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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ChoicePoint Asset Company LLC v. Texas International Property Associates - NA NA

Case No. D2008-0395

1. The Parties

Complainant is ChoicePoint Asset Company LLC, of Georgia, United States of America, represented by Troutman Sanders, LLP, United States of America.

Respondent is Texas International Property Associates - NA NA, of Texas, United States of America, represented by The Law Offices of Gary Wayne Tucker, United States of America.

2. The Domain Names and Registrar

The disputed domain names <vitalcek.com> and <vitelchek.com> are registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2008. On March 13, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On March 14, 2008, Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 19, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2008. The Response was filed with the Center on April 15, 2008.

The Center appointed William L. LaFuze as the sole panelist in this matter on April 25, 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

ChoicePoint is a Delaware limited liability company, specializing in the identification, retrieval, storage, analysis, and delivery of data. ChoicePoint’s operations in the United States of America are headquartered in Alpharetta, Georgia. With offices on two continents, ChoicePoint employs more than 5,000 people working in five different business segments: insurance services, screening and authentication services, financial and professional services, government services, and marketing services.

ChoicePoint serves its customers, both in the United States of America and internationally, under the VITALCHEK Mark, and it owns the rights to Registration Nos. 1760462 and 1763486 in the United States of America Patent and Trademark Office (“USPTO”) for the Mark VITALCHEK in connection with its public document research services, which includes services for birth certificates, marriage records, divorce records, and death records. The VITALCHEK Mark has appeared on the Principal Register of USPTO for more than five years, and became incontestable upon Checkpoint’s filing of a Section 15 Affidavit and subsequent acceptance by the USPTO.

ChoicePoint owns and maintains an Internet website located at “www.vitalchek.com”, which it uses to provide information about itself and the services it provides. As an official government-licensed service provider, VitalChek offers government-issued vital records, such as birth certificates, marriage records, divorce records, and death records.

Respondent has registered and is using the domain names <vitalcek.com> and <vitelchek.com> (the “Domain Names”) to provide links to services similar to those provided by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends:

1. The Domain Names are confusingly similar to Complainant’s VITALCHEK trade mark, for the following reasons:

(a) The Domain Names <vitalcek.com> and <vitelchek.com> are nearly identical to Complainant’s trademark, but for a close different spelling.

2. Respondent has no rights or legitimate interests in respect of the Domain Names, for the following reasons:

(a) Respondent has not acquired trademark or service mark rights for the VITALCHEK Mark or any mark, including the term “VitalChek;”

(b) Respondent is not making a legitimate non-commercial or fair use of the Domain Names. Instead, Respondent has been using the <vitalcek.com> and <vitelchek.com> Domain Names to misleadingly divert Internet users searching for ChoicePoint’s website to Respondent’s website for commercial gain; and

(c) Respondent is not a licensee of ChoicePoint, nor is Respondent otherwise authorized by ChoicePoint to use the VITALCHEK Mark or to apply for or use any domain name incorporating the VITALCHEK Mark.

3. The Domain Names were registered and are being used in bad faith, for the following reasons:

(a) Respondent does not conduct any legitimate commercial or non-commercial business under the VITALCHEK Mark or any similar mark, including the terms “VitalCek” or “VitelChek”.

(b) By using the <vitalcek.com> and <vitelchek.com> Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with ChoicePoint’s VITALCHEK Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites appearing at “www.vitalcek.com” and “www.vitelchek.com”. Respondent intends to profit from ChoicePoint’s Mark by diverting Internet users looking for ChoicePoint’s website to Respondent’s rogue website, which is designed to look like it might be affiliated with ChoicePoint. Upon reaching Respondent’s website, Internet users are presented with advertisements, information about, and hyperlinks to other websites, including websites for other vital record service providers, so as to persuade them to click on the website advertising links for which Respondent will receive payment. In short, Respondent has sought to unjustly enrich itself by misappropriating ChoicePoint’s goodwill and creating a likelihood of confusion with ChoicePoint’s VITALCHEK Mark.

(c) Respondent has registered and used the <vitalcek.com> and <vitelchek.com> Domain Names with full knowledge of the rights of ChoicePoint in and to the VITALCHEK Mark, as Respondent registered domain names that are virtually identical to ChoicePoint’s Mark and Domain Name, with the minor difference of misspelling “VitalChek”. Internet users attempting to reach ChoicePoint’s “www.vitalchek.com” website will instead find Respondent’s “www.vitalcek.com” or “www.vitelchek.com” websites if they inadvertently misspell “VitalChek”.

(d) By registering the <vitalcek.com> and <vitelchek.com> Domain Names, Respondent has been diverting consumers away from ChoicePoint’s website, making it more difficult for ChoicePoint’s customers and the general public to locate ChoicePoint’s website, thereby disrupting ChoicePoint’s business.

(e) Respondent’s bad faith is further shown by the fact that it has engaged in a pattern of typosquatting on well-known trademarks. Those domain names are identical or confusingly similar to the marks of others, or dilutive of famous marks of others. Respondent knows its domain names are identical or confusingly similar to the marks of legitimate holders because Respondent has either misappropriated or “typosquatted” those marks.

B. Respondent

Respondent failed to substantively respond to the allegations set forth in the Complaint. Rather, Respondent, merely offers a “unilateral consent to transfer” while expressly noting that such offer “is not an admission to the three elements of 4(a) of the [UDRP] policy”. Respondent cites WIPO decision The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (WIPO January 5, 2006) in support of its position that the Domain Names should be immediately transferred without a consideration of the Paragraph 4(a) elements, of the Policy

6. Discussion and Findings

Numerous panel decisions under the Policy have considered the position where a respondent files a short response, offering to transfer the disputed domain name to the complainant. There appears to be a divergence among WIPO UDRP panels, on how such cases should be resolved.

A very recent example of such a case involves Respondent. In Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144, the Respondent agreed to the relief requested by the Complainant, offering a “unilateral consent to transfer” as was done in this case. The Respondent also denied that such offer was an admission of the three elements of paragraph 4(a) of the Policy as was done in this case. The Respondent noted that some panels have granted the relief requested by a complainant in such cases, without reviewing the merits of the Complainant’s claim. Other panels have taken such an offer as an admission that the three elements of paragraph 4(a) of the Policy are satisfied. Thirdly, some panels have considered complaints in such cases on the merits, and come to decisions independently of the “unilateral consent to transfer”.

The panel in Chicago Pneumatic Tool Company LLC followed the third of those courses i.e., it elected to examine the case as if the Respondent had defaulted (as the panel put it, “since Respondent generally states that it does not admit to any of Complainant’s allegations nor did it provide a single countervailing item of evidence in its Response”).

The Panel in this case will follow the course adopted by the panel in Chicago Pneumatic Tool Company LLC. The Panel further notes that this also accords with the approach adopted by the Panel in, Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1121, a case in which the Panel noted that this Respondent appears to be engaging in a “pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits”.

For the foregoing reasons, the Panel will address the present Complaint on its merits.

A. Identical or Confusingly Similar

The Panel finds the Domain Names are confusingly similar to Complainant’s VITALCHEK trade mark for the reasons set forth in Complainant’s contentions set forth above.

B. Rights or Legitimate Interests

The Panel finds Respondent has no rights or legitimate interest in respect of the Domain Names for the reasons set forth in Complainant’s contentions set forth above.

C. Registered and Used in Bad Faith

The Panel finds the Domain Names were registered and are being used in bad faith for the reasons set forth in Complainant’s contentions above.

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 names, <vitalcek.com> and <vitelchek.com> be transferred to Complainant.

William L. LaFuze
Sole Panelist

Dated: May 9, 2008