WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Maxim Healthcare Services, Inc. v. VistaPrint Technologies Ltd Case No. D2009-1168 1. The Parties
Complainant is Maxim Healthcare Services, Inc. of Columbia, Maryland, United States of America, represented by Chernow Katz, LLC, United States.
Respondent is VistaPrint Technologies Ltd, of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Lexington, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2009. On September 3, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On September 3, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2009. The Response was filed with the Center on September 28, 2009.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on October 6, 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. 4. Factual Background
Complainant owns various trademarks registered in the United States of America, including United States Registration Number 2571110 in International Class 35 for the word drawing MAXIM STAFFING SOLUTIONS, registered May 21, 2002, and United States Registration Number 3475599 in International Class 35 for the word plus device mark MAXIM STAFFING SOLUTIONS ADMINISTRATIVE STAFFING, registered July 29, 2008.
The disputed domain name was registered August 21, 2009, and presently redirects to Respondent's e-commerce home page, which offers printing and business office products. 5. Parties' Contentions A. Complainant
Complainant alleges that it is a healthcare service provider with numerous locations throughout the United States. Complainant avers that the company was established in 1988 under the name Medcall Medical Staffing, and that Complainant adopted the name Maxim Healthcare Services, Inc. in 1992. Complainant describes its business as that of providing medical staff, including nursing professionals, physicians, social workers and sitting companions, and also providing wellness services including immunizations and exams.
Under the Policy, Complainant alleges in detail that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interest in respect of the domain name; and that the domain name was registered and is being used in bad faith.
In support of its petition, Complainant attaches screen shots of the website to which the disputed domain name appears to have routed on September 2, 2009. The screen shots show pages that prominently display Complainant's company name, advises customers to check back for updates, and an electronic contact form.
Complainant seeks cancellation of the disputed domain name. B. Respondent
In its response, Respondent explains that it is in the business of providing international printed and electronic services for small business customers, including web hosting and domain name registration. As a part of that service, Respondent avers, a customer may through an automated process cause Respondent's system to apply for registration of a domain name chosen by the customer, based upon the customer's representation that such registration will not infringe rights of third parties. Respondent appears to believe that the customer implementing registration of the disputed domain name did so in bad faith, in apparent violation of the United States trademark rights of Complainant.
Respondent therefore concedes that the disputed domain name is confusingly similar to trademarks of Complainant, and that the disputed domain name was registered in bad faith. Respondent does not directly address whether Respondent has legitimate rights or interests in the disputed domain name.
Respondent states that it “does not object” to transfer of the disputed domain name to Complainant. 6. Discussion and Findings
The Rules require the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Ordinarily, a complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Since Respondent has unilaterally consented to transfer, however, the Panel will proceed to consider whether it is necessary to analyze whether Complainant has met its burden under the Policy paragraph 4(a). A. A Respondent's Unilateral Consent to Transfer
It is not uncommon in UDRP cases for respondents to consent to transfer of domain names. When the panel believes it appropriate and both parties agree, a panel may grant transfer, and in many cases does so without reaching the merits of the case. See, e.g., The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 (where complainant seeks transfer of the disputed domain name, and respondent consents to transfer, paragraph 10 of the Rules permits a panel to proceed immediately to make order for transfer without determination of elements of paragraph 4(a)), citing Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207).
The panel in Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster,WIPO Case No. D2007-1800 described the situation as follows:
“[P]anels, when faced with a ‘unilateral consent to transfer,' have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. [Williams Sonoma, supra]; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer 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. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745.”
Whether a panel should elect to grant transfer upon the unilateral consent of a respondent without proceeding to the merits often raises the question of the potential future impact of a panel decision on later UDRP cases involving the same respondents. Some respondents that register large numbers of domain names take the approach of consenting to transfer at the eleventh hour, after a UDRP case is filed, apparently to avoid creating a record which might be unfavorable under the Policy. See, e.g., NBC Universal, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0862 (this Panel granted transfer without reaching merits in the interests of due expedition, where the respondent consented to transfer and sought to avoid a finding on the merits). In the face of consent to transfer, some panels have nonetheless insisted on making findings under each element of paragraph 4(a) of the Rules, to ensure that bad faith conduct is documented in appropriate cases. E.g., President and Fellows of Harvard College v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0597.
Examination of the growing body of “consent to transfer” cases demonstrates that panel approaches to the issue are highly fact sensitive. For example, in the recent “consent to transfer” decision Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, the learned panelist concluded that a full determination on the merits was necessary, even though the respondent consented to transfer. Among other things, the panel felt that a transfer by consent without full analysis of the complainant's entitlement under the Policy might risk transfer of a domain name to a complainant that lacked any trademark rights relative to the disputed name.
In this case, Complainant has not applied for transfer and instead seeks the much less common remedy of cancellation. Therefore, there is no possibility that the granting of the requested remedy would preclude a third party with possibly legitimate rights from registering the same name in the future.
Respondent has expressly conceded that at least two of the three required tests under paragraph 4(a) of the Policy are met (confusing similarity to a registered trademark and bad faith registration and use). Furthermore, Respondent states that its customer represented that the registration of the disputed domain name would not infringe the rights of third parties. Respondent now concedes that the customer's representation, upon which Respondent relied in making the registration, was incorrect. The Panel also finds it relevant that Respondent does not appear to have a record of cybersquatting, which renders it less likely that Respondent is consenting simply to avoid a black mark on its record.1
Under the circumstances, therefore, the Panel is comfortable reaching a decision respecting cancellation without a close analysis of the three elements of paragraph 4(a) of the Policy. B. Cancellation as Proper Remedy
As noted above, Respondent consented to transfer, although not specifically to cancellation. Whether the Panel may grant Complainant's chosen remedy on the basis that the parties are somewhat in agreement about the case depends in part on the authority of the Panel under the Policy and considerations of efficiency.
In the Williams Sonoma consent to transfer case supra, the panel discussed the authority of a panel and the need for efficiency in UDRP proceedings:
“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to ‘ensure that the proceeding takes place with due expedition.' Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement.”
In conclusion, the panel in Williams-Sonoma decided to avoid the delay and unnecessary cost of requesting further submissions and instead granted the transfer remedy requested by the complainant.
The Panel in this proceeding has considered requesting further submissions, since Respondent consented to transfer while Complainant instead sought cancellation. Under the circumstances, however, it appears to the Panel that proceeding to a decision without requiring further submissions will best serve the interests of the Policy, including fairness to the parties and efficiency.
Through its written consent and in light of the factual circumstances described in its Response, Respondent appears to have no further interest in the disputed domain name. The remedy of cancellation is generally viewed as a less substantial remedy than transfer -- and often today a less effective remedy, due to the risk of “snapping up” -- since it typically results in making the name available again for registration by any party. 2 The Panel is inclined, therefore, to conclude that the delay and cost of additional submissions is unnecessary. The Panel has concluded instead to treat Respondent's consent to transfer as consent to cancellation of the disputed domain name.
In view of the circumstances, the Panel's authority under the Policy, and in the interests of due expedition, the Panel finds that the disputed domain name may be cancelled without determination of the elements of paragraph 4(a). Cf. Williams Sonoma, supra; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Nutri/System IPHC, Inc. v. Jeffrey Goebel,WIPO Case No. D2008-0471. 3 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 cancelled.
Jeffrey D. Steinhardt
Sole Panelist
Dated: October 20, 2009
Full & Egal Universal Law Academy