WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infoglobo Comunicação e Participações S.A. v. Admin, Oversee Domain Management, LLC
Case No. D2011-1378
1. The Parties
The Complainant is Infoglobo Comunicação e Participações S.A. of Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
The Respondent is Admin, Oversee Domain Management, LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <extraexplica.com> is registered with NameKing.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Response was filed with the Center on September 9, 2011. In such Response, the Respondent stipulated that, without admitting fault or liability and without responding substantively to the allegations in the Complaint, it was willing to voluntarily transfer the disputed domain name to the Complainant. On September 13, 2011, the Center, noting this, informed the parties about the possibility of suspending the proceeding for the purpose of settlement talks, and indicated that the Complainant may submit a request for suspension. By its email of September 14, 2011, the Complainant indicated that it was not going to request a suspension.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 29, 2011. 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 Complainant is the owner and publisher of newspapers and several news agencies in Brazil. The Complainant owns several newspapers, including the “O Globo”, “Extra” and “Expresso”. The Complainant’s newspaper the “O Globo” has published and circulated since 1925, and is one of the largest newspaper publications in the country. The Complainant launched the newspaper “Extra” in 2000, with a promotional campaign that mobilized the population of Rio de Janeiro to choose the name of the newspaper. The newspaper the “Extra” has over three million readers, and the “Extra’s” online website at “www.extraonline.com.br” is considered to be one of the most visited newspaper websites in Brazil, with 27,921,884 visits between June 15, 2011 and July 14, 2011.
The Complainant also launched a special segment called “Extra Explica” on January 7, 2011, which means “Extra Explains”. This service tutorial provides tips for reads, and “do-it-yourself” guides.
The Complainant owns many trademark registrations for EXTRA and for EXTRA EXPLICA.
The Respondent registered the domain name <extraexplica.com> on February 25, 2011. At the time the Complaint was filed, the disputed domain name reverted to a website that provided links to websites of third parties for purposes of monetary gain.
5. Parties’ Contentions
(a) Identical or Confusingly Similar
The Complainant contends that the domain name <extraexplica.com> is confusingly similar to the Complainant’s many EXTRA trademarks, including the trademark EXTRA EXTRA (Registration No. 820462535), and its EXTRA EXPLICA trademarks, including (Registration No. 903178478).
The Complainant contends that the domain name <extraexplica.com> is essentially identical to the trade mark EXTRA EXPLICA, except for the addition of the “.com” designation. Accordingly, the Complainant contends that the domain name <extraexplica.com> is confusingly similar to the Complainant’s trademark.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent has no rights in the trademark EXTRA EXPLICA either at common law or by way of registration anywhere in the world. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register a domain name incorporating its trademark. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name <extraexplica.com> was registered and is being used in bad faith based on the following factors: (i) Respondent must have been aware of the Complainant’s rights in the EXTRA EXPLICA trademark; and (ii) the Respondent is using a confusingly similar domain name in connection with click-through sites for the purposes of monetary gain.
The Respondent agrees to the relief requested by the Complainant, and will, upon order of the Panel, take all necessary steps to transfer the domain name to the Complainant. The Respondent claims that this is not an admission to the three elements of paragraph 4(a) of the Policy, but rather an offer of unilateral consent to transfer.
6. Discussion and Findings
The Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 to support the position that a panel may authorize the voluntary transfer of a disputed domain name, without the necessity of reviewing the facts and arguments, or making any finding on the merits of the matter under the Policy.
The panel in Cartoon Network reasoned as follows:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. 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).
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).”
The Panel notes that other panels have decided in the same manner when presented with a similar set of circumstances (see Kaehler Travelworks, LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-1326 and Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408).
The Panel agrees with the reasoning set out in Cartoon Network and accepts the Respondent’s unilateral consent to transfer the disputed domain name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <extraexplica.com> be transferred to the Complainant.
Christopher J. Pibus
Dated: October 5, 2011