain name disputes.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied or dismissed.
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.
Policy ¶ 4(i) (emphasis added).
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.
If the Panel decides that analysis is required, Respondent respectfully requests that Respondent be given the opportunity to prepare a more formal response.
[4.] For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
The Respondent has put in a formal Response with the assistance of legal advice and has agreed to transfer the Domain Name to the Complainant as the Complainant requests.
Respondent consents to transfer the <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com> domain names to Complainant. However, after the initiation of this proceeding, the registrar, Compana LLC, placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As the Respondent has not contested the transfer of the disputed domain name but with legal advice has instead agreed to transfer the domain name in question to Complainant, the Panel has decided in this case to forego the traditional UDRP analysis and order an immediate transfer of the <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com> domain names. 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 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 reviewed the Complainant’s request for relief and the Respondent’s consent to that relief with the assistance of legal advice, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zzppos.com>, <zapoosshoes.com>, <zappaos.com>, <wwzappos.com>, <zaposhoes.com>, <zapoos.net>, <sapposshoes.com>, <lzappos.com>, <zappols.com>, and <6pmshoes.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 21, 2009
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NATIONAL ARBITRATION FORUM
[i] The Cartoon Network LP, LLLP v. Mike Morgan, Case No. D2005-1132
(WIPO January 5, 2006)
[ii] Williams-Sonoma, Inc. v. EZ-Port, Case No. D2000-0207
(WIPO May 5, 2000)
FA0806001210904 (Nat. Arb. Forum August 5, 2008)