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Foregoing Analysis When Respondent Offers to Transfer Domain Name

In Benchmark Brands, Inc. v. Sky Blue Marketing, FA1006001331227 (Nat. Arb. Forum July 23, 2010) the Respondent admitted that there was “no dispute over the domain names complained about and they have already offered to transfer the names.” The Panel concluded that all it needed to do was “state its basic finding on these issues. Indeed these basic findings give it the jurisdiction to order transfer of the Domain Names under the Policy.” This is true, but Rule 17(a) addresses only mutual agreement. It reads: “If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” More typically the respondent pleads nolo contendere (as in Benchmark Brands) and agrees to relinquish its registration. But, in Benchmark Brands there is no indication that the Complainant has stipulated to termination without a finding of bad faith.

A unilateral consent raises a challenging issue as to the respondent’s motivation and how to assess it. The Panel in The Cartoon Network LP, LLLP v. Mike Morgan, D2005-1132 (WIPO January 5, 2006) identified at least three possible courses of action for the unilateral consent:

(i) to grant the relief requested by the complainant on the grounds of the respondent’s consent without reviewing the facts supporting the claim;
(ii) to find that consent to transfer means that the three elements of Paragraph 4(a) of the Policy are deemed to be made out and thereby reach the conclusion that transfer should be ordered and
(iii) to proceed to consider whether, on the evidence, the three elements of Paragraph 4(a) of the Policy are satisfied because the respondent’s offer to transfer is not an admission of the complainant’s right.

Whether to accept respondent’s consent even in the face of the complainant’s refusal to stipulate depends upon the genuineness of the offer. In The Cartoon Network the Panel concluded that the Respondent’s offer was genuine and that such unilateral consent “provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.” Termination benefits the respondent because it does not constitute an admission of bad faith. The consent in fact may be accompanied by a strong denial of any violation, “for example, where a domain name was registered in error.”

A decision to terminate is questionable where there is a credible basis for concluding that the consent is offered to avoid a holding of bad faith. Indeed, for some respondents the purpose in consenting to transfer is to avoid a finding that it has violated the Policy. In this event, panelists view the offer more skeptically. For example, in Messe Frankfurt GmbH v. Texas International Property Associates, D2008-0375 (April 29, 2008) in which the Respondent has been found by prior Panels to be a serial cybersquatter in violation of paragraph 4(b) of the Policy with over a hundred claims against it. The Panel in rejecting the Respondent’s request to terminate the proceedings without a decision, stated:

[I]n cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments.

Foregoing the “lengthy traditional UDRP analysis and order[ing] an immediate transfer of the Disputed Domain Names” is to give the respondent a pass. In Benchmark Brands there is no question that the Respondent intentionally registered the disputed domain names, <footsnart.com> and <gootsmart.com>. The names are simply typographic variants of the trademark FOOTSMART and the registration is a clear case of typosquatting. The conduct should have been called for what it is as did another Panel involving the same Complainant decided the same date, Benchmark Brands, Inc. v. Anunet Pvt Ltd c/o Jyoti Mehta, FA1006001331154 (Nat. Arb. Forum July 23, 2010). Typosquatting is not an innocent registration for which the “lengthy traditional UDRP analysis” should be discarded.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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