National Arbitration Forum

DECISION

Texas Medical Center v. Joseph Spindler

Claim Number: FA0701000886496

PARTIES

Complainant is Texas Medical Center (“Complainant”), represented by Paul C. Van Slyke, of Locke Liddell & Sapp, LLP, 600 Travis, Suite 3400, Houston, TX 77002. Respondent is Joseph Spindler (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <texasmedicalcenter.com>, <texasmedicalcenter.net>, and <texasmedicalcenter.org>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Flip Petillion as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2007.

On January 11, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <texasmedicalcenter.com>, <texasmedicalcenter.net>, and <texasmedicalcenter.org> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 5, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@texasmedicalcenter.com, postmaster@texasmedicalcenter.net and postmaster@texasmedicalcenter.org by e-mail.

A timely Response was received and determined to be complete on February 5, 2007.

On February 12, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Formed in 1945, Texas Medical Center, is a non-profit corporation dedicated to promoting the highest standards in health care and medical treatment, education and research through the establishment and support of the nationally and internationally renowned institutions that reside within its boundaries.

Since 1945, Texas Medical Center has obtained seven separate federal registrations for the mark TEXAS MEDICAL CENTER, which has been used continuously by Texas Medical Center in association with these various support services and to collectively represent its constituent institutions.

Complainant argues that Respondent is a physician in the Houston area and maintains rheumatology practice just outside the boundaries of the Texas Medical Center campus. In mid-December of 1997, over 50 years after Texas Medical Center’s founding and more than five years after the date of first registration of its mark TEXAS MEDICAL CENTER, Respondent registered the domain names at issue, <texasmedicalcenter.com>, <texasmedicalcenter.net>, and <texasmedicalcenter.org>. To date, Respondent has made no legitimate use of these domain names. Respondent has not developed websites in connection with these domain names, and has passively held these domain names since registration, presumably to prevent Texas Medical Center’s registration and use of them.

Complainant contends that Respondent's domain names are confusingly similar to Complainant’s registered mark and operating name. Complainant further contends that Respondent has no rights or legitimate interests in the domain names. Complainant contends that Respondent registered and is using the domain names in bad faith.

B. Respondent

Respondent denies that he registered the disputed domain names in bad faith. He believed that he had a right to register the disputed domain names and he states that he had no knowledge of Complainant's registered trademarks when he registered the disputed domain names.

In the interest of saving the cost involved in defending his rights to the disputed domain names, Respondent stipulates for the Panel to transfer the disputed domain names to Complainant.

FINDINGS

Respondent has submitted a Response in which he consents to the transfer of the disputed domain names to Complainant. Respondent contests Complainant’s allegation regarding the registration in bad faith. Respondent has implicitly recognized that the disputed domain names are confusingly similar to Complainant's trademarks and that he has no rights or legitimate interests in the disputed domain names.

The Panel finds that Complainant has met its burden under the UDRP analysis and orders the immediate transfer of the domain names.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Preliminary Procedural Issue: Respondent Agrees to Transfer

In its Response, Respondent has agreed to a unilateral transfer of the <texasmedicalcenter.com>, <texasmedicalcenter.net> and <texasmedicalcenter.org> domain name registrations to Complainant and is willing to forego further action.

Respondent does not contest any of Complainant’s allegations regarding the disputed domain names, except the allegation that the disputed domain names were registered in bad faith.

The Panel finds that in a circumstance such as this, where Respondent has agreed to transfer, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <texasmedicalcenter.com>, <texasmedicalcenter.net>, and <texasmedicalcenter.org> domain names be TRANSFERRED from Respondent to Complainant.

Flip Petillion, Panelist
Dated: February 19, 2007

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