National Arbitration Forum




AT&T Intellectual Property II, L.P. v. H.W. Barnes

Claim Number: FA0908001281920



Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Leanne Stendell, of Haynes and Boone, LLP, Texas, USA.  Respondent is H.W. Barnes (“Respondent”), South Dakota, USA.



The domain names at issue are <>, <>, <>, <>, <>, <>, <>, <>, and <>, registered with Moniker.



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.


James A. Carmody, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2009.


On August 28, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <>, <>, <>, <>, <>, <>, <>, <>, and <> domain names are registered with Moniker and that the Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 September 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 21, 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,,,,,,,, and by e-mail.


A timely Response was received and determined to be complete on September 21, 2009.


On September 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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, the domain names at issue, are  confusingly similar to Complainant’s ATT, CINGULAR, BELLSOUTH and SBC marks.


2.      Respondent does not have any rights or legitimate interests in the domain names at issue.


3.      Respondent registered and used the domain names at issue in bad faith.


B.  Respondent filed a Response which consented to the transfer of the domain names at issue     to the Complainant.



Preliminary Issue: Consent to Transfer

Respondent consents to transfer the <>, <>, <>, <>, <>, <>, <>, <>, and <> domain names to Complainant.  However, after the initiation of this proceeding, Moniker placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending.  As a result, the Panel finds that, in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, it will forego the traditional UDRP analysis and order an immediate transfer of domain names at 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.”).



The Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <>, <>, <>, <>, <>, <>, <>, <>, and <> domain names be TRANSFERRED from Respondent to Complainant.




James A. Carmody, Esq., Panelist
Dated: October 6, 2009







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