The Complainant is Jacob & Company Watches, Inc. of New York, New York United States of America, represented by Etude de Me Philippe Azzola, Switzerland.
The Respondent is Yuji Kawano, whogot, inc of Fukuoka-Shi, Japan / Whois Privacy Protection Service by MuuMuuDomain of Fukuoka-shi, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. At the same time the Center notified the Complainant that the Language of the registration was Japanese. On December 20, 2012, the Complainant requested an extension to the due date for filing any amendments and language request. On January 9, 2013, the Complainant filed an amended Complaint with request confirming its request for English to be the language of the administrative proceedings. The Respondent did not respond to the Language of Proceeding Notification.
The Center verified that the amended 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 January 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013. The Respondent submitted a response on January 29, 2013. In the Response the Respondent stated “The domain is currently inactive. If Complainant wishes to do so, the domain can be transferred.” On January 31, 2013, the Complainant requested the proceedings be suspended to allow for the parties to seek to resolve the matter directly. The proceedings were suspended until March 1, 2013. A further one months extension was requested and an extension was given until March 30, 2013. It was not possible to settle the matter between the parties and on March 18, 2013 the Complainant asked that the proceedings be reinstated. The proceedings were reinstated.
The Center appointed Douglas Clark as the sole panelist in this matter on April 11, 2013. 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 holds the registration of the trademark JACOB & CO in class 14 in numerous countries including Japan.
The Respondent registered the disputed domain name on June 25, 2008. Prior to the submission of the Complaint the website at the disputed domain name resolved to featured the Complainant’s JACOB & CO trademark as well as a stylized J & Co trademark used by the Complainant. In Japanese, the site states it is a Jacob & Co exclusive dealer. 5. Parties’ Contentions A. Complainant
The Complainant contended that the disputed domain name is identical or confusingly similar to its registered trademark JACOB & CO; and that the Respondent had no rights or legitimate interests in the disputed domain name as there is no relationship between the Complainant and the Respondent nor has the Complainant given any authorization to the Respondent to use the Complainant’s trademark; 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 transfer the disputed domain name. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement is in Japanese. 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 Complaint was filed in English. In the Complaint the Complainant requested English be the language of proceedings or that the Complainant be allowed to file in English and the Respondent respond in Japanese. The Respondent filed its Response in English. On this basis the Panel determines that English be the language of the proceedings. 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).”
This Panel considered this issue in detail in Rockwool International A/S v. Lin Chengxiong,WIPO Case No. D2012-0472 and found that it 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 Panel will not repeat its reasoning here.
In this case the Respondent has given its unambiguous consent to transfer and accordingly the Panel will order that the domain name be transferred. 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
Date: April 28, 2013
Full & Egal Universal Law Academy