WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sassybax, L.L.C. v. Texas International Property Associates
Case No. D2007-1190
1. The Parties
The Complainant is Sassybax, L.L.C., Los Angeles, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sassybac.com> is registered, as noted herein, with Compana LLC, doing business as BudgetNames.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 14, 2007, and again three days later, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On August 17, 2007, the Center received a response from an email address with a “@budgetnames.com” suffix stating that Texas International Property Associates “has submitted to the terms in the UDRP through our English registration agreement located at www.budgetnames.com. All relevant information concerning the registration is included in that agreement.” In reply, on August 20, 2007, the Center requested confirmation of other details relating to the registration, as it had previously requested, including the domain name’s status while the proceeding is pending and its expiration date. On August 22 and 24, 2007, the Center repeated its request. The registrar did not further acknowledge or respond to the Center’s requests.
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.
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 August 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2007. The Response was filed with the Center on September 19, 2007, and stated in relevant part, “Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” Resp. at 2, ¶ 5.
Upon receipt of the Response, and given its content, on September 19, 2007, the Center by email contacted counsel for both the Complainant and Respondent and advised that “the parties may wish to consider communicating directly with each other with a view to settling the matter amicably.” In the same correspondence, the Center explained that if the Complainant wishes to request a suspension of the proceeding to conduct settlement negotiations, the Complainant or its authorized representative should contact the Center, with a copy to the Respondent, by the following day. Otherwise, the Center stated, it would proceed with the appointment of the Panel under the Rules. On September 20, 2007, counsel for the Complainant inquired whether the Panel appointment fee would be refunded if “we settle and do not utilize the panel.” The Center answered on the following day that “if the case is terminated before the Panel appointment, we shall refund to Complainant any fee paid to us, less a USD 500 processing fee.” The Center requested the Complainant to contact the Center if the Complainant still wished a request to suspend the proceedings. Receiving no response or request, the Center on October 1, 2005, informed the parties that it would proceed to appoint the Panel.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on October 5, 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.
4. Factual Background
The Complainant is a maker of women’s lingerie. It began using the SASSYBAX mark in 2003, selling its products in “high-end” retail stores and on the Internet. The Complainant received registration of the SASSYBAX mark from the U.S. Patent and Trademark Office on October 12, 2004. It had previously registered its domain name <sassybax.com> on August 21, 2003.
According to publicly available records, the Respondent registered the disputed domain name <sassybac.com> on December 31, 2005, with an expiration date of December 31, 2007.
5. Parties’ Contentions
The Complainant contends that (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (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.
The Respondent does not directly refute or challenge the Complainant’s contentions as set forth above. Instead, its Response states that it agrees with the Complainant’s request for relief. Therefore, the “Respondent requests that the Panel order the immediate transfer of the disputed domain name.” Resp. at 3, ¶ 7. The Respondent specifies, however, “This is not an admission to the three elements of 4(a) of the [P]olicy but rather an offer of ‘unilateral consent to transfer’ as prior Panels have deemed it.” Resp. at 2, ¶ 5.
6. Discussion and Findings
Initially, the Panel must address two matters not commonly seen in proceedings administered by the Center, namely: (i) the registrar’s less than complete verification of the domain name’s registration; and (ii) the Respondent’s request for, and consent to, a transfer of the domain name, to which the Complainant apparently did not respond. The Panel addresses these items in turn.
The Panel is informed that the Center in every case undertakes thorough efforts to obtain the registered verification information from the registrar so that a complainant is able to proceed on the basis of the most up to date registrant and domain name information. Timely and accurate verification is necessary to ensure that a respondent receives fair notice of the proceedings; it can also be practically important, if, for example, a panel orders a transfer or cancellation of the domain name, so that the order can be carried out with minimum difficulty. Where the registrar’s confirmation of the information is lacking or incomplete, the Center and deciding panels have little choice but to resort to publicly available information, so as not to delay the proceeding or a timely decision that the Policy and the Rules direct. Here, the Center made multiple requests from the registrar for complete verification. Although the registrar’s response was neither timely nor complete, it did confirm that the Respondent is the registrant of the domain name; the address of the registrant provided by the registrar is identical to that of the Respondent in its Response. In addition, publicly available information from Internet sources indicates that the domain name is currently active. Moreover, the Respondent’s Response, which explicitly requests a transfer of the domain name to the Complainant, does not indicate any irregularity in the registration or the status of the domain name. The Panel determines that the registrar’s partial verification of the domain name registration should not require a delay in the proceeding, or bar the Panel from issuing a decision.
The Panel must also address the Respondent’s “offer of ‘unilateral consent to transfer’.” Resp. at 2, ¶ 5. The Respondent relies and quotes from the panel’s decision in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132. There, Panelist David J.A. Cairns observed, “A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed:
(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 France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).”
The Panel notes that there may well be circumstances in which the first option noted in The Cartoon Network, of ordering a transfer of the domain name to the complainant based on the respondent’s consent without reviewing the facts supporting the claim, could be appropriate. For example, where the complainant agrees to the respondent’s consent and order of transfer, or where a decision on a case of substantial complexity or size might entail delay, the panel in its discretion may decide to order a transfer without consideration of the applicable requirements and the facts. It is this Panel’s view that circumstances warranting a mere order of transfer without more are not present in the present case. The second option, of declaring that the requisite elements are deemed to have been met due to the Respondent’s consent to transfer, is inappropriate here, where the Respondent explicitly denies admission of the elements. Considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and consideration of the three requisite elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The disputed domain name <sassybac.com> is confusingly similar with the SASSYMAX mark in which the Complainant has rights. Phonetically, the Complainant’s mark sounds of the plural form of a fictional word that combines two words (“sassy backs” (SASSYBAX)), while the disputed domain name sounds of the singular form (“sassy back” (sassybac.com)). Moreover, as the Complainant points out, the letter “c” appears immediately to the right of the letter “x” on the conventional keyboard used by Internet users. Thus, a mistyping of one letter of the domain name for the Complainant’s website would take Internet users to the website of the Respondent. The Complainant has established the first element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways in which the Respondent may demonstrate rights or legitimate interests in the domain name, namely, by providing evidence of: (i) the Respondent’s use of the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent being commonly known by the domain name; or (iii) the Respondent making a legitimate noncommercial or fair use of the domain name. The Respondent has chosen not to demonstrate any such evidence. The Panel is unable to find any suggestion whatsoever that would demonstrate the Respondent’s rights or legitimate interests in <sassybac.com>. The Panel determines that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that bad faith in the registration and use of a domain name is shown when the Respondent, by using the domain name, has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website or of products on the website.
In the present case, the Respondent has used a domain name nearly identical to the Complainant’s mark. The website that appears for the domain name includes a prominent display of a photograph of an attractive young woman and her escort seated at a table, with the two raising their glasses in a toast. The site appears otherwise to be a searchable portal website, with links to “Sassy,” “My sassy girl,” “Sassy Scrubs,” “Sassy baby,” among others. The Panel has serious doubts as to whether the Respondent’s selection and use of the domain name was coincidental, or without knowledge of the Complainant’s mark. In all events, the Panel determines that the use of the <sassybac.com> domain name creates a likelihood of confusion with the Complainant’s SASSYBAX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of products and services on the website.
The Panel finds that the Complainant has established bad faith in registration and use of the domain name.
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 <sassybac.com> be transferred to the Complainant.
Dated: October 19, 2007