The Complainant is Saipem S.p.A. of Milan, Italy, represented by Studio Legale Tonucci, Italy.
The Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <saipem.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 21, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On April 22, 2010, Nameview Inc. 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 26, 2010 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 26, 2010. 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 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. A belated Response was filed with the Center on May 28, 2010. This was acknowledged by the Center on June 1, 2010, and requests were received from the Complainant to make supplementary filings responding to this Response (see further below).
The Center appointed Staniforth Ricketson as the sole panelist in this matter on June 16, 2010. 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.
Having reviewed the file, the Panel is satisfied that the Complaint, as amended, complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
There are two issues requiring procedural rulings from the Panel before proceeding to a decision:
1. Whether the Panel will accept the late filed Response of the Respondent; and
2. Whether the Panel will grant leave to the Complainant to make supplementary filings in response to the Respondent.
As noted above, this was received some 11 days late. Various reasons for the late delay are set out in the Petition of the Respondent's attorney seeking leave to file the Response, including misunderstandings on the latter's part as to settlement discussions between the parties and the impact of alleged administrative errors. Ultimately, however, it is a matter for the discretion of the Panel under Paragraph 10 of the UDRP Rules as to whether or not to accept and consider a late-filed document in a proceeding. The Respondent quotes a number of previous panel decisions in which such leave has been granted. These emphasise the discretionary nature of a panel's powers in these circumstances, including considerations of fairness and equity and whether there would be prejudice to the other party if leave were to be granted. In the present case, it is difficult to identify any specific prejudice to the Complainant that would flow from acceptance of the Respondent's petition, in particular given the Respondent's unconditional offer to transfer the disputed domain name to the Complainant (see further below). While late filed, this is material which the Panel would ordinarily look to in reaching its decision, as opposed to requests to file supplementary materials after each side has filed its primary documents. Accordingly, the Panel is prepared to consider the late filed Response, noting that this then leads to the second procedural matter, namely whether the Complainant may make supplementary filings in reply.
The Complainant's attorney has requested leave to make a supplementary filing in relation to the Respondent's petition to file a late Response and the late Response itself (email to the Centre dated June 1, 2010). There is no specific provision for supplementary filings under the Rules and this, again, is ultimately a matter for the Panel in its discretion under the Rules. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules…. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In the present case, the Panel does not believe that it will be assisted by any further submissions or material from the Complainant, particularly having regard to the nature of the late filed Response, which is essentially a denial of bad faith, coupled with an offer to transfer the domain name. There is no exceptional circumstance here calling for the admission of further material from the Complainant, and there is no obvious prejudice that would flow to it if this is allowed (see above). Furthermore, if the Complainant's request to file Supplemental Filings were to be admitted, the Panel would feel bound to afford the Respondent an opportunity to comment on them, and this could well lead to the endless merry-go-round of supplementary filings referred to by the Panel in the passage extracted from the Scripps case above. This would clearly delay the conclusion of the proceding without any apparent benefit. The Panel has therefore decided not to request and allow supplemental filings sought by the Complainant.
According to the Complaint, the Complainant is a world leader in oil and gas contracting services, both onshore and offshore. Sufficient material has been submitted to indicate that it has been engaged in these activities since the 1950s, and now has significant operations in the Mediterranean, the North Sea, the Middle East and West Africa, and offices worldwide. It employs over 35,000 people comprising more than 100 different nationalities, and has sizable service bases in India, Croatia, Romania and Indonesia. For 2009, the Saipem Group reported a cash flow of EUR 1,172 million, an operating profit of EUR 1,156 million, and a net profit of EUR 732 million. It currently has new onshore contracts for a total value of USD 1,870 million in countries as diverse as Mexico, Democratic Republic of Congo, Algeria, Peru, Kazakhstan, Norway and the United Kingdom of Great Britain and Northern Ireland.
The Complainant is the owner of a number of registered trade marks consisting of the word “Saipem” in various jurisdictions, with an international registration (No. 366262) in classes 37 and 42 for Benelux, Czech Republic, Germany, Egypt, Spain, France, Hungary, Croatia, Liechtenstein, Morocco, Monaco, Montenegro, Portugal, Romania, Slovakia, San Marino and Serbia, and two national registrations in Italy (No.s 0000243561 and 0000163632) in classes 42. These have all been registered since 1970.
Although the Complainant also holds a large number of domain names comprising or including the word “saipem”, the domain name <saipem.com> has been registered by the Respondent, with an expiry date of December 23, 2010.
The Complainant alleges that the three requirements of paragraph 4(a) of the Policy have been established in the present case, namely that the disputed domain name 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 (there being no evidence hereof any authority or licence from it to use the domain name); and that the domain name was registered and has been used in bad faith (particular reference is made here to the various services etc. that have been offered by the Respondent on its website that relate to the mining industry and which, it is contended, are likely to mislead or confuse Internet users.)
The Respondent “vehemently” denies these allegations, in particular any suggestion that it has acted in bad faith in registering and subsequently using the domain name in connection with its website. In particular, it claims that it had never heard of the Complainant at the time that it registered the domain name. It notes that it has now taken steps to remove links to services in the same areas of activities of the Complainant, replacing these by links to generic services. Finally, it stipulates that it now wishes to transfer the domain name to the Complainant, requesting the Panel not to make any findings under the Policy or, in the event that it does, to find that it has not breached the Policy.
The stipulation from the Respondent that it will now agree to the transfer of the domain name to the Complainant poses an interesting issue for the Panel. There have been a number of cases in which the question of unilateral transfer has arisen, and in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 the Panel in that case summarized the different approaches that are to be found in these decisions:
There have been at least three courses proposed: (i) to grant the relief requested by the Complainant 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); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
As the panel in this case goes on to point out, there is a difference between a unilateral offer to consent to transfer and an admission of the elements of paragraph 4(a). In the present case, the Respondent vehemently denies having acted in bad faith: accordingly, there is no basis on which it can be assumed that the requirements of paragraph 4(a) have been satisfied by its unconditional offer to transfer. On the other hand, there appears to be little point in going on to examine whether the requirements of the Policy have, in fact, been satisfied where the Respondent has made a clear and unilateral offer to transfer. In such a case, the first of the courses outlined above is the appropriate one to follow, as in Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207. In such circumstances, the Panel should proceed expeditiously to resolve the proceeding pursuant to paragraph 10 of the Rules, and should proceed immediately to make an order for transfer. No further examination of whether or not the requirements of paragraph 4(a) of the Policy have been satisfied is necessary.
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 <saipem.com> be transferred to the Complainant.
Dated: June 30, 2010