WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Medallion Cabinetry Inc. v. Texas International Property Associates

Case No. D2007-1015

1. The Parties

The Complainant is Medallion Cabinetry Inc., of Oak Brook, Illinois,

United States of America, represented internally by Kathleen Deighan.

The Respondent is Texas International Property Associates, of Dallas, Texas,

United States of America, represented by Gary Wayne Tucker,
United States of America.

2. The Domain Names and Registrar

The disputed domain names <medalioncabinetry.com>, <medalioncabinets.com> and

<schulercabinets.com> are registered with Compana, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on July 11, 2007. On July 16, 2007, the Center transmitted by email to
Compana, LLC a request for registrar verification in connection with the domain names
at issue. On July 25, 2007, 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”), 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 26, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was
October 11, 2007. The Response was filed with the Center on August 15, 2007.

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 The Center appointed Angela Fox as the sole panelist in this matter on
October 17, 2007. 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.

By request of the Complainant dated August 16, 2007, the proceedings were suspended
until September 16, 2007 to allow time for settlement negotiations with the
Respondent. On October 1, 2007, the Complainant requested the suspension to be
extended until October 8, 2007 to allow the disputed domain names to be transferred
under the terms of a settlement agreement with the Respondent. On October 10, 2007,
the Complainant asked that the proceedings be reinstated as it had received no response
from the Respondent concerning the transfers. On October 11, 2007, the Center
notified the parties that it had reinstated the proceedings. On October 16, 2007, the
Complainant filed a copy of the settlement agreement between the parties as a
Supplemental Filing, which the Center acknowledged on the same date.

4. Factual Background

The Complainant is a maker of kitchen, bath and vanity cabinets and related
accessories. It is the registered proprietor of United States federal Trademark
Registration Nos. 1,964,983 for the mark MEDALLION, registered April 2, 1996 and
claiming a date of first use in commerce of 1984, and 2,337,353 for the mark
SCHULER, registered April 4, 2000 and claiming a date of first use in commerce of
December 31, 1987.

The disputed domain name <medalioncabinetry.com> was registered on June 3, 2005;

<medalioncabinets.com> was registered on March 19, 2005; and
<schulercabinets.com> was registered on February 4, 2005. The Complaint annexed
print-outs from websites at the disputed domain names, showing their use in respect of
generic search portal sites offering “resources and information on Cabinetry and
Medallion cabinetry”, on “kitchen Cabinets and Schuler cabinets”, and on “Medallion
Cabinet and Storage cabinets”. The sites contained links to related search results for
“Kitchen Cabinets”, “Schuler Cabinets”, “Bathroom Cabinets”, “Glass Cabinets”,
“Medallion Cabinet” [sic] and the like.

Annexed to the Complaint is a copy of a letter dated April 13, 2007 from the
Complainant to the Respondent requesting the transfer of <medalioncabinetry.com>. In
a response dated June 11, 2007 from the Respondent’s attorney, the Respondent stated
that it did not regard the disputed domain name as infringing and that it did not intend
to transfer it. The Complaint was filed on July 11, 2007.

In its Response, the Respondent agreed unconditionally to the transfer of the disputed
domain names and requested the Panel to order their immediate transfer.

In the Complainant’s Supplemental Filing dated October 16, 2007, the Complainant
annexed a copy of a signed settlement agreement dated September 14, 2007, under
which the Respondent assigned the disputed domain names to the Complainant and
agreed to take all reasonable action to immediately transfer them. The Complainant
stated, however, that the Respondent had failed to take the required action to implement
the transfers, and requested that the Panel render a decision.

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5. Supplemental Filing

The Rules make no express provision for supplemental filings. Such filings are
admissible in the Panel’s discretion, but in considering their admissibility, the Panel
must have regard to Paragraph 10 (c) of the Rules, which requires the Panel to conduct
the proceedings “with due expedition”. Supplemental filings can delay and extend the
proceedings, and as noted in Metropolitan Life Insurance Company v. HLP General
Partners Inc., WIPO Case No. D2005-1323, panels are typically reluctant to accept
them except where they are necessary to enable the panel to consider relevant new
evidence or to enable a party to respond to new arguments.

In this case, the Supplemental Filing affirms the Response abandoning the
Respondent’s claims to the disputed domain names in favour of the Complainant. It is
therefore relevant to the disposition of the proceedings. The Supplemental Filing
supports the grant of the relief sought by the Complainant and accepted by the
Respondent. The Panel will take them into account to that extent.

6. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are identical or confusingly
similar to its registered MEDALLION and SCHULER trademarks, from which they
differ by only a single letter or word.

The Complainant further asserts that the Respondent has no rights or legitimate
interests in respect of the disputed domain names. The Respondent has not been
commonly known by the domain names, and there is no evidence that, before any
notice of the dispute, the Respondent was making use of, or demonstrable preparations
to use, the disputed domain names or names corresponding to them in connection with
a bona fide offering of goods or services.

Finally, the Complainant alleges that by using the disputed domain names, the
Respondent has intentionally attempted to attract, for commercial gain, Internet users to
the Respondent’s website or other on-line location, by creating a likelihood of
confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation
or endorsement of the Respondent’s website or location or of a product or service on it.

B. Respondent

The Respondent agrees to the relief requested by the Complainant and states that it will,
upon order of the Panel, transfer the disputed domain names.

7. Discussion and Findings

It is not necessary for the Panel to review whether the three elements of the Policy are
met in a case where, as in this one, the Respondent has consented fully and
unequivocally to the relief being sought. Although the Rules do not clearly provide for
such cases, nonetheless Rule 10(a) empowers the Panel to conduct the proceedings in
the manner that it deems appropriate under the Policy and Rules. Moreover, Rule 10(c)
requires the Panel to ensure that the proceedings are conducted with due expedition,
and Rule 17 requires the Panel to terminate the proceedings when the parties have

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 agreed a settlement.

There is an established line of decisions confirming that in cases where a respondent

consents to the relief requested, that relief may be granted without the need to analyse
whether the requirements of paragraph 4(a) of the Policy have been met
(Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207). Indeed, numerous
panels have regarded the Respondent’s agreement to the relief sought as enabling the
panel to deem that the paragraph 4(a) tests have been met (Desotec N.V. v. Jacobi
Carbons AB, WIPO Case No. D2000-1398; Deutsche Bank v. Carl Siegler, WIPO Case
No. D2000-0984; Juventus F.C. S.p.a. v. Sergio Brangança, WIPO Case
No. D2000-1466; and Qosina Corporation v. Qosmedix Group, WIPO Case
No. D2003-0620).

The Panel agrees that the proper approach where a respondent consents fully and
unequivocally to the relief requested is for that relief to be granted expeditiously. In
this case, despite its assertion in its June 11, 2007 letter that the
<medalioncabinetry.com> domain name did not infringe the Complainant’s rights, the
Respondent (who is represented by counsel) has filed a Response clearly and
unambiguously accepting the relief sought against it. Moreover, the Respondent
subsequently affirmed this intent by executing a settlement agreement under which it
assigned the disputed domain names to the Complainant. Nevertheless, despite
multiple suspensions and extensions sought by the Complainant to allow time for the
Respondent to transfer the domain names, the actual technical transfer has not yet taken
place.

The Panel considers that the proper course is to order the immediate transfer of the
domain names, in line with the approach adopted by the panelists in the preceding cases
cited above.

8. 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 <medalioncabinetry.com>,
<medalioncabinets.com> and <schulercabinets.com> be transferred to the
Complainant.

Angela Fox
Sole Panelist

Dated: October 30, 2007

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