The Complainant is Shady Grove Reproductive Science Center, P.C. of Rockville, Maryland, United States of America represented by Ober, Kaler, Grimes and Shriver, P.C., United States.
The Respondent is Texas International Property Associates – NA NA, Dallas, Texas, United States, represented by Rothstein Rosenfeldt Adler, Florida, United States.
The disputed domain names <shadygrovefertilitycenter.com> and <shadygrovefertilty.com> are registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 7, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain names. On April 8, 2009, 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” 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 the Respondent of the Complaint, and the proceedings commenced on April 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2009. Respondent did not submit a Response by the deadline of May 6, 2009. Accordingly, the Center notified the Respondent's default on May 7, 2009. The Response and petition to set aside the default were filed with the Center on May 7, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 12, 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 owns and operates 15 fertility clinics in the United States, offering reproductive healthcare services under the name Shady Grove Fertility since at least 1995. The Complainant applied for a United States trademark application for the word mark SHADY GROVE FERTILITY on March 8, 2007, under serial No. 76/680,258, claiming a date of first use of November, 1995. The Complainant has owned a domain name registration for <shadygrovefertility.com> since March 16, 1996.
The Respondent registered the domain name <shadygrovefertilty.com> on February 28, 2005 and the domain name <shadygrovefertilitycenter.com> on January 30, 2005.
The Respondent agrees to transfer the disputed domain names to the Complainant.
The Complainant contends that the domain names <shadygrovefertilitycenter.com> and <shadygrovefertilty.com> are confusingly similar to the Complainant's trademark SHADY GROVE FERTILITY, which is the subject of United States trademark Application No. 76/680,258 (filed March 8, 2007).
The Complainant contends that the domain name <shadygrovefertilitycenter.com> is essentially identical to the trademark SHADY GROVE FERTILITY, except for the addition of the descriptive and generic word “center”. Accordingly, the Complainant contends that the domain name <shadygrovefertilitycenter.com> is confusingly similar to the Complainant's trademark.
The Complainant contends that the domain name <shadygrovefertilty.com> is essentially identical to the trademark SHADY GROVE FERTILITY, except for the misspelling of the word “fertility”. Accordingly, the Complainant contends that the domain name <shadygrovefertilty.com> is confusingly similar to the Complainant's trademark.
The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interest in the disputed domain names. The Complainant submits that the Respondent is not commonly known by the domain names, and that the Respondent has no rights in the trademark SHADY GROVE FERTILITY either at common law or by way of registration anywhere in the world. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register domain names incorporating its trademark. The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the domain names, or making any bona fide offering of goods and/or services.
The Complainant contends that the domain names <shadygrovefertilitycenter.com> and <shadygrovefertilty.com> were registered and are being used in bad faith based on the following factors: (i) Respondent must have been aware of the Complainant's rights in the SHADY GROVE FERTILITY trademark; and (ii) the Respondent is using confusingly similar domain names in connection with click-through sites for the purposes of monetary gain.
The Respondent agrees to the relief requested by the Complainant, and will, upon order of the Panel, take all necessary steps to transfer the two domain names to the Complainant. The Respondent claims that this is not an admission to the three elements of paragraph 4(a) of the Policy, but rather an offer of a unilateral consent to transfer.
The Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 to support the position that a panel may authorize the voluntary transfer of a disputed domain name, without the necessity of reviewing the facts and arguments, or making any finding on the merits of the matter under the Policy.
The Panel in Cartoon Network reasoned as follows:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain 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. Shadia 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 Carons 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 genuiness of the Respondent's consent (Société Francaise 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 accept that a unilateral consent to transfer “deems” proved the three elements of paragraph 4(a) of the Policy.
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).”
The Panel notes that other panels have decided in the same manner when presented with a similar set of circumstances (see Kaehler Travelworks, LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-1326 and Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408).
This Panel agrees with the reasoning set out in Cartoon Network, supra, and accepts the Respondent's unilateral consent to transfer the disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <shadygrovefertilitycenter.com> and <shadygrovefertilty.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: May 26, 2009