WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jacuzzi Inc. v. Gianpietro Da Re, Luxuryspa s.r.l.
Case No. D2017-0147
1. The Parties
The Complainant is Jacuzzi Inc. of Chino Hills, California, United States of America, represented by Donahue Fitzgerald, United States of America.
The Respondent is Gianpietro Da Re, Luxuryspa s.r.l. of San Vendemiano, Italy, represented by BM&A - Barel Malvestio & Associati - Studio Legale, Italy.
2. The Domain Name and Registrar
The disputed domain name <jacuzzishipservice.com> (the “Disputed Domain Name”) is registered with OVH (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 27, 2017, 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.
On February 7, 2017, the Center transmitted an email to the parties in English and Italian regarding the language of the proceedings. On February 11, 2017, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not submit any comments on the language of the proceedings.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. The Response was filed with the Center on March 6, 2017. On March 14, 2017, the Center notified the Parties of the commencement of the Panel appointment process.
The Center appointed Andrea Mondini as the sole panelist in this matter on April 5, 2017. 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 several registrations for the trademark JACUZZI, including United States Patent and Trademark Office (“USPTO”) registration no. 1,101,174 registered on September 5, 1978.
The Respondent registered the Disputed Domain Name on February 18, 2014.
The Disputed Domain Name resolves to a website offering installation and maintenance services for “world leading brands in the spa industry, such as Jacuzzi, Rivierapool, Aquaviva and Astralpool”.
5. Parties’ Contentions
The Complainant maintains that the Disputed Domain Name is confusingly similar to its JACUZZI mark, and contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and registered and is using the Disputed Domain Name in bad faith. The Complainant seeks the transfer of the Disputed Domain Name.
In its Response, albeit stating that it had made a bona fide use of the Complainant’s mark and that it had no intention to infringe the Complainant’s trademark, the Respondent expressly consented to the remedy requested by the Complainant and agreed to cancel the Disputed Domain Name.
6. Discussion and Findings
6.1. Language of the proceeding
The Panel notes that, although the registration agreement is in Italian, the Complainant requested English to be the language of the proceeding and that the Respondent did not object to this request and filed its Response in English.
Therefore, the Panel determines that English is the language of the proceedings in accordance with paragraph 11(a) of the Rules.
6.2. Substantive Issues
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
However, this Panel considers that the Respondent’s genuine unilateral consent to the remedy requested by the Complainant provides a basis for an order for transfer or cancellation without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the Disputed Domain Name, and the Respondent consents, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules (Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).
The Panel has noticed that the Complainant requested the transfer of the Disputed Domain Name, and that the Respondent stated that it consented to the remedy requested by the Complainant and agreed to cancel the Disputed Domain Name. This raises the question whether the Respondent consented to the transfer or to the cancellation, or both. Considering that the remedy requested by the Complainant is the transfer of the Disputed Domain Name, and that the Respondent (who was represented by counsel) literally consented to the “remedy requested by the Complainant and agrees to cancel the disputed domain name”, the Panel concludes that the Respondent agreed to both the transfer and the cancellation. Because the Complainant requested the transfer (and not the cancellation), the Panel orders the transfer of 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 Disputed Domain Name, <jacuzzishipservice.com>, be transferred to the Complainant.
Date: April 19, 2017