Half Price Books, Records,
Magazines, Incorporated v.
Claim Number: FA0810001229305
PARTIES
Complainant is Half Price Books, Records, Magazines,
Incorporated (“Complainant”),
represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, 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 <halfpriceboks.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.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 13, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 14, 2008.
On October 16, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <halfpriceboks.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 October 20, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 10, 2008 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 October 20, 2008.
On November 6, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Contends as follows:
Half Price Books is a
Half Price Books owns of various trademarks registered on the Principal
Register of the United States Patent and Trademark, including Registration No.
2,568,842 for the mark HALF PRICE BOOKS, RECORDS, MAGAZINES, which issued on
May 14, 2002 and Registration No. 2,758,632 for the mark HALF PRICE BOOKS which
issued on September 2, 2003. Both of
these registrations were registered on the Principal Register under Section
2(f) of the Lanham Act based on the extensive advertising and promotion by Half
Price Books of the HALF PRICE BOOKS mark.
The domain name <halfpriceboks.com> contains a common
misspelling of the HALF PRICE BOOKS
Consumers who encounter a website located at the domain name <halfpriceboks.com>
are highly likely to believe that the site is sponsored by or affiliated with
Complainant; therefore, the domain name is confusingly similar to Complainant’s
registered trademarks.
Respondent is not commonly known by the name <halfpriceboks.com>,
nor has Respondent used the domain name in connection with a bona fide offering
of goods and services or for a legitimate noncommercial or fair use.
The WHOIS record does not provide any information indicating that
Respondent is commonly known by the disputed domain name. Rather, the Registrant is listed as “Texas
International Property Associates – NA NA”.
Respondent is using Complainant’s HALF PRICE BOOKS mark to exploit the
fact that Complainant’s customers and potential customers may assume that a
website located at a domain name incorporating a common misspelling of the HALF
PRICE BOOKS trademark is affiliated with or sponsored by Complainant. The
disputed domain name previously resolved to a parked website that contained a
directory of links referring to Complainant and its products, as well as
unrelated third parties, products and services.
After being notified of this dispute, Respondent disabled the domain
name but has failed and refused to transfer it to Complainant.
The use of a domain name that is confusingly similar to Complainant’s
trademark to attract computer users to Respondent’s own commercial website is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain
name pursuant to Policy ¶ 4(c)(iii).
Furthermore, use of a trademark in a domain name to provide a directory
of links to competitors’ goods and services does not constitute a legitimate
noncommercial or fair use of the domain name or a bona fide offering of goods
or services under Policy ¶ 4(c), even if those links include the complainant.
Complainant, as owner of the HALF PRICE BOOKS trademark, has not
licensed this use of its mark or otherwise authorized the registrant to use any
of the HALF PRICE BOOKS
Therefore, the Respondent has no rights or legitimate interests in the
disputed domain name.
Respondent registered the <halfpriceboks.com> domain name
in bad faith. Respondent registered the
disputed domain name with knowledge of Complainant’s rights, which is evidence
of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
Based upon the fact that Complainant and Respondent are both located in the
Dallas, Texas area, and based upon Complainant’s registration of the HALF PRICE
BOOKS mark and the notoriety of the HALF PRICE BOOKS mark, one could easily
infer that Respondent knew of Complainant’s ownership of the HALF PRICE BOOKS
mark and that Respondent acted in bad faith by registering a domain name that
includes a common misspelling of a mark it knew or should have known was the
proprietary property of another.
Furthermore, Respondent has had numerous cases filed against it for the
use and registration of domain names incorporating famous trademarks. This evidences a pattern of conduct by
Respondent which is further evidence of Respondent’s bad faith pursuant to
Policy ¶ 4(b)(iv). Additionally, because the domain name at issue
resolved to a parked web page that contained links to third-party sites, some
of which offer services related to those offered under Complainant’s marks,
which Respondent benefits financially from, this is evidence of bad faith.
Therefore Complainant contends that Respondent has registered and is
using the domain name <halfpriceboks.com> in bad faith.
B. Respondent
Respondent contends as follows:
Although Respondent does not admit to the three elements of 4(a) of the
policy Respondent nevertheless unilaterally consents to the relief requested by
the Complainant and will, upon order of the Panel, allow the transfer to
proceed.
FINDINGS
Complainant has demonstrated that it has
rights in the at-issue domain names by virtue of its trademark registrations
and otherwise.
Respondent consents to having the at-issue
domain names transferred to Complainant.
The Complaint neither objects to consensual
transfer nor requests that the Panel render its decision based on an analysis
of each of the substantive Policy elements.
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.
Notwithstanding the foregoing, inquiry into all of the above factors is not always necessary or appropriate. A panel may grant a complainant’s requested relief when a respondent consents to such relief. 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.”).
This Panel recently held:
[W]hen 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).
Citigroup
Inc. v.
As also held in Citigroup
Inc., a prerequisite to obtaining the relief requested, even where as here
Respondent consents to such relief, is that the complainant must at least
demonstrate that it has rights in the at-issue domain
name(s) pursuant to Policy ¶4(a)(i). Complainant has done so. Complainant
has rights in the at-issue mark by virtue of its federal trademark registration
and long-term use of the mark in commerce.
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”). Additionally, the
at-issue domain name is confusingly similar to Complainant’s mark. The second
level domain name is a common misspelling of Complainant’s mark. See, Microsoft Corp. v.
Domain Registration
The fact pattern in the instant case is very
similar to that in Citigroup Inc., cited above. Respondent in that UDRP
proceeding is the Respondent in the instant case. In Citigroup Inc. this Panel found that “[j]udicial economy dictates that the
Panel should simply proceed to its decision since there is no dispute between
the parties.” That rational applies
here. Therefore, the requested relief
must be granted.
DECISION
Having established that Complainant has an interest in the domain names
and that Respondent consents to the requested relief, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <halfpriceboks.com> domain name be TRANSFERRED
from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 20, 2008
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