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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atlas Copco Aktiebolag v. Texas International Property Associates NA NA

Case No. D2008-0986

1. The Parties

The Complainant is Atlas Copco Aktiebolag, Nacka, Sweden, internally represented.

The Respondent is Texas International Property Associates NA NA, 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 <atlasscopco.com> (the “Domain Name”) is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2008. On July 1, 2008 the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Name. Further requests were made on July 4, 2008 and July 7, 2008. On July 8, 2008 Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center therefore 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 July 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2008. The Response was filed with the Center on August 21, 2008.

The Center appointed David Stone as the sole panelist in this matter on September 1, 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 was incorporated in Sweden in 1873. The Complainant, and its subsidiaries and related entities, are known as Atlas Copco and the Atlas Copco Group and, between them, employ approximately 25,000 people around the world. The Complainant’s business includes the development and manufacture of compressed air equipment, pneumatic tools, construction equipment, mining equipment and assembly systems. The Complainant’s products are sold under various brands, including ATLAS COPCO, through a world-wide sales and service network reaching approximately 150 countries, including the United States of America. Revenues for the Complainant’s group of companies in 2007 were approximately USD 10 billion. The Complainant maintains a website at “www.atlascopco.com”.

In addition, the Complainant is the owner of various registered trade marks, including:

(1) Swedish registered trade mark No. 148653, registered September 13, 1974; and

(2) United States registered trade mark No. 1526505 registered February 28, 1989

Both trade marks are for the words ATLAS COPCO in a stylized format and specify a range of goods and services.

On February 15, 2008, the Complainant sent the Respondent a cease and desist letter, notifying it of the Complainant’s rights and seeking transfer of the Domain Name. The Respondent responded on April 4, 2008 noting “we intend to assign our rights in the reference Domain Name to your client”. The correspondence filed by the Complainant shows that this never happened, despite follow up email correspondence on April 9, 2008, April 23, 2008 and June 24, 2008.

The Respondent has been the owner of the disputed Domain Name at all relevant times. The Respondent is a regular respondent to domain name disputes under the Rules.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in its own name by virtue of its use of ATLAS COPCO as a company name since 1873 and, further, by its trade mark registrations. The Complainant asserts that the Domain Name is identical or confusingly similar to ATLAS COPCO in that the only difference is the misspelling in the Domain Name: the addition of an extra “s”.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant submits that the Respondent is in no way affiliated or associated with the Complainant or licensed or authorized by the Complainant to use its trade mark or to register or use any domain name incorporating the trade mark. The Complainant states that the Respondent’s use of the website and the Domain Name is probably a source of pay-per-click revenues for the Respondent from the hyperlinks to third party websites provided at the website at the Domain Name.

The Complainant also asserts that the Domain Name was registered and is being used in bad faith because the registration prevents the Complainant reflecting the mark in the corresponding Domain Name (paragraph 4(b)(ii) of the Policy); the Complainant has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy) and, further, that the Domain Name is obviously connected with the Complainant such that the use or registration by anyone other than the Complainant suggests opportunistic bad faith.

The Complainant requests transfer of the Domain Name to the Complainant.

B. Respondent

In its Response, the Respondent notes:

“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.”

6. Discussion and Findings

The Response due date was August 20, 2008. The Response filed is dated August 20, 2008 but was received by the Center according to its email records on August 21, 2008.

Due to the time difference in the location of the Respondent and the Center, the Panel finds that the Response was filed on time.

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. In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the panelist noted:

“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 so 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 (Sociйtй Franзaise du Radiotйlйphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).

In this case, the Respondent has expressly noted that it does not admit the three elements of Section 4(a) of the Policy, so course (ii) suggested in The Cartoon Network does not apply here. The Panel also has no reason to doubt the genuineness of the Respondent’s consent as set out in the second part to course (ii) above. In this case, the Respondent was represented by counsel and, in addition, the Respondent has taken the approach of consenting to transfer in previous decisions (see, for example, Sir Terence Conran v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0358 and Citigroup Inc. v. Texas International Property Associates – NA NA, NAF Claim No. FA1210904). As noted above, the Respondent is an experienced respondent to domain name disputes. The Panel therefore finds that the Respondent genuinely consented to the transfer of the Domain Name.

The Panel therefore proposes to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (i).

However, the Panel notes that had it considered the question of whether, on the evidence, the three elements of paragraph 4(a) of the policy are satisfied, it would have found them satisfied and ordered the transfer of the Domain Name.

7. Decision

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 <atlasscopco.com> be transferred to the Complainant.

David Stone
Sole Panelist

Dated: September 8, 2008