Complainant is Matthias Vriens of California, United States of America, represented by McCormick, Paulding & Huber LLP, United States of America.
Respondent is Texas International Property Associates - NA NA of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.
The disputed domain name <matthiasvriens.com> is registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2009. On March 11, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On March 12, 2009, Compana LLC transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2009. The Response was filed with the Center on April 12, 2009.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on April 23, 2009. 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 Matthias Vriens is an internationally renowned photographer whose work has appeared in numerous magazines, other communications and fashion displays, as well as in exhibitions. Mr. Vriens' name is not subject to a registered trademark, but there is abundant uncontested evidence that it is distinctive and associated with his large body of famous photographic work.
Complainant maintains that the name Matthias Vriens “is a distinctive source identifier of his photographic services which has acquired a secondary meaning” through a variety of means which are detailed in the Complaint, including extensive identifiable photos of very well known personalities, cover photos of magazines and major exhibitions.
Complainant maintains that the three elements of paragraph 4(a)(i)of the Policy are readily met. In addition, Complainant submits evidence and arguments to the effect that not only is Respondent acting in bad faith in appropriating Complainant's name here, but that this is part of a long-standing and deliberate pattern of bad faith registration of domain names by Respondent. In particular, Complainant points out that Respondent has already been a Respondent in more than 90 WIPO domain name disputes and 130 National Arbitration Forum domain name disputes to date and submits a detailed annex listing these cases. In effect, Complainant maintains, as have numerous complainants before, that “Respondent is a know[n] cybersquatter which engages in a pattern of registering domain names incorporating the registered and common law trademarks of others, parking them on click-through sites for commercial gain, and refusing to and resisting transfer of the domain names for as long as possible, in order to maximize its illegitimate revenues.”
Respondent's Response agrees “to the relief request to the Complainant and will, upon order of the Panel, do so.” Respondent asserts that this is not an admission of the three elements of 4(a) of the Policy but rather a “unilateral consent to transfer.” Respondent essentially maintains that the best and most expeditious way to proceed is not to make specific substantive findings under the Policy, and that “judicial economy” commands a mere order of transfer of the disputed domain name without more. Respondent does not deny, nor comment on, Complainant's substantiated allegation that Respondent is a well known cyber squatter engaging in a pattern of bad faith registration and profit-motivated delay in transferring improperly registered domain names. Finally, the Response makes a request that should the Panel disagree with Respondent's suggested approach and decide that “analysis [i.e. of Respondent's conduct under 4(a) of the Policy] is required”, Respondent be given an opportunity to prepare a more formal response.
The threshold question here is whether the Panel should make substantive findings under 4(a) of the Policy, as requested by Complainant or, merely memorialize Respondent's “unilateral consent to transfer” as argued by Respondent. In the past, a number of cases, both concerning Respondent and concerning other parties, have adopted Respondent's approach, principally for reasons of expedition and “judicial economy.” See e.g., Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Nutri/System, IPHC, Inc. v. Texas International Property Associates WIPO Case No. D2007-0864.
The circumstances of this case, the now overwhelming and un-refuted evidence of Respondent's tactical activities as a “serial cyber squatter,” and certain recent cases now command a different result.
In particular, the Panel finds the following portions of a recent case involving this same Respondent to be germane and compelling here, and so quotes them at some length:
Respondent asserts that where a complainant has sought transfer of a disputed domain name, and Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer “without consideration of the paragraph 4(a) elements.” Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; and Citigroup Inc. v. Texas International Property Associates- NA NA, NAF Claim No. FA1210904.
Respondent's strongest support appears in the Citigroup case, which also involved this same Respondent. There the Panel proceeded to order a transfer without consideration of the merits of the complaint. However, Citigroup itself states that a panel should proceed to consider the merits of a complaint, despite the respondent's consent to a transfer, “under particular circumstances that call into question the validity of the respondent's consent, or for similar other good cause”.
Rule 15(a) provides: “A 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 it deems applicable.” Rule 15(a) could be read to make it mandatory that the merits of every dispute be considered by the Panel.
Respondent's tactics in its Response are a rather transparent attempt to avoid yet another determination of its bad faith. This Panel cannot find any legitimate reason to assist Respondent in this regard. If Respondent had wanted to avoid a finding of bad faith in this proceeding, it could have made arrangements to transfer the disputed domain name to Complainant without putting Complainant to the effort and expense of this proceeding. Complainant, on the other hand, having submitted its Complaint and paid the requisite fees is entitled to the benefit of the Panel's decision on the merits.
The Panel finds support for this conclusion in two recent UDRP decisions involving this same Respondent: President and Fellows of Harvard College v. Texas International Property Associates-NANA, WIPO Case No. D2008-0597; and Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375. In both cases, the Panel reached a decision on the merits, and made a finding of bad faith, despite Respondent's “consent to transfer” during the course of the administrative proceeding. See also, United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (listing a large number of cases in which Respondent has been ordered to transfer its domain name registrations).
Finally, Respondent's request to “prepare a more formal response” is an attempted reservation of rights that is not contemplated under the Policy. UDRP Rules 5 and 12 provide for the filing of any Response within the stated deadline without the provision for a reservation of rights to file a “more formal response”, and any further statements “in addition to the complaint and response” shall be at the discretion of the Panel (not the parties).
If the Respondent wished to make a substantive case (whether in the alternative to the consent to transfer or otherwise) it should have done so in the submitted Response. See Malley's Candies, Inc. v. Texas International Property Associates NA NA, WIPO Case No. D2008-1803.
-Starline Publications, Inc. v. Texas International Property Associates, WIPO Case No. D2008-1824.
The above reasoning is equally applicable here, and is adopted mutatis mutandis.
Accordingly the Panel in this case proceeds to make findings on the merits of the three elements of 4(a) of the Policy.
The domain name is Complainant's complete name, with the addition of the gTLD “.com” at the end. It is obvious that the disputed domain name is essentially identical to Complainant's name, as it has no distinctive sign in it.
Complainant has made a substantial showing of its interest and rights in the disputed domain name, and that the name “Matthias Vriens” has acquired considerable fame and notoriety sufficient for it to have a secondary meaning. Thus Complainant clearly has rights in the disputed domain name. On the other hand, there is no basis, evidence or supposition on which to believe that Respondent has any legitimate interest in the disputed domain name, and Complainant provides convincing evidence and arguments on this point.
Respondent registered the disputed domain name on or about June 3, 2005. The fame of Complainant, his photographic work and his interest in the disputed domain name were or readily could have been known by Respondent at that time. Moreover, Respondent is a known “serial cyber squatter” and has a well-documented history of registering and using large numbers of domain names in which it has no legitimate interest as a platform for “click-through” sights established for commercial gain (Complaint p. 10). This well-documented pattern of Respondent is fully reflected in UDRP case precedent and in the instant case. Accordingly, it is also established that Respondent has registered and used the disputed domain name in bad faith.
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, <matthiasvriens.com>, be transferred to the Complainant.
Dated: May 15, 2009