WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins Case No. D2008-1408 1. The Parties
The Complainant is Tokyu Corporation, Tokyo, Japan, represented by Abe, Ikubo & Katayama, Japan.
The Respondent is WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with W Internet Services GmbH d/b/a . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2008. On September 16, 2008, the Center transmitted by email to W Internet Services GmbH d/b/a a request for registrar verification in connection with the disputed domain name. On September 23, 2008, the Respondent sent an email correspondence to the Center indicating its willingness to transfer the disputed domain name to “whichever registrar or contact the Complainant will specify”. On September 30, 2008, W Internet Services GmbH d/b/a transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. It also indicated to the Center that the Respondent “isn't interested to hold the domain anymore. Please send us the details to process the ownerchange.”
On September 30, 2008, the Center notified the parties that they might consider suspending the proceedings to explore a settlement. The Complainant instructed the Center on October 3, 2008 to proceed with the Complaint. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on November 5, 2008.
The Center appointed Haig Oghigian, Masato Dogauchi and Brigitte Joppich as panelists in this matter on December 5, 2008. The Panel finds that it was properly constituted. Each member of 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 owns nine trademark registrations in the Japan Patent Office for the TOKYU mark. The Complainant and member companies of the TOKYU group (to which the Complainant is the core member) own a total of 98 trademark registrations and pending registrations in the Japan Patent Office for various combinations of the TOKYU mark.
The disputed domain name was registered by the Respondent on May 7, 2007. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Tokyu group, to which the Complainant is the core member, has a total of 287 companies and nine judicial persons. The history of the group goes back as far as 1922. The Tokyu group is involved in a wide range of industries including transportation, real estate, retail, leisure, and hotels.
The disputed domain name is identical to its registered mark.
The disputed domain name has been registered by the Complainant since March 2000 for its Internet reservation system for the Tokyu hotel chain. However, the Complainant missed the renewal deadline of March 3, 2007 due to communication delays. As a result of the Respondent's acquisition of the disputed domain name, the Internet reservation system became inoperational.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was registered in bad faith because: (i) the disputed domain name was already being used by the Complainant for seven years and within the short period of the delay in its renewal process, it was registered by the Respondent, thus the selection of the disputed domain name could not have been fortuitous; (ii) the Complainant's trademark is very famous within and outside of Japan, and it is not a generic name, which implies that the Respondent could not have been unaware of the Complainant's name; (iii) the Respondent is using the reputation of the Complainant's trademark to attract visitors to its websites; and (iv) bad faith is further evidenced by the message “if you are interested in a possible purchase of this domain or would like to contact the owner, please fill in the following information and submit your message” in the contact column of the website at the disputed domain name.
The Complainant requested the Panel to decide that Japanese be the language of the proceedings in this case, or find that the Complainant be permitted to submit documents or assertions in Japanese. B. Respondent
The Respondent did not submit a formal response to the Complainant's contentions. It has offered to transfer the disputed domain name to the Complainant through several email correspondences. The Complainant rejected the Respondent's offers to settle. Through an email correspondence dated December 15, 2008, the Respondent asked the Center to take control of the disputed domain name and indicated the Auth Code and settings of the disputed domain name. 6. Discussion and Findings A. Language of the Proceeding
Rule 11(a) provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rule, however, provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
While the language of the Registration Agreement is German, correspondences and notifications between the Center and the parties were in Japanese, German, and English. The Complaint was drafted in Japanese with English summary. Correspondences between the parties were in English.
In consideration of the particular circumstances of this proceeding, there is evidence demonstrating the Complainant's ability to comprehend English and the Respondent has corresponded in English without any difficulty, the Panel therefore exercises its discretion under Rule 11(a) and determines that the language of this proceeding shall be English (see Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679; Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,WIPO Case No. D2003-0989). B. Discussions and Findings
The question here is the proper course of action for the Panel when faced with a unilateral consent to transfer, and in particular whether a unilateral consent to transfer justifies an order to transfer the disputed domain name without any finding that the three UDRP paragraph 4(a) elements exist, or whether, notwithstanding the consent, the Panel must be satisfied that the UDRP paragraph 4(a) elements are proven.
The treatment of a unilateral consent to transfer was considered in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 where it was stated:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer “deems” proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see, Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207).”
The Panel in the present case finds that there is a genuine unilateral consent to transfer by the Respondent. Following the reasoning in The Cartoon Network LP, LLLP v. Mike Morgan, supra, the Panel orders an immediate transfer pursuant to paragraph 10 of the Rules. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Haig Oghigian
Presiding Panelist
Masato Dogauchi
Panelist
Brigitte Joppich
Panelist
Dated: January 15, 2009
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