WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates
Case No. D2007-1404
1. The Parties
The Complainants are Tom Stoppard and Tom Stoppard Limited, United Kingdom of Great Britain and Northern Ireland, represented by Blake Lapthorn Tarlo Lyons, Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tomstoppard.com> is registered via Budgetnames.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2007. On September 24, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On October 1, 2007, Budgetnames transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Response was filed with the Center on November 7, 2007.
The Center appointed Ross Wilson as the sole panelist in this matter on November 19, 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.
While the Respondent’s submission was filed one day late the Panel has decided to consider the Response.
4. Factual Background
The First Complainant, Sir Tom Stoppard, is a well known playwright and film and television writer. He has been awarded numerous awards including an Academy Award for Best Original Screenplay. He was appointed CBE in 1978 and knighted in 1997.
The First Complainant achieved international recognition and critical acclaim for his plays and adaptions for the stage, plays for television, original radio plays and screenplays.
The Second Complainant filed a European Community trademark application for Tom Stoppard and his signature of Tom Stoppard on February 14, 2007 and March 16, 2007 respectively.
According to Whois.Net the Respondent registered the disputed domain name on January 17, 2005.
5. Parties’ Contentions
The disputed domain name is identical to a trademark in which the Second Complainant has rights. The principal part of the domain name is identical to the Second Complainant’s right in the trademark TOM STOPPARD.
The First Complainant has clearly established common law trademarks rights in his name by virtue of the public recognition of his successful career as a playwright, writing for film and television.
The respondent has no rights or legitimate interests in respect of the domain name because the domain name is not used in connection with a bona fide offering of goods and services, the Respondent cannot show that it has been commonly known by the domain name and the Complainants have not granted permission to register the domain name. The registration of a domain name that incorporates a famous person’s name suggests an intent to divert users seeking information on that celebrity.
The Respondent registered and used the domain name in bad faith by intending to divert the Internet traffic of persons intending to find websites legitimately associated with the Complainants. The Respondent is profiting from the website by using it to trigger various pop-up advertisements for third party website and products.
Finally, many arbitral and judicial decisions have been rendered against the Respondent showing behaviour that is part of a pattern of misuse of famous marks.
The Respondent’s response is to agree “to the relief requested by the Complainant[s] and, upon the order of the Panel, [will] do so.” The Respondent states, “This is not an admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral consent to transfer’ as prior panels have deemed it”.
6. Discussion and Findings
In The Cartoon Network LP, LLP v. Mike Morgan, WIPO Case No. D2005-1132, the Panel considered that a unilateral consent to transfer provided a basis for an immediate order to transfer without consideration of the paragraph 4 (a) elements. The Panel stated that “where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the panel can proceed immediately to make an order for transfer”.
In similar circumstances, in Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343, the Panel noted that the Complainant made a prima facie case for satisfying each of the policy elements based on its registered mark. Also, as the Respondent was represented by legal counsel and unequivocally consents to transfer and there is nothing in the record casting doubt on the genuineness of consent, the Panel found no obstacle to entering an order for transfer based on consent. A similar finding was made in Levantur, S.A. v. Rarenames, WebReg, WIPO Case No. D2007-0857.
The Panel agrees with these previous decisions and finds that the disputed domain name can be transferred to the Second Complainant as requested without determination of the elements of paragraph 4(a) of the Policy.
The Panel notes that the Respondent has been the subject of more than 20 disputes in 2007 and reiterates the advice given in Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343, namely 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 <tomstoppard.com> be transferred to the Second Complainant, Tom Stoppard Limited.
Dated: November 26, 2007