WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WD-40 Company v. Texas International Property Associates
Case No. D2008-0876
1. The Parties
The Complainant is WD-40 Company, of San Diego, California, United States of America, represented by Procopio Cory Hargreaves & Savitch, LLP, United States of America.
The Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wd-40company.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2008. On June 9, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On June 11, 2008, Compana LLC 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 June 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2008. The Response was filed with the Center on July 12, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 23, 2008. 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 owns valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the mark WD-40 (Registration No. 670,503; and Registration No. 1,007,258, ).
The Respondent registered the disputed domain name, <wd-40company.com>, on December 27, 2005. The Respondent agrees to transfer the disputed domain name to the Complainant.
5. Parties’ Contentions
- The Complainant owns USPTO trademark registrations for its mark WD-40. The Complainant also owns the domain names <wd40.com> and <wd40company.com> on which it operates web sites displaying its goods and services.
- The Complainant’s mark is famous and has become internationally recognized.
- Consumers are likely to be confused by the similarity between the disputed domain name and the Complainant’s trademark, causing them to assume a relationship between the Respondent’s web site and the Complainant that does not exist.
- The Respondent possesses no rights or legitimate interests in respect of the domain name at issue. The Respondent is neither an assignee nor authorized licensee of the Complainant. The Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services, does not appear to be commonly known by the name, and is not making a noncommercial or fair use of the name.
- Respondent has agreed that the Complainant is the rightful owner of the disputed domain name, but has not completed the assignment necessary for the proper transfer of rights.
- The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is intentionally attempting to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark.
- The Complainant attempted to settle this dispute informally, but the Respondent failed to respond to cease and desist letters sent on September 6, 2007 and October 2, 2007.
- Without admitting the three elements outlined in Policy paragraph 4(a), the Respondent agrees to the transfer of the disputed domain name to the Complainant.
- The Respondent requests that the Panel order an immediate transfer of rights in the disputed domain name.
6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i), (ii) and (iii), the Complainant may succeed in these administrative proceedings and obtain a transfer of the disputed domain name <wd-40company.com> if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel determines that the Respondent has consented to transfer in the disputed domain name to the Complainant. Furthermore, the Panel finds no evidence to suggest that this consent is not genuine. As a result, the Panel finds no dispute to be resolved in this case. Thus, without consideration of the parties’ contentions pursuant to paragraph 4(a) of the Policy, the Panel directs an immediate transfer of the disputed domain name to the Complainant. For supporting UDRP cases, see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; and Disney Enterprises, Inc. v. Elmer Morales, NAF Case No. FA475191 (“…under 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.”).
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 <wd-40company.com> be transferred to the Complainant.
Dennis A. Foster
Date: August 6, 2008