WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Google Inc. v. Herit Shah Case No. D2009-0405 1. The Parties
The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Herit Shah of Gujarat, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2009. On March 27, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 27, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 31, 2009. The Center verified that the Complaint together with the amendment to 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 April 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 1, 2009. The Panel finds that it was properly constituted. 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.
On May 2, 2009, the Center received an email from the Respondent which is set out in full later in this Decision, the thrust of which was to agree to transfer of the domain name to the Complainant. 4. Factual Background
1. The Complainant primarily provides a free Internet search engine at “.”
2. The Complainant has used the trademark GOOGLE since the inception of its business in 1997.
3. The Complainant has used the name “GOOG” as a NASDAQ financial stock ticker since 2004.
4. The Respondent registered the disputed domain name on September 25, 2008.
5. Pre-Complaint correspondence between the parties failed to resolve the dispute.
6. The Complainant petitions the Panel to issue a decision that the disputed domain name be transferred from the Respondent to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts trademark rights and states that the disputed domain name is confusingly similar to its trademarks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions.
However on May 2, 2009, after commencement of this administrative proceeding and after appointment of the Panel, the Respondent wrote to the Center in the following terms:
I was in a bad faith that i can legally keep the domain but when i kept myself in the place of google i understood i really did very unfair to google. since two weeks i have been trying to delete the domain , but i am unable to because godaddy has put my domain on hold, on your consent godaddy may delete the domain or unhold it. I sincerely apologise to Google for infringement, misuse of their intellectual property (GOOGBLOG.COM). 6. Discussion and Findings Preliminary Procedural Issue: Consent to Transfer
An issue arises as to whether the Panel should make findings as to the elements of this case under the Policy given that the Complainant calls for transfer of the disputed domain name and the Respondent answers that call.
In the case of Disney Enterprises, Inc. v. Elmer Morales, NAF Claim No. FA 475191 (June 24, 2005), it was said that “where Respondent has agreed to comply with Complainant's request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”
In Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. FA 212653 (January 13, 2004) the panel decided that “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.” See also Boehringer Ingelheim International GmbH v. Modern Limited – Cayman Web Development, NAF Claim No. FA 133625 (January 9, 2003).
By way of contrast, in Graebel Van Lines, Inc. v. Texas International Property Associates – NA NA, NAF Claim No. FA 1195954 (July 17, 2008), the panel stated that:
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
and in Barrow Industries Inc. v. Texas International Property Associates – NA NA, NAF Claim No. FA0812001239732 it was noted that “[n]o doubt there are special cases of abusive registration where that approach is justified”.
Paragraph 10 of the Rules sets out the general powers of the Panel. Paragraph 10(a) states that the “Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” and Paragraph 10(c) states that the “Panel shall ensure that the administrative proceeding takes place with due expedition.”
It has been argued that “due expedition” means that a panel should not diffuse its energy on matters which do not require a decision. It has also been argued that consent-to-transfer requests should not mask the activities of serial cybersquatters.
In this case the Panel observes an unexplained inconsistency between the sophisticated language with which the Respondent rebuffed the pre-Complaint letter of demand which included a suggestion from the Respondent for negotiation of a co-existence agreement between the parties, and the perhaps questionable May 2, 2009 email from the Respondent in which it apparently sees the error in its action, apologises for its mistake and consents to the transfer of the disputed domain name to the Complainant.
Nonetheless, the Complainant does not allege that the Respondent has habitually abused third party trademark rights and the inconsistency of the Respondent's position alone does not in the Panel's opinion justify a finding as to the Policy elements. The Panel takes the view in this case that the consent-to-transfer request replaces the need to assess the matter under the elements of the Policy. 7. Decision
For the foregoing reasons the Panel orders that the domain name, be transferred to the Complainant.
signature
Debrett G. Lyons
Sole Panelist
Dated: May 15, 2009
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