Seagate Technology LLC v. Whois Agent / Whois Privacy Protection Service, Inc.
Claim Number: FA1203001432711
Complainant is Seagate Technology LLC (“Complainant”), represented by Richard Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Whois Agent / Whois Privacy Protection Service, Inc. (“Respondent”), represented by Gary Hammock of Profile Group, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seagate.org>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 5, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <seagate.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@seagate.org. Also on March 8, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 29, 2012.
On April 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has registered the SEAGATE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,269,032 registered March 6, 1984) and in addition holds various foreign trademarks in SEAGATE. The disputed domain name is identical to Complainant’s SEAGATE mark and Respondent’s domain name resolves to a pay-per-click website offering links to third-party businesses, some of which compete with Complainant.
Complainant claims and gives support for the propositions that Respondent lacks rights and legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent contends as follows:
Respondent registered the disputed domain name in good faith because its business does not register domain names containing third-party marks;
Respondent consents to transfer the disputed domain name to Complainant.
Complainant demonstrates that it has had trademark rights in SEAGATE at all times relevant to this proceeding including a time prior to the at-issue domain name’s initital registration.
Respondent consents to transfer the domain name to Complainant.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Notwithstanding Policy Paragraph 4(a), Rules Paragraph 15(a) permits a panel to summarily grant a complainant’s requested relief without deference to Paragraph 4(a)ii or 4(a)iii when a respondent consents to such relief. That a Panel may deviate from the normal requirements of Paragraph 4(a) under certain circumstances is wholly logical. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
As a prerequisite to obtaining the relief requested even where, as here, Respondent consents to such relief, Complainant must at least demonstrate that it has rights in the at-issue domain name under Policy ¶4(a)(i). Since <seagate.org> is clearly identical to Complainant’s registered trademarks, except for the inconsequential gTLD, Complainant has satisfied this prerequisite. It is thus outcome determinative that Respondent unequivocally agrees in his response to transfer the at‑issue domain names to Complainant. Given the foregoing and as discussed below, this Panel sees no basis warranting further substantive analysis under Paragraph 4(a)ii and/or 4(a)iii.
When a respondent consents to transferring its domain name, judicial economy dictates that the panel should simply proceed to grant Complainant’s requested relief in recognition that there is no dispute between the parties regarding the at-issue domain name’s ultimate disposition. The Panel’s position here is analogous to the situation where a complainant withdraws its complaint. In that case there obviously is no basis for a panel to issue a decision on the merits. Similarly, a domain name registrant may not file a UDRP complaint requesting declarative relief concerning a trademark holder or trademark holders.
Some panels disagree that a respondent’s consent to transfer forecloses further analysis under Paragraphs 4(i) and 4(ii) and have urged that even though a respondent agrees to transfer an at-issue domain name, a panel should nonetheless proceed to a decision containing analysis under Paragraph 4(a)ii and/or 4(a)iii. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel states:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
While the Graebel Van Lines panel suggests that allowing a domain name to be transferred by consent without more shields cybersquatters from adverse findings, this Panel respectfully considers such concern to be inappropriate. Rather, the Panel is of the opinion that the UDRP has no business serving a policing function or exposing cybersquatters apart from that which follows in deciding whether or not an at-issue domain name should be transferred from a respondent.
Judicial economy and the purpose of the UDRP to provide an abbreviated low cost process to settle domain name disputes demands the expeditious and economical resolution of such disputes to the extent reasonably possible. A respondent that consents to a complainant’s requested relief allows the parties, the dispute resolution provider, and the Panel, to dispense with having to consume unnecessary time and resources on matters that are superfluous to the dispute’s ultimate outcome. “When a respondent consents to transfer … it serves little purpose to expend the panel's and the parties resources in an exercise which will have no impact on the ultimate outcome of the decision process.” See Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc.D2008-1406 (WIPO December 8, 2008). In Tokyu, like in the instant case, the Respondent’s consent to transfer was unequivocal and express.
Furthermore, having consented to the requested relief a respondent’s submissions will normally offer little or no substantive defense. In such cases it is likely that a response will be less effective in addressing Paragraph 4(a) concerns (if addressed at all) than in the case were a respondent decides to defend its domain name registration on the merits. Conclusions drawn from analysis under Paragraph 4(a)ii and 4(a)iii that is based on the terse response of a respondent who has agreed to transfer its domain name are of dubious validity.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied, or the case dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What amounts to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and that complainant has rights in the at-issue domain name(s), then only under particular circumstance that call into question the validity of the respondent’s consent, or for similar other good cause, might a panel need to proceed to consider the merits of a complaint via further analysis under Paragraph 4(a). Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
The Respondent having consented to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <seagate.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M DeCicco, Panelist
Dated: April 18, 2012
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