WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jeffrey Gorman (Jeff Gorman) v. Cocktails For a Cause
Case No. D2007 – 1029
1. The Parties
The Complainant is Jeffrey Gorman (Jeff Gorman) d/b/a Epiphany, Los Angeles, California, United States of America (the “Complainant”). The Complainant is represented by Welsh & Katz, Ltd., United States of America.
The Respondent is Cocktails For a Cause, Los Angeles, California, United States of America (the “Respondent”).
2. The Domain Name and Registrar
The domain name in dispute is <vidigreet.mobi>.
The Registrar with which the domain name is registered is Go Daddy Software, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint by email on July 13, 2007. The Center received a hard copy of the Complaint on July 16, 2007, and formally acknowledged receipt thereof on July 21, 2007.
On July 18, 2007, the Center sent a Request for Registrar Verification in connection with this case to Go Daddy Software, Inc. On July 19, 2007, the Registrar confirmed that the Registrant was Cocktails For a Cause (not “Domains by Proxy”, as had been stated in the original Complaint, the latter being simply a privacy domain name registration service) and provided the Registrant’s contact details. On July 26, 2007, the Center notified the Complainant of certain deficiencies in the Complaint and requested the Complainant to file an Amendment to the Complaint. On July 27, 2007, the Complainant submitted an Amended Complaint, which (i) altered the identity and contact details of the Respondent (based on the information the Center had received from the Registrar) and (ii) amended the designation of the Mutual Jurisdiction to conform to the location of the principal office of Go Daddy Software, Inc.
On July 31, 2007, after having verified that the Complaint satisfied all formal requirements, the Center notified the Respondent by courier and email of the commencement of the administrative proceeding, in accordance with Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
In accordance with Paragraph 5(a) of the Rules, the due date for the Response was August 20, 2007. No response having been received by that date, the Center issued a Notification of Respondent Default on August 22, 2007.
On August 24, 2007, the Respondent sent by email to WIPO a notification consenting – albeit “[w]ithout admission of fault or wrongdoing of any kind by Respondent, and to avoid the expense, delay, and inconvenience of [the present] proceeding” – to transfer the disputed domain name to the Complainant.
In light of this, on the same date, the Center requested that the Complainant consider suspending the proceedings. On August 29, 2007, the Center reminded the Complainant by email that if it desired to suspend the proceedings, it must request a suspension from the Center by August 31, 2007. On August 31, 2007, the Center sent a further reminder to the Complainant, setting a final deadline for requesting suspension of September 4, 2007.
Based on the documents in the case file, no communications were received from either party in this regard.
The Center appointed D. Brian King as the sole panelist in this matter on September 18, 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.
4. Factual Background
The facts relevant to the current dispute are set out in the Complaint. Considering the allegations therein and the evidence produced, the Panel finds the following facts to have been established.
The Complainant holds approximately 20 trademark registrations for the mark VIDIGREET, which has been registered in relation to a variety of electronic greeting card goods and services. The Complainant first applied for trademark registrations of this mark on June 17, 2005. Applications were filed in, inter alia, Denmark, Hong Kong, the SAR of China, Hungary, Ireland, Israel, the Republic of Korea, New Zealand, and the United Kingdom of Great Britain and Northern Ireland. These registration applications and others were all approved by the end of 2006. The Complainant also holds six Allowed Trademark Applications in the United States of America, all of which were granted prior to February 2007. The Complainant had previously registered the domain name <vidigreet.com>, on March 27, 1996.
Subsequent to all of these events, on April 29, 2007, the Respondent registered the disputed domain name, <vidigreet.mobi>. The domain name currently resolves to a web page with the “Go Daddy” logo indicating that the domain name is “parked.”
5. Parties’ Contentions
The Complainant contends that the domain name <vidigreet.mobi> is identical or confusingly similar to a trade or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name <vidigreet.mobi> was registered and is being used in bad faith.
In support of the foregoing contentions, the Complainant submits in summary that:
– the relevant and dominant portion of the Respondent’s domain name, “vidigreet”, is identical to the Complainant’s VIDIGREET trademark;
– the Respondent has no apparent connection with the term “vidigreet,” has held the domain name idle since registration, and has not used it, nor appears to have plans to use it, in connection with a bona fide offering of goods or services, or in a manner that would constitute legitimate noncommercial or fair use; and
– the Respondent was on notice of the Complainant’s prior rights in the mark, due to the Complainant’s numerous trademark registrations, and the Respondent’s registration and passive use of the disputed domain name amounts to bad faith in the circumstances here.
As noted above, the Respondent failed to file a Response by August 20, 2007, the deadline set by the Center. After receiving the Notification of Respondent Default, the Respondent sent the following notification to the Center (emphasis added):
“Respondent, Cocktails For a Cause, registered the domain name “www.vidigreet.net/www.vidigreet.mobi” (the “Domain Name”) in good faith. At the time Respondent registered the Domain Name it was unaware of Complainant, Jeffrey Gorman, or his claim of rights to the Domain Name. To Respondent’s knowledge, at the time Respondent registered the Domain Name and through today, there has not been an active website located at the URL “www.vidigreet.com”. Respondent has taken no action with respect to the Domain Name that would constitute bad faith use or registration of the Domain Name or infringement the (sic) alleged rights of Complainant.
Without admission of fault or wrongdoing of any kind by Respondent, and to avoid the expense, delay, and inconvenience of this proceeding, Respondent hereby consents to the transfer of the Domain Name to Complainant and requests that NAF grant the transfer without any further delay or consideration of the Complaint.”
Notwithstanding the Respondent’s consent to transfer, the matter has not been resolved by agreement for reasons that are not apparent from the documentary record.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (“the Policy”) sets forth three requirements that have to be met for a complaint under the Policy to succeed. Those are:
– the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
– the respondent has no rights or legitimate interests in respect of the domain name; and
– the respondent’s domain name has been registered and is being used in bad faith.
In proceedings before an administrative panel, the complainant bears, in principle, the burden of proof on each of these elements. The panel has to decide the matter based on the statements and documents submitted, and in accordance with the Policy, the Rules and any rules or principles of law that it deems applicable (see Rules, Paragraph 15(a)).
The Respondent in this case did not submit a Response. The Respondent has, however, submitted a written statement expressly agreeing to the transfer of <vidigreet.mobi> to the Complainant.
A number of Panels have considered how to proceed where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. Panels have generally taken one of three courses:
– ordered the transfer of the disputed domain name on the basis of the respondent’s consent, without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195);
– found that where consent to transfer exists, the three elements of Paragraph 4(a) are deemed to be satisfied, and accordingly ordered transfer on that basis (see Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); or
– proceeded, notwithstanding consent to transfer, to analyze whether on the evidence the three elements of Paragraph 4(a) are satisfied, in particular where there is some reason to doubt the genuineness of the respondent’s consent (see Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
The Panel looks to the Rules, and particularly to Paragraph 10, General Powers of the Panel, of the Rules for guidance as to how to proceed in this situation. Under Paragraph 10(a) of the Rules, the Panel may conduct the proceeding in such a manner as it considers appropriate in accordance with the Policy and the Rules; and under Paragraph 10(c) of the Rules, the Panel shall ensure that the proceeding takes place with due expedition.
Consistent with these principles, and following the approach adopted by the Panel in the Williams-Sonoma case, the Panel considers it appropriate in the circumstances here to grant the requested transfer of the disputed domain name on the basis of the Respondent’s consent thereto, without the necessity of making findings under Paragraph 4(a) of the Policy.
The Respondent has expressly and unconditionally consented to the transfer of the disputed domain name. Notably, the Respondent’s consent is embodied in a form of notice erroneously referring to the National Arbitration Forum (not WIPO), and containing rather formulaic language – suggesting perhaps that the Respondent is no stranger to proceedings of this kind. In any event, there being no existing dispute between the Parties as to the disposition of the disputed domain name, little purpose would be served in making findings under Paragraph 4(a) of the Policy. By the same token, postponing a decision to give the parties additional time to reach a settlement would only engender unnecessary delay. The Panel considers that in these circumstances, Paragraph 10 of the Rules provides sufficient authority to order transfer of the disputed domain name.
The foregoing conclusion is fully sufficient to resolve this case. The Panel goes on to note, however, simply for the sake of completeness, that the disputed domain name wholly incorporates the Complainant’s registered mark; that there appears to be neither direct nor inferential evidence that the Respondent has rights or legitimate interests in respect of the disputed domain name; and that the Respondent would appear to have been at least on constructive notice (via trademark registration) of the Complainant’s rights at the time of registering and “parking” the disputed domain name.
For the foregoing reasons, the Panel orders that the domain name <vidigreet.mobi> be transferred to the Complainant.
D. Brian King
Dated: October 3, 2007