In the recent case of Alliance Bernstein LP v. Texas International Property Associates (WIPO D2008-1230, October 12, 2008), another Panel found that Texas International Property Associates (TIPA) had violated the UDRP. The Complainant, Alliance Bernstein, “is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars.” The Complainant maintains its web site at www.alliancebernstein.com. The disputed domain was slightly changed as www.allaincebernstein.com. The Complainant owns approximately eight (8) trademark registrations incorporating the ALLIANCE BERNSTEIN mark. The Complainant’s trademark rights dated back to as early as August 1, 2002. The disputed domain was registered after the Complainant’s rights had been established.
The Panel noted that TIPA, like it had attempted in many previous disputes, responded to the Complaint by stating that it agrees to the requested relief requested by the Complainant and consented to the entry of an order transferring the domain name. TIPA further requested, based on judicial economy, that the domain should be transferred immediately without entry of findings.
The Panel did not grant all of TIPA’s wishes, and instead completed the UDRP analysis. The Panel explained that the disputed domain was identical or confusingly similar to the Complaint’s mark since it merely transposed two letters, and was a classic case of typosquatting. The Panel also found that TIPA lacked any rights or legitimate interests in the disputed domain since it was using the domain for links to thrid party vendors, some of which were in competition with the Complainant, for commercial gain from click-through revenues.
The Panel also explored the last portion of the UDRP test, whether TIPA acted in bad faith. The Panel noted that Complainant has shown that TIPA is a serial cybersquatter. The Panel explained that other previous Panels had rejected TIPA’s request to forgo the analysis and discussion of the merits of the case and instead made findings relative to the three prongs of the UDRP. The Panel quoted the ealrier decision of Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, which stated “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated.”
The Panel also quoted the decision of Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which stated “Respondent appears to be engaged 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. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels….If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”
Ultimately, the Panel GRANTED the request for Transfer and ended the decision with some commentary of its own: “The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys’ fees in such cases.”
