The Complainant is Rockwool International A/S of Hedehusene, Denmark, represented internally.
The Respondent is Lin Chengxiong of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 9, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On March 12, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 12, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date. On March 13, 14 and 15, 2012, the Center received email communications from the Complainant and the Respondent regarding possible resolution of this matter.
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 March 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2012. The Center received the Respondent's email communication of March 24, 2012. The Respondent did not submit a formal response. Accordingly, the Center notified the parties of the proceeding status update on April 10, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on April 25, 2012. 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
The Complainant is a Danish company that deals in building supplies. It has registrations around the world, including in China for the trademark ROCKWOOL in classes 17 and 19.
The Respondent seems to be an individual based in China. The registrant information for the disputed domain name lists the registrant’s organization as Xiamen Xinroad Industry. The contact details given are also those of Xiamen Sinroad Industry and Trade Co., Ltd. This contact details appear to be legitimate and Sinroad (or Xinroad) appears to deal in building supplies.
The disputed domain name was registered on December 20, 2011. The disputed domain name resolved to a page advertising Xiamen Sinroad Industry and Trade Co., Ltd. On that page, reference was made to Sinroad’s dealing, amongst other things, in “rock wool” products.
The Complainant sent two letters to the Respondent in February 2011 requesting the disputed domain name be cancelled. The Respondent did not reply and these proceedings were commenced.
After these proceedings were served, Xiamen Sinroad (from the registered email contact address) wrote to the Complainant stating “We have notified the company to cancel the domain registration”. The Complainant responded that they now wished to have the disputed domain name transferred to them. The Respondent replied they had registered the disputed domain name through another company. They could only cancel it. For other matters, the registrar should be contacted. In a subsequent email, the Respondent further stated that it had stopped the website construction, but for the issue of the disputed domain name, the Registrar should be contacted as it is not related to the Respondent. The Complainant requested the Complaint proceed because the Respondent had not contacted them to arrange for a voluntary transfer. 5. Parties’ Contentions A. Complainant
The Complainant contended that the disputed domain name was identical or confusingly similar to its registered trademark ROCKWOOL; that the Respondent had no rights or legitimate interests and that the disputed domain name had been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions with regard to the registration and use of the disputed domain name other than to state they were willing to cancel the disputed domain name. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceedings be in English on the grounds that the Respondent is familiar with English because the disputed domain name resolves to a web page in English. The Respondent has communicated in these proceedings in English. In those circumstances, the Panel determines that the language of these proceedings be English. B. Consent to Transfer
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
As can be seen, there is, in fact no clear consensus as to the approach to be taken. This Panel has considered and is particularly mindful of the view of the very experienced panelist in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, who concluded: “Having reviewed these decisions and the Policy and the Rules, the Panel is of the view that it is not open to him to order transfer without consideration of the merits.”
Nevertheless, this Panel prefers the view in the first sentence of paragraph 4.13 that unambiguous consent is sufficient for a panel to order transfer or cancellation. The purpose of the UDRP is to resolve disputes – it is a “dispute resolution policy”. If the parties are in agreement as to how to resolve their dispute, panels should facilitate it.
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
This rule gives panels very broad powers to decide the complaint. A statement by the Respondent that it agrees to cancel the disputed domain name is, in this Panel’s view, sufficient to allow the Panel to decide the Complaint. The Panel does not consider it necessary to treat such a statement as an admission or “deemed admission”. Parties should be free to choose to resolve cases. A Respondent may, for example, consider it has a good defence under the UDRP, but not under domestic law. They may just not consider the case worth fighting. There are many reasons why consent to transfer or cancellation could be given that are not based on an admission of liability under the UDRP.
Further, to follow the principle in the Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, supra., that a panel must proceed to a decision could lead to the situation that despite the consent of the Respondent to cancel a domain name, the panel deciding the case could, if it is not satisfied that the three elements of the Policy have been made out, have to reject the Complaint. This would mean the panel is, potentially, creating a dispute where none exists. This cannot be the purpose of a “dispute resolution policy”. Indeed, the Panel considers that it is a general principle of law in all countries of the world that courts and other dispute resolution bodies should take steps to resolve disputes and not create them.
The Panel does note, however, that it agrees with the views expressed in the decision John Bowers QC v. Tom Keogan,WIPO Case No. D2008-1720:
“There may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession. It is clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant.
In this case, the Panel does not consider it appropriate to address the merits. Whether or not the Domain Name contravenes the Policy - as to which the Panel makes no finding - there is no reason to suppose that the Respondent will make abusive registrations of other domain names in the future.”
In the case before it, the Panel has reached an identical conclusion. From the evidence before the Panel there appears to be no reason to make any public finding regarding the Respondent. The domain name was registered with full contact details and no attempt was made to hide the nature of the Respondent’s business. This is not a case of cybersquatting. This does not mean the Respondent would have prevailed. The Respondent has made what appears to be a commercial decision to seek to settle the matter. The fact that it did not succeed in settling the case without the Panel rendering a decision seems to be a result of miscommunication and, perhaps, a lack of knowledge of domain name procedures.
There is, therefore, no need to address the merits. The Respondent has unequivocally in response to the Complaint said that it will cancel the disputed domain name. The only question the Panel has to determine is whether to cancel or transfer the disputed domain name. The original relief sought by the Complainant in its warning letters was cancellation. The Respondent has now agreed to this. The Complainant has, however, been put to the expense of bringing these proceedings and in these proceedings, it has sought the transfer of the disputed domain name. The Respondent has indicated that it has no objection to a transfer but has not unequivocably stated that it consents to a transfer (although they have stated the disputed domain name “does not matter” to them). In the circumstances of this case, the Panel considers that transfer is the appropriate order. The Complainant has established its standing to bring the case and its rights in the ROCKWOOL trademark. If the disputed domain name is cancelled the Complainant will be put to the expense of registering the disputed domain name itself or face the risk of the disputed domain name being registered by another. The Panel takes notice in this regard that many companies are in the business of registering recently expired domain names in order to monetize them. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: May 9, 2012
Full & Egal Universal Law Academy