National Arbitration Forum

 

DECISION

 

Lover's Lane, IP, Ltd. v. Texas International Property Associates - NA NA

Claim Number: FA0904001259080

 

PARTIES

Complainant is Lover's Lane, IP, Ltd. (“Complainant”), represented by Christopher M. Taylor, of Butzel Long, Michigan, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by JanPaul Guzman, of Rothstein Rosenfeldt Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loverslanelingerie.com>, registered with Compana, Llc.

 

PANEL

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.

 

Bruce E. O’Connor as Panelist.

 

PROCEDURAL HISTORY

This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.

 

On April 27, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <loverslanelingerie.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 the Policy.

 

On May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 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 postmaster@loverslanelingerie.com by e-mail.

 

A timely Response was received and determined to be complete on May 26, 2009.

 

On June 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant owns various trademarks consisting of or including LOVER’S LANE, which have been registered and used in conjunction with the sale of adult-themed goods and services including lingerie (the “Trademarks”).

 

The domain name at issue is almost identical to the Trademarks, being distinguished only by the deletion of the apostrophe, the addition of the generic term “lingerie,” and the addition of the generic top level domain “.com.”

 

Respondent has no rights or legitimate interests in the domain name at issue.

 

Respondent has registered and used the domain name in bad faith.

 

Complainant requests transfer of the disputed domain name.

 

B. Respondent

Respondent agrees to the relief requested by Complainant.  Respondent does not make an admission of the three elements of ¶ 4(a) of the Policy, but offers a “unilateral consent to transfer.”

 

FINDINGS

Complainant has established rights in the Trademarks by reason of its trademark registrations.

 

Both Complainant and Respondent request transfer of the domain name to Complainant.

 

DISCUSSION

Where Respondent has not contested the transfer of the disputed domain name, but instead agrees to transfer the domain name in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the domain name in issue.  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.”).  

 

Other UDRP proceedings involving this very Respondent in which the panels accepted the Respondent’s consent to transfer are:  California Academy of Sciences v. Texas International Property Associates, FA 944494 (Nat. Arb. Forum May 15, 2007); The Orvis Company Inc. v. Texas International Property Associates, FA 954151 (Nat. Arb. Forum May 31, 2007); The Antioch Company v. Texas International Property Associates, FA1042590 (Nat. Arb. Forum Aug. 31, 2007); Honeywell International Inc. v. Texas International Property Associates, FA 1046003 (Nat. Arb. Forum Sept. 21, 2007); and General Mills, Inc. v. Texas International Property Associates NA NA, FA1228658 (Nat. Arb. Forum Nov. 20, 2008).

 

Some panels in other UDRP proceedings involving this Respondent have concluded that there should be a decision on the merits by the panel.  Those panels have found that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them.  See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assoc., FA 1195954 (Nat. Arb. Forum July 17, 2008) (“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.”); President and Fellows of Harvard University v. Texas International Property Associates, D2008-0597 (WIPO July 7, 2008) (“Complainant contends that Respondent is a serial cybersquatter, and points to 40 WIPO cases involving Respondent, all of which found against Respondent. Having recently had a number of cases involving Respondent, the Panel is compelled to agree. In all of these recent cases Respondent effectively used a template response, substituting names and dates that were unique to a particular case. Each case included the same language and case citations in consenting to the transfer of the domain name without admitting that Respondent acted in bad faith and without conceding any of the three elements which must be established under the policy. Respondent consistently requests that the transfer be compelled without consideration of the factors. This Panel cannot condone Respondent’s conduct in such manner. In the present case, Respondent has acted in serious bad faith”).

 

The Panel disagrees with the panels in Graabel Van Lines and in President and Fellows of Harvard University.  See Tractor Supply Company v. Texas International Property Associates NA NA, D2008-1547 (WIPO Dec. 12, 2008) (“[P]aragraph 4(i) of the Policy limits the remedies of Complainant, to either cancellation or transfer of the disputed domain name(s).  The consent to transfer gives the Complainant the relief to which it is entitled and that the Panel is authorized to give – nothing less, nothing more. If Respondent is to be discouraged from its conduct, Complainant and other complainants must seek relief under law other than the Policy, through actions in other forums. Why should any such forum give any weight to the findings of this or any other Panel under the Policy in such actions?”); Citigroup Inc. v. Texas International Property Associates NA NA, FA0806001210904 (Nat. Arb. Forum August 5, 2008) (“Judicial economy dictates that the Panel should simply proceed to its decision since there is no dispute between the parties … 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.”).

 

DECISION

Respondent having consented to the transfer, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <loverslanelingerie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. O’Connor, Panelist
Dated: June 17, 2009

 

 

 

 

 

 

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