WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fry's Electronics Inc. v. Texas International Property Associates
Case No. D2007-0343
1. The Parties
The Complainant is Fry's Electronics, Inc. of San Jose, California, United States of America, represented by Foley McIntosh Frey & Claytor, United States of America.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America, represented by the Law Offices of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <fyrselectronics.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 28, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2007. The Response was filed with the Center on April 19, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 27, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 1, 2007, the Complainant submitted a letter in reply to the Response.
4. Factual Background
The Complainant is a California corporation engaged in the retail sale of computers, electronic components, and related products at 36 electronics “superstores” in eight states of the United States of America, as well as online through its website at “www.frys.com”. Since February 2001, the Complainant has also used the domain name <fryselectronics.com> to direct Internet users to its website at “www.frys.com”. It is undisputed that the Complainant has been known by its corporate name Fry’s Electronics, Inc. since March 1985 and has done business continuously under that name since then.
The Complainant obtained United States Trademark Registration No. 2031351 on January 21, 1997 for the words FRY’S ELECTRONICS in a stylized form, showing first use in commerce on May 17, 1985. The trademark registration disclaimed the exclusive right to use the word “electronics” and indicated that John C. Fry was a living person whose consent was on record.
The Complainant also obtained United States Trademark Registration No. 2102637 on October 7, 1997 for FRY’S as a typed drawing (standard character mark), showing first use in commerce on May 17, 1985.
According to the Registrar’s WHOIS database, the Respondent registered the Domain Name on January 30, 2005. The Domain Name currently resolves to an advertising directory page with “Sponsored Links” to a variety of advertising portals or individual advertisers, including retailers offering electronics products.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its FRY’S and FRY’S ELECTRONICS marks and that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent registered and used the Domain Name in bad faith, in an effort to divert Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks.
The Respondent filed a brief response offering to transfer the Domain Name to the Complainant. According to the Response, this “unilateral consent to transfer” is not intended as an admission of any of the three elements of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Here, the Respondent, represented by legal counsel, has submitted a Response consenting to the transfer of the Domain Name to the Complainant. In its May 1, 2007 letter to the Center and Panel, which the Panel accepts as a supplemental filing, the Complainant urges the Panel to act on this consent and order the transfer of the Domain Name.
The Policy and Rules do not expressly address the possibility of a consensual transfer after a Complaint has been submitted to an administrative panel. However, the Rules, paragraph 10(c), urge panels to proceed with “due expedition”, an objective that can be advanced by acting on the Respondent’s consent to transfer the Domain Name without further delay. Moreover, paragraph 15(a) of the Rules provides that the Panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In the United States, where both parties are located, it is a commonplace that courts and arbitrators seek where possible to conserve public and private resources by facilitating the consensual resolution of legal disputes.
Other UDRP panels have ordered the transfer of disputed domain names when the respondent consented to such a transfer, although they have expressed different opinions on the necessity of first evaluating whether the complaint satisfies the three elements of the Policy, paragraph 4(a), or determining whether there is reason to doubt the genuineness of the Respondent’s consent. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and cases cited therein.
This Panel concludes that it is consistent with the Policy, the Rules, and the common policy and practice of courts and arbitrators in the United States to honor a genuine and uncontested consent to grant the relief requested by the Complainant. The Complaint in this proceeding makes a prima facie case for satisfying each of the Policy elements based on its registered FRY’S mark, but the Complainant does not object to a transfer order that foregoes findings on each of those elements. The Respondent is represented by legal counsel and unequivocally consents to transfer, and there is nothing in the record casting doubt on the genuineness of consent. Thus, the Panel finds no obstacle to entering an order for transfer based on consent.
The Panel notes that the Respondent has been the subject of several Policy complaints this year and has resolved at least one of them, in addition to the current proceeding, by consenting to transfer. See, e.g., Bond & Co. Jewelers, Inc. v. Texas International Property Associates, NAF Claim No. FA0703000937650 (transfer ordered); American Airlines, Inc. v. Texas International Property Associates, NAF Claim No. FA0702000914854 (transfer ordered); Wigwam Mills, Inc. v. Texas International Property Associates, NAF Claim No. FA0701000903891 (transfer denied); Genzyme Corporation v. Texas International Property Associates, NAF Claim No. FA0702000921807 (transfer ordered by consent). The frequency of these disputes suggests to the Panel that the Respondent would be well advised to review its practices in registering and using domain names.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fyrselectronics.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: May 2, 2007