WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BACCARAT SA v. Whois Privacy Protection Service by VALUE-DOMAIN
Case No. D2012-2417
1. The Parties
The Complainant is BACCARAT SA of Baccarat, France, represented by MEYER & Partenaires, France.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka, Japan.
2. The Domain Name and Registrar
The disputed domain names <baccarat-pedia.com> and <xn--lckwd8c.biz> (<バカラ.biz>) are registered with eNom and Key-Systems GmbH dba domaindiscount24.com (the “Registrars”).
3. Procedural History
The initial Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012 for seven domain names. On December 11, 2012, the Center transmitted by email to the concerned registrars a request for registrar verification in connection with the seven domain names. On December 11 and 12, 2012, the concerned registrars transmitted by email to the Center their verification responses. One of the concerned registrars disclosed registrant and contact information for five of the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2012, providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to file a separate Complaint for one of the domain names, and file a short amendment to drop said separately-filed domain name from the Complaint; or to provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are the same entity. The Complainant filed an amended Complaint on January 3, 2013, dropping five domain names from the Complaint.
On January 9, 2013, the Center sent an email communication in English and Japanese to the parties regarding the language of the proceeding. On January 10, 2013, the Complainant indicated it had already submitted a request for English to be the language of the proceeding in the Complaint and that it had nothing to add to that request.
On January 9, 2013, the Center received an email communication from the registrant of
<baccarat-pedia.com> indicating the domain name would not be renewed. On January 11, 2013, the Complainant filed a request for suspension of the proceeding. On the same day, the Center suspended the proceeding until February 10, 2013. On February 8, 2013, the Complainant requested re-institution of the proceeding. On February 12, 2013, the Center re-instituted the proceeding. On February 13, 2013, the Complainant filed an amended Complaint, adding one domain name to the proceeding.
On February 13, 2013, the Center transmitted by email to the concerned registrar a request for registrar verification in connection with the added domain name. On February 15, 2013, the concerned registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the added domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2013, providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to file a separate Complaint for one of the domain names, and file a short amendment to drop said separately-filed domain name from the Complaint; or to provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are the same entity. The Complainant filed an amended Complaint on February 26, 2013, dropping the added domain name from the Complaint.
The Center verified that the Complaint together with the amended Complaints 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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. On March 28, 2013 the Center received a request for suspension from the Complainant. The proceeding was subsequently suspended by the Center until April 27, 2013. Upon receipt of a request from the Complainant, the Center extended the suspension on April 25, 2013 until May 25, 2013. On May 25, 2013, the Complainant requested re-institution of the proceeding. On May 27, 2013, the Center re-instituted the proceeding and notified the parties of the new Response due date. A Response was filed with the Center on May 29, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on June 7, 2013. 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 Panel upon reviewing the case file formed a preliminary view that despite the official registrant of the two disputed domain names being Whois Privacy Protection Service by VALUE-DOMAIN, the domain names were in fact owned by two different persons or entities.
The reasons the Panel formed this view was:
1. The disputed domain names were registered three years apart. One was registered in 2008 and the other in 2011.
2. The disputed domain names were registered with different registrars.
3. One of the disputed domain names resolved to a page with content, the other did not.
4. A person claiming to be the actual registrant of <baccarat-pedia.com> responded to the proceedings.
The Complainant also appears to have formed the same view. In an email to the Center, the Complainant stated:
“This complaint is against two domain names and involves two different holders, however the registered registrant is Value Domain.”
Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The UDRP and the Rules do not make any mention of privacy services. On one reading of paragraph 3(c) of the Rules provided that the privacy service is registered as the domain holder and does not identify any other person or entity to be the domain holder a panel should be able to make a determination in relation to multiple domain names. Depending on the facts of a case, this may be an appropriate way to proceed. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) sets out factors that should be considered when bringing a consolidated complaint against multiple respondents. The Panel considers that the principles and decisions set out there are equally relevant to deciding whether a complaint can proceed against multiple domain names held by a privacy service. In particular, paragraph 4.16 of the WIPO Overview 2.0 provides that a consolidated action may proceed where: (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In this case, however, the Panel considered, subject to any submissions from the parties, that it was not able to make a determination in relation to both disputed domain names in the same proceeding. The way in which the disputed domain names had been registered (on divergent dates and with different registrars) and used (one resolved to an active page; the other did not) made it difficult to conclude that the actual registrant of each disputed domain name was the same. Further, the fact that emails had been received from one person claiming to be the actual registrant of <baccarat-pedia.com> made it more difficult to make a decision treating both disputed domain names as being held by the same entity or person.
The Panel also considered that the legal arguments made by the Complainant in relation to each disputed domain name added to this difficulty. In relation to one domain name, the Complainant argued that actual use showed the domain name had been registered and used in bad faith. In relation to the other the Complainant argued that passive use showed the domain name had been registered and used in bad faith. If the Panel concluded the actual use in relation to the first domain name was in bad faith, would it then be bound to conclude passive use was also in bad faith?
Accordingly, the Panel considered that it could only proceed with the case by treating the domain name holders as different individuals or entities. Based on this the Panel considered it did not have the power under paragraph 3(c) of the Rules to allow the proceedings to continue as a single set of proceedings in respect of both disputed domain names.
The Panel therefore on June 20, 2013 issued an Administrative Panel Procedural Order (the “Panel Order”). The Panel Order was similar to that that issued in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894. In summary, under the Panel Order:
1. the Complainant was requested to provide evidence that the actual holders of the disputed domain names are the same or sufficiently connected entities such as to permit the proceedings to continue in relation to both disputed domain names (other than the fact the registrant of record is Whois Privacy Protection Service by VALUE-DOMAIN);
2. If the Panel considered there was insufficient evidence the actual holders were not the same or sufficiently connected, the Complainant was requested to indicate whether its preference was for:
(a) the proceedings to continue in respect of the domain name <baccarat-pedia.com> alone, with an Order being made for dismissal of the Complaint pertaining to the domain name <xn--lckwd8c.biz> (<バカラ.biz>) without prejudice to the filing of a further complaint; or
(b) the proceedings to progress formally as two sets of proceedings in respect of both disputed domain names on payment of an additional fee to the Center.
The Respondent was also given an opportunity to respond.
On June 25, 2013, the Complainant by email informed the Center that it wished for the proceedings to continue in respect of the domain name <baccarat-pedia.com> alone.
The Respondent did not respond.
The remainder of this Decision, therefore, deals only with the domain name <baccarat-pedia.com>, which is referred to as “the disputed domain name”. The Complaint in relation to <xn--lckwd8c.biz> (<バカラ.biz>) is formally denied in Section 7 below.
The Complainant holds the registration of the trademark BACCARAT in class 21 (and many other classes) in numerous countries, including Japan.
The disputed domain name was registered on April 14, 2008. Prior to the submission of the Complaint the disputed domain name resolved to a page headed “Baccarat-pedia” with pictures of Baccarat glassware. Links on the page led Internet users to a commercial site, “www.rakuten.co.jp”, selling various items of glassware from both the Complainant and competitors of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <baccarat-pedia.com> is identical or confusingly similar to its registered trademark BACCARAT; that the Respondent has no rights or legitimate interests in the disputed domain name as there is no relationship between the Complainant and the Respondent nor has the Complainant given any authorization to the Respondent to use the Complainant’s trademark; and that the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions with regard to the registration and use of the disputed domain name.
A Mr. Murakami responded to the Complaint on a number of occasions stating he is the holder of the disputed domain name. In his first communications he said (in English) that he “did not know English”. In his initial communications in Japanese he stated that he had taken the page down and that the disputed domain name would expire in April 2013.
In further communications (in Japanese) he repeated that he could not understand English but that he was willing to transfer the disputed domain name.
The Panel finds that Mr. Murakami is the actual holder of the disputed domain name. Mr. Murakami responded to the Complaint that was served on Whois Privacy Protection Service by VALUE-DOMAIN (“Value-Domain”) on a number of occasions. While Value Domain did not directly identify him as the holder, there is no other logical reason why he would have received the Complaint and be responding to it. The Panel will refer to Mr. Murakami as the Actual Holder below.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for <xn--lckwd8c.biz> (<バカラ.biz>) is Japanese, while the language of the Registration Agreement for the disputed domain name <baccarat-pedia.com> is English. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. In the Complaint the Complainant requested that English be the language of proceedings. The Actual Holder has said that he does not understand English. The website the disputed domain name resolved to was entirely in Japanese. However, it is clear the Actual Holder understands the nature of the proceedings. More importantly, the language of the Registration Agreement for the disputed domain name (i.e., the domain name of the Actual Holder) is English. Furthermore, given the Actual Holder’s unequivocal consent to transfer, it would be unfair on the Complainant to order the Complaint be translated.
On this basis, the Panel determines that English be the language of the proceedings. The Panel has read the Actual Holder’s submissions in Japanese and does not require them to be translated.
B. Consent to Transfer
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
This Panel considered this issue in detail in Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472 and found that it prefers the view in the first sentence of paragraph 4.13 of the WIPO Overview 2.0 that unambiguous consent is sufficient for a panel to order transfer or cancellation. The Panel will not repeat its reasoning here.
In this case, the Complainant has established its relevant trademark rights and standing to bring the Complaint. The Actual Holder has given its unambiguous consent to transfer. Accordingly the Panel will order that the disputed domain name be transferred.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that:
(a) the disputed domain name <baccarat-pedia.com> be transferred to the Complainant;
(b) the Complaint pertaining to <xn--lckwd8c.biz> (<バカラ.biz>) is denied without prejudice to the filing of a further complaint.
Date: July 8, 2013