The Complainant is Caja de Ahorros y Monte de Piedad de Madrid of Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
The Respondent is Acquire This Name, Inc., Matt Overman of San Francisco, California, United States of America, internally represented.
The disputed domain name <fundacioncajamadrid.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2009. On March 31, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 31, 2009, eNom 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. The Center sent an email communication to the Complainant on April 2, 2009, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 4, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2009. The Response was filed with the Center on April 25, 2009.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on May 7, 2009. 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.
Considering the allegations set out in the Complaint, the evidence produced and that the Respondent has not contested the allegations in the Complaint, the Panel finds the following facts to have been established.
The Complainant holds approximately 57 trademark registrations for the mark CAJA MADRID and CAJA DE MADRID, which have been registered in the European Union and Spain in relation to a variety of goods and services. The Complainant is a well known company that acts in commerce in Spain offering its clients products and services related to retail and business banking. The Complainant also has a foundation aimed at developing aid, social, cultural and educational programs.
Subsequent to the Complainant's trademark registrations, on May 1, 2002, the Respondent registered the disputed domain name, <fundacioncajamadrid.com>.
The domain name currently resolves to a “parked” web page with sponsored links including banking, insurance and other websites of or operated by the Complainant's competitors. On the Respondent's web page there is also a link to “Caja Madrid”, which is the Complainant's trademark. However, upon clicking the link it does not resolves to the Complainant's website and rather it does to the Respondent's own web page.
At the bottom of the Respondent's web page there is a link saying: “This domain may be for sale. Buy this Domain”. The link resolves to a website of Acquire This Name Inc., inviting interested parties to submit an offer to purchase the domain name.
The Complainant has requested that the disputed domain name be transferred to the Complainant. The Complainant contends that the disputed domain name is confusingly similar to its CAJA MADRID marks and argues that the Respondent lacks rights or legitimate interests in the domain name, and has registered and is using the domain name in bad faith. The Complainant seeks the transfer of the disputed domain name.
The Respondent states it has acted in good faith and requests the dismissal of the Complaint solely upon this. However, the Respondent does not dispute any of the above assertions made by the Complainant and does not deny the facts outlined in Section 4. above. Instead, the Respondent states it attempted to contact counsel for the Complainant to amicably transfer the domain name.
In its Response and in the communications attached thereto, the Respondent has expressly and unconditionally consented to the transfer the disputed domain name to the Complainant.
In Section III of the Response reads as follows:
“[5.] The Respondent hereby responds to the statements and allegations in the Complaint and respectfully requests the Administrative Panel to grant Respondent's request to simply transfer this domain to the Complainant”.
“[j]In the light of the foregoing, respondent respectfully requests that the Panel dismiss the complaint inasmuch as Respondent has acted only in good faith. Upon dismissal, Respondent agrees to immediate transfer of the <fundacioncajamadrid.com> domain to Complainant.”
“[n] In the alternative, Respondent respectfully requests that the Panel refrain from making any formal finding that the Respondent acted in “bad faith”. Rather, Respondent respectfully requests that the Panel simply endorse Respondent's offer to transfer the <fundacioncajamadrid.com> domain to Complainant.”
In view of the foregoing, since there is no actual dispute among the Parties as to the disposition of the disputed domain name, this Panel finds that it must grant the relief requested by the Complainant and order the transfer of the disputed domain name.
This approach has been decided in Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207), where the panel held inter alia:
“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the party's intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parities and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.”
Accordingly, in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the panel said:
“There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems' proved the three elements of paragraph 4(a) of the Policy. However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
Several other decisions have followed this approach: see John Bowers QC v. Tom Keogan, WIPO Case No. D2008-1720; Infonxx.Inc v. Lou Kerner, WildSites.com WIPO Case No. D2008-0434; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; Nutri/System, IHPC, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0864; and KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup, WIPO Case No. D2008-0446.
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 name <fundacioncajamadrid.com> be transferred to the Complainant.
Gustavo Patricio Giay
Dated: May 27, 2009