A one member UDRP panel refused to allow BuyDomains.com to unilateral consent to transfer the Domain Name Shiseido.net to the Complainant, Shiseido Company of Tokyo, Japan, and went ahead and issued its opinion ordering the transfer of the domain.
BuyDomains.com tried to agree to the consent to transfer while still maintaining that its did not register the domain name in bad faith.
The panel took that ball and ran, saying due to that statement the panel had a duty to issue an opinion.
Its a good discussion on how not to attempt to avoid a UDRP ruling if your willing to give up the domain
Here are the relevant facts and finding of the one member panel:
The Complainant is a globally operating company offering cosmetics, toiletries and beauty products.
The Complainant owns the SHISEIDO trademark, which is registered in numerous countries worldwide, among others as:
– United States trademark registration SHISEIDO (stylized) no. 686,446, registered on October 6, 1959;
-The Complainant is also the owner of numerous domain names including , and .
According to the WhoIs excerpt provided in Annex 1 to the Complaint, the Domain Name was registered on April 27, 2005. Almost all trademarks cited or referred to by the Complainant in its favor predate the registration of the Domain Name.
In the past six years, five decisions in UDRP proceedings have been issued against the Respondent.
The Respondent agrees to the relief requested by the Complainant and offers its unilateral consent to transfer the Domain Name to the Complainant.
The Respondent submitted a sworn affidavit, containing the following contentions:
– “We register domain names that become eligible for registration through expiration and deletion. We effort to register and use only those domain names that are comprised of descriptive or generic English and non-English words, phrases, terms, geographic identifiers, and/or combinations of the same. (* To that end, the word “Shiseido” “comes from Chinese Yi Jing, the Book of Changes from the Four Books and Five Classics of Confucianism…” available at: http://group.shiseido.com/company/past/company-name/ (last visited on October 22, 2013).
– We did not register the Disputed Domain for the purpose of selling it to Complainant. We did not register the Disputed Domain name with Complainant’s trademark in mind. We did not register the Disputed Domain name with the intent to disrupt Complainant’s business, to keep Complainant from having a domain name that includes their trademark or register it to confuse customers seeking to find Complainant’s numerous website(s).
– The domain name is not critical to our business, and in the interest of mitigating expenses for all involved, we agree to the relief requested by Complainant and offer our unilateral consent to transfer the Disputed Domain to Complainant.”
The Respondent expressly requests the Panel to decide solely on the basis of its unilateral consent to transfer, referring to previous decisions taken under the Policy and the Rules.
The Respondent has unilaterally consented to the transfer, but there is no settlement agreement. Thus, termination of the proceeding of a unilateral consent to transfer by the Respondent on the grounds of settlement pursuant to paragraph 17 of the Rules does not apply. This situation is not directly addressed by the Rules.
Therefore, before assessing the elements of paragraph 4(a) of the Policy it first must be determined whether or not it is necessary in light of the Respondent’s consent to transfer of the Domain Name that the Panel should proceed to a decision.
In previous cases where the respondent unilaterally consented to transfer of the disputed domain name, the UDRP panels have approached the issue depending on the specific circumstances of the dispute. As analyzed by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the UDRP panels, when faced with a “unilateral consent to transfer”, have taken three different approaches.
Some UDRP panels have ordered transfer of the disputed domain name on the basis of a unilateral consent to transfer of the respondent alone, without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132); in some cases, the panel found that consent to transfer means that the three elements of paragraph 4 (a) of the Policy are deemed to be satisfied, so that transfer should be ordered on that basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONS AB, WIPO Case No. D2000-1398). Still other UDRP panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy (e.g. Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921; Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211; Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190; see also Citigroup Inc. v. Texas Int’l Prop. Assocs., NAF Claim No. 1210904).
Considering the individual circumstances of the case, the Panel does not take the view that the Respondent’s unilateral consent to transfer of the Domain Name means that the three elements of paragraph 4(a) of the Policy are deemed satisfied.
The Respondent expressly denied that it registered the Domain Name in bad faith.
Thus, the consent was not unconditional in this respect. Besides that, the Respondent argues that the Domain Name is descriptive, thereby insinuating that it has a legitimate interest.
According to paragraph 10(c) of the Rules, the Panel shall ensure that the administrative proceeding takes place with due expedition. According to paragraph 4 of the Policy, the administrative proceeding before the Panel is mandatory; according to paragraph 4(j) of the Policy, any decision issued under the Policy shall be published.
According to paragraph 15(e) of the Rules, the Panel shall also declare in its decision in case a Complaint was brought in bad faith, and that dissenting opinions shall accompany the majority decision.
It follows from these rules that once the administrative proceeding has been opened, a Party shall not be allowed to shirk the panel’s decision on its own discretion if there are reasons to suspect the Party’s motives, and that it must be ensured that a Party’s bad faith conduct is not “swept under the carpet” (see the panel’s considerations in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, supra). On the other hand, it also corresponds to the principle of public access to the complete findings of the Panel as stipulated in paragraph 15(e) of the Rules to publish the Panel’s opinion in case that it finds that the three elements of paragraph 4(a) of the Policy are not satisfied, even if the Respondent agrees to the relief requested but disagrees on the merits, if this does not lead to a deferral of the proceeding.
Even though the Respondent agrees to the Complainant’s relief requested, the Respondent expressly denies bad faith.
Also, the Complainant in its submission of October 25, 2013 expressly requested a decision with substantive determination of the case and explicitly did not agree to a consent decision but pointed to the fact that it is entitled to a decision on the merits, considering particularly the pattern of bad faith conduct on the part of the Respondent demonstrated by this and earlier UDRP cases. Therefore, in light of the Rules cited above, the Panel finds that in this case it is appropriate to address the merits, if this does not lead to a deferral of the proceeding.
b. Due Expedition
The principle of leading the proceeding with due expedition would be violated if consideration of the merits would lead to a deferral of the decision.
Upon the Center’s invitation, the Complainant declined to suspend the proceeding in order to enter into negotiations.
The Panel finds that no further statement from the Respondent needs to be requested for deciding on the merits of the case. According to paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Respondent has not been given the opportunity to respond to the Complainant’s email communication of October 25, 2013. According to paragraph 12 of the Rules, it lies in the Panel’s discretion to request further statements from the Parties. In its email communication of October 25, 2013, the Complainant did not submit any additional facts or evidence, so that another Response of the Respondent was not needed in light of the requirement of the right to be heard. The Panel therefore will decide on the evidence before it. The proceeding will not be deferred.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name 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 in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of numerous internationally registered trademarks consisting of the word “shiseido”. The Domain Name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy it must be established that the Respondent has no rights or legitimate interests in respect of the Domain Name.
It is consensus view under the Policy that, if the complainant made out a prima facie case that the respondent lacks rights or legitimate interests and the respondent did not come forward with appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. Even though the Respondent submitted a response, it did not explicitly allege that it has rights or legitimate interests in respect of the Domain Name.
Before that background, it would be sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name in order to place the burden of production on the Respondent (see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582; Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant asserts with respect to paragraph 4(c)(i) of the Policy, that the Respondent, before any notice of the dispute, did not use or prepare to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, the Complainant further stated that there is no evidence that indicates that the Respondent has ever been commonly known by the Domain Name or has acquired trademark rights in a name corresponding to it.
With respect to paragraph 4(c)(iii) of the Policy, the Complainant contended that the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the Domain Name.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name.
Hence, the burden of production has been placed on the Respondent. In such case, a respondent must demonstrate its rights or legitimate interests in the domain name in order to rebut the prima facie case. In its response, the Respondent did not give any specific reason for the registration of the Domain Name, nor did it claim that it used the Domain Name in connection with an offering of goods or services or for private reasons.
The Panel, however, notes that in the file there is a printout of the website into which the Domain Name resolves as of October 2, 2013.
The website a landing page providing “related links” to different subjects (“Yi Ling, Book of Changes, Zhouyi, Confucianism, Divination, Eastern Philosophy, Geomacy” on the one hand and “Shiseido Cosmetic, Cosmetics and Skincare” on the other) and informs the user that the Domain Name is for sale. The website, however, does not contain any indication that the Respondent offered or intended to offer goods or services by using the Domain Name. It is apparent that the main purpose of the website is to indicate that the website is for sale.
Hence, the Panel finds that the Respondent’s default to refute the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the Domain Name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the domain name in bad faith. The Complainant here claims that the circumstances indicate that the Respondent registered the Domain Name primarily for the purpose of trafficking in the Domain Name by selling the Domain Name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
Paragraph 4(b)(i) of the Policy sets forth the following criteria:
“circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name”.
The Complainant has brought evidence that its SHISEIDO trademarks have been registered long before the Respondent registered the Domain Name. The Complainant’s SHISEIDO trademark is known to consumers in general worldwide, so that the Panel accepts the Complainant’s contention that the SHISEIDO trademark is among the most famous trademarks in the cosmetics, toiletries and beauty industry and enjoys widespread international recognition.
It is therefore inconceivable that the Respondent was unaware of the SHISEIDO trademark when it registered the Domain Name
Accordingly, in its response, the Respondent actually does not claim that it was unaware of the Complainant’s SHISEIDO trademark.
The Respondent here is in the business of reselling domain names.
According to paragraph 2 of the Policy, it lies in the registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights. Especially professional domain resellers must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches (see e.g. The Law Society v. RareNames WebReg / Rarenames, Inc., WIPO Case No. D2009-0720).
In the affidavit submitted with the Response the Respondent claimed that it registers domain names that become eligible for registration through expiration and deletion, and that it efforts to register only those domain names that are comprised of descriptive or generic English and non-English words. But the Response does not indicate what steps, if any, the Respondent takes in good faith to avoid registering, using, and selling domain names that correspond to trademarks.
With regard to the name Shiseido the Respondent refers to the Complainant’s website and quotes: “‘SHISEIDO’ comes from Chinese Yi Jing, the Book of Changes from the Four Books and Five Classics of Confucianism […]”. Even if the quotation shows that “shiseido” is not a fantasy word, it does not, however, give evidence for the fact that the word “shiseido” is a generic or descriptive phrase, and that the word “shiseido” is commonly used – other than for designating the Complainant’s company name – in the current language.
Further, the Panel especially takes into account Annex 18 of the Complaint, showing that the Respondent’s offer to sell the Domain Name was accompanied by an offer for selling and . The “available shiseido-related” domain names offered by the Respondent suggest use of the collectively offered domain names, including the Domain Name, in the field of the cosmetics, toiletries and beauty industry, thus showing the Respondent’s intention to sell the Domain Name to the Complainant or to a competitor of the Complainant.
For all of the above, the Panel finds that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(b)(i) of the Policy and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.