There has been a noticeably larger number of cases over the past several months of respondents consenting to cancellation or transfer of accused domain names, the last one published on December 31, Converse Inc. and All Star C.V. v. Parisa Mazari, FA1512001650796 (Forum December 31, 2015). In this particular, and other cases, accepted consents shortcut the traditional UDRP analysis but not all consents are treated equally.
Consents come in (at least) three flavors: unequivocal, equivocal, and strategic, with each tinged with some possible coloration such as begrudging, combative, or explaining it all as an innocent mistake. The strategic consent is illustrated in the Panel’s comment in Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Colours Ltd, FA150600 1625588 (Forum August 3, 2015) that “the ‘consent-to-transfer’ approach is but one way for cybersquatters to avoid adverse findings against them.” Of the strategic flavor the standard was set by numerous complaints against Texas International Property Associates whose consents were uniformly rejected in favor of the traditional UDRP analysis.
Whether Panels proceed or forgo traditional UDRP analysis depends in part on the flavor and color of the consent and in other part on complainant’s response or indifference. The discretionary factors are set forth in Rule 17:
(a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
(b) If, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.
(Although the rule ostensibly concerns “termination of proceedings” it does no violence to stretch it to include consents that shortcut the traditional analysis).
As a general rule complainants have little incentive to “agree on a settlement” once disputes are submitted, since doing so rewards respondents for their strategic decisions to hold onto domain names until the last possible moment. Rather, the incentive is for a ruling on the merits. However, where both parties consent (or even where complainant is indifferent) to foregoing the traditional analysis it is inappropriate for the Panel to do otherwise than “simply make an order for the transfer of the domain name to Complainant.” Williams-Sonoma, Inc. d/b/a Pottery Barn v. EZ-Port, D2000-0207 (WIPO May 5, 2000) (No formal stipulation of settlement, but “[b]ecause Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim”); another regularly cited decision is Disney Enterprises, Inc. v. Elmer Morales, FA0505000475191 (Nat. Arb. Forum June 24, 2005) (“the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
There are three possibilities where respondents consent to complainant’s remedy: a formal settlement (which is rare), complainant objects (more likely, as mostly happened in the Texas International cases), or complainant fails to object or is indifferent (common). It is clear under Rule 17(a) that no purpose is served by going forward with the proceedings where parties have settled their dispute or respondent’s consent is unreserved; there is also no purpose served where the parties have mutually consented to one of the UDRP remedies.
However, where there is no mutual consent or respondent’s consent is equivocal and grudging there is good reason to perform the traditional UDRP analysis. Rule 17(b) subsumes two circumstances, only the second of which is applicable to foregoing the traditional analysis: 1) where respondent consents to a result—illustrating the “unnecessary” to proceed (unless complainant otherwise objects)—or 2) a situation in which the matter is removed from the administrative proceedings following the commencement of an action in a court of competent jurisdiction—illustrating the “impossible ” to proceed.
Equivocal consents are noted by the Panel in Advance Auto Parts, where it found that although Respondent “consents to the remedy requested by the Complainant and agrees to [transfer/ cancel] the disputed domain name(s) on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel. . . the Panel decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.” This illustrates the “objection” provision in Rule 17.
In Pet Plan Ltd v. Marc Castonguay, D2015-2116 (WIPO December 22, 2015) while Respondent “has submitted a brief Response in which he both denies allegations in the Complaint and also consents to the remedy requested by the Complainant . . . [its consent] was not unequivocal …. As such, it is necessary for the Panel to review the facts and arguments, and make a finding based on the merits of the matter under the Policy.” A similar fact pattern is found in Papa John’s International, Inc. v. Keith Hatton / USA24K.com, FA1511001647881 (Forum December 29, 2015) where Respondent expressed truculence while consenting to two of four domain names with a similar result, namely that the Panel proceeded with a full analysis.
In contrast, the Panel notes in Baylor University v. Andy Owens c/o 1800DIALWORD.COM, FA1509001638378 (Forum October 26, 2015) that since the “requests of the parties are identical . . . [it] has as 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.” The Baylor Panel does not indicate whether Complainant “implicitly” agreed, but it can be inferred. In State Farm Mutual Automobile Insurance Company v. John Austin Tatum / TATUM INSURANCE, FA151100 1647380 (Forum December 18, 2015) the Panel held that “where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain name in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <benjaminyoungstatefarm.com> domain name.
Finally, in a rather unusual fact pattern where Respondent claims its identity has been hijacked, and has no connection to or interest in the domain name or the website being operated at the domain name the Converse Panel held that it could forego the traditional analysis:
Such an analysis is not necessary where Complainant has sought the transfer of the domain name and Respondent has consented to the transfer of the domain name, as Respondent has done in the present case. Respondent has used these words in response to the Complaint, of which it had notice: “I consent to the transfer of the domain name to the Complainant.”.Respondent has also given the reasons set out above for consenting to the transfer of the domain name. Those words can be interpreted only as an unequivocal consent by Respondent that the disputed domain name should be transferred to Complainant. As the Panel finds that these are the facts, the Panel also finds that this is an appropriate case to apply the conclusions and reasoning in the [numerous decisions it cites] to the same effect.
None of these cases break new ground; rather, they illustrate one of the routine issues Panels have to decide, and forearms the parties as to what they may expect.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.