About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

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

A. Complainant

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.

B. Respondent

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.

7. Decision

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.

Andrea Mondini
Sole Panelist
Date: April 19, 2017

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/