WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Net-A-Porter Group Limited v. Domains By Proxy, LLC a/k/a DomainsByProxy.com / No Filter News
Case No. D2013-0618
1. The Parties
The Complainant is the Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Winston & Strawn LLP, United States of America (“US”).
The Respondent is Domains By Proxy, LLC a/k/a DomainsByProxy.com of Scottsdale, Arizona, US / No Filter News of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <netaportersale.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2013, the Registrar 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 23, 2013, 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 amended Complaint on April 24, 2013.
The Center verified that the Complaint together with the amended 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 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2013. The Center received email communications from the Respondent on April 23, 24 and 29, 2013. The Response was filed with the Center on April 30, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 28, 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.
4. Factual Background
The Complainant is the owner of the Net-a-Porter business, which operates via a website (the “Website”) using domain name <net-a-porter.com>. Through this domain name, the Complainant retails luxury fashion and couture clothing items. Designer brands sold on the Website include Burberry, Mulberry, Calvin Klein and Moschino, among many others.
The Complainant’s business has won numerous awards since its formation, and the Website was included in Time Magazine’s 2008 list of “50 Best Websites”. The Website also gains significant public attention through advertisement on social media sites such as Facebook (“www.facebook.com/netaporter”) and Twitter (“www.twitter.com/netaporter”). The Twitter account has more than 400,000 followers.
The Complainant owns trademark registrations for NET-A-PORTER in several jurisdictions.
The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries.
The disputed domain name was registered on July 30, 2012. Upon receiving notification from the Center about the Complaint made against him, the Respondent contacted the Center by email requesting that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant submits that:
(i) the disputed domain name is confusingly similar to NET-A-PORTER, in which it has registered trademark rights;
(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent sent email communications to the Center and the Complainant on April 23, 24 and 29, 2013. A formal Response was filed with the Center on April 30, 2013.
On April 23, 2013, the Respondent sent an email to the Center stating that he was the owner of the blog <netaportersale.com>. He stated that he wanted to agree to the remedies requested in the original Complaint (that the “disputed domain name be transferred to the Complainant.”), He also stated that he has already inquired with the Registrar with respect to the transfer of the disputed domain name. He also mentioned that he has written to the Complainant’s counsel but never received an answer.
On April 24, 2013, the Respondent sent another email communication to the Center with similar content.
On April 29, 2013, the Respondent sent an email the Center and the Complainant asking if the Complainant was interested in suspending the proceedings to explore a settlement. He added that he wanted to delete or transfer the disputed domain name.
On April 30, 2013, the Respondent email the Center with his official response stating that he has used the WIPO model response available at “https://www.wipo.int/amc/en/domains/respondent/index.html”. In his email he also stated that he consented to the remedies requested by the Complainant and have filled out the form in order to show his consent. Section III of the Response provides “The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel”.
6. Discussion and Findings
Consent to Transfer
As noted above, the Complainant has requested transfer of the disputed domain name and the Respondent has stated in his Response (and in several emails) that he consents to the transfer of the disputed domain name to the Complainant.
As the panel held in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, “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”.
This approach has been followed in a number of other decisions: see, for example, 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.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states: “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” (WIPO Overview 2.0, section 4.13).
It is the view of this Panel, there are no circumstances in this case that would make appropriate to proceed to a consideration of the merits of the Complaint. Therefore, the transfer of the disputed domain name is ordered on the basis of the Respondent’s consent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <netaportersale.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: June 11, 2013