The Complainant is Wilmer Cutler Pickering Hale and Dorr LLP, Boston, United States of America, internally represented.
The Respondent is Texas International Property Associates - NA NA, Dallas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
The disputed domain name <wimerhale.com> is registered with Company LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2008. On September 24, 2008, the Center transmitted by email to Company LLC a request for registrar verification in connection with the domain name at issue. On September 25, 2008, Company 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 October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. The Response was filed with the Center on October 30, 2008.
The Center appointed Kevin C. Trock as the sole panelist in this matter on November 4, 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.
The Complainant registered the domain name <wilmerhale.com> on February 18, 2004, and filed an application in the United States Patent and Trademark Office (“USPTO”) for the WILMERHALE mark on October 15, 2004. The mark was registered with the USPTO on July 18, 2006, under registration number 3118230.
The disputed domain name was registered by the Respondent on November 29, 2005.
The Complainant is an international law firm with offices in Beijing, Berlin, Boston, Brussels, London, Los Angeles, New York, Oxford, Palo Alto, Waltham and Washington, DC.
The disputed domain name (i) is the same as the Complainant's WILMERHALE mark, except for omission of the first letter “L”; and (ii) is so clearly similar to the Complainant's WILMERHALE mark that it is likely to cause confusion among the Complainant's clients and potential clients.
The Complainant's adoption and use of the WILMERHALE mark precedes the Respondent's registration of the disputed domain name on or about November 29, 2005. The Respondent is not and never has been a representative of the Complainant nor licensed to use the WILMERHALE mark. Upon information and belief, the Respondent is not commonly known by the name “wimerhale”.
Pursuant to Paragraph 4(b)(iv) of the Policy, it is evidenced that the Respondent registered and is using the disputed domain name in bad faith. The Respondent is using the domain name for commercial gain, as a “pay-per click” landing page, and the Respondent receives revenue when Internet users click on the links provided.
The Complainant never contacted the Respondent prior to instituting this action. Nevertheless, the Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. 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.
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 therefore 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).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not deem proven the three elements of paragraph 4(a) of the Policy based on a consent to transfer.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. 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. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).
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 <wimerhale.com> be transferred to the Complainant.
Kevin C. Trock
Date: November 13, 2008