Decisión del Panel Administrativo nº D2019-2051 of Tribunal Arbitral de la OMPI, November 29, 2019 (case TPG Sixth Street Partners, LLC v. David Frieze)
|Resolution Date:||November 29, 2019|
|Issuing Organization:||Tribunal Arbitral de la OMPI|
The Complainant is TPG Sixth Street Partners, LLC, United States of America (“United States” or “U.S.”), represented by Dilworth Paxson LLP, United States.
The Respondent is David Frieze, United States, represented by Melford Law, United States.
The disputed domain name [sixthstreet.com] is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2019.
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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Response was filed with the Center on October 1, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on October 15, 2019. 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.
The Complainant, headquartered in Dallas, Texas, is an International investment and finance company. The Complainant is the holder of trademark registrations issued by the United States Patent and Trademark Office (“USPTO”) as follows:
TPG SIXTH STREET PARTNERS, U.S. Reg. No. 5675929, applied for May 11, 2017, and registered February 12, 2019 (first use September 7, 2018);
TPG SIXTH STREET PARTNERS (design plus words), U.S. Reg. No. 5675974, applied for May 31, 2017, and registered February 12, 2019 (first use September 7, 2018);
TPG SIXTH STREET PARTNERS (design plus words), U.S. Reg No. 5675973, applied for May 31, 2017, and registered February 12, 2019 (first use Sept. 7, 2018).
The Complainant’s TPG SIXTH STREET PARTNERS marks are registered in International Class 35 (“Class 35”) for business development, business risk management, investment, and insurance compliance.
The Complainant also has a pending application to register the mark SIXTH STREET PARTNERS, U.S. Ser. No. 87446879, claiming additional services in Class 35, including tax consultation for risk management, and financial services in Class 36.
The Complainant has disclaimed the right to use “PARTNERS” apart from the mark as a shown in each of the Complainant’s registered marks and pending application.
The Respondent is the current register of the disputed domain name [sixthstreet.com], according to the Registrar GoDaddy’s WhoIs records, which includes a “Creation Date” of August 6, 2001, and an “Update Date” of May 9, 2016. The disputed domain name resolves to a parking page with “related links” provided by GoDaddy. The Respondent has produced an email communication from GoDaddy attesting to his registration of the disputed domain name on or about December 23, 2015. The Respondent also has documented his use the disputed domain name as a business email address dating back to January 7, 2016, coinciding with the date on which the Respondent incorporated Sixth Street Properties LLC in Massachusetts.
The Complainant submits that the disputed domain name [sixthstreet.com] is confusingly similar to the Complainant’s TPG SIXTH STREET PARTNERS marks. The Complainant observes that the disputed domain name incorporates the entirety of the Complainant’s marks and are clearly recognizable in the disputed domain name. The Complainant explains that the addition of a generic Top-Level Domain (“gTLD”) such as “.com” is disregarded for purposes of assessing confusing similarity.
The Complainant asserts that the Respondent has no rights of legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized, licensed or otherwise permitted to us the Complainant’s marks, and that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the disputed domain name incorporates the dominant portion of the Complainant’s marks, suggesting that the Complainant is endorsing the Respondent’s site. The Complainant contends that the disputed domain name does not resolve to and active, relevant website, and operates only as a vehicle to generate pay-per-click revenue. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
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