“Squeaky-Free” Domain Name Transfer

The Complainant, WD-40 Company, owns valid US trademarks in WD-40 and seeks immediate transfer from the Respondent, Texas International Property Associates, of the disputed domain name www.wd-40company.com.  The Complainant contends that its mark is famous and internationally recognized and that consumers are likely to be confused in assuming that there is a relationship between Complainant and Respondent’s website.  Complainant attempted to settle this dispute with Respondent informally, but Respondent failed to respond to numerous cease and desist letters.  In turn, the Complainant seeks the Panel’s intervention in effectuating a transfer of the disputed domain name.  Interestingly, in response to the Complaint, the Respondent requested an immediate transfer of rights in the disputed domain name, without admitting the three element required under the Policy for transfer (i.e., identical or confusing similarity of the domain name with a trademark in which Complainant has rights; a lack of rights or legitimate interest in the domain; and registration and use in bad faith).

The Panel therefore determined that Respondent had consented to transfer in the disputed domain name to the Complainant and found no evidence to suggest that the consent was not genuine.  Consequently, the Panel directed an immediate transfer of the disputed domain name to the Complainant, following past UDRP precedent that "… under such circumstances, where Respondent has agreed to comply with the 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."    As the saying goes, looks like this squeaky wheel got the grease.... WD-40 Company v. Texas International Property Associates, Case No. D2008-0876