Complainant is Blue Pacific Flavors & Fragrances Inc. of City of Industry, California, United States of America, represented by Cohen IP Law Group, P.C., United States of America.
Respondent is Abdul Hafeez of Pechs, Karachi Sind, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2014, the Registrar 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 November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. Respondent and its client submitted email communications to the Center on November 7, 11, 12, and 28, 2014, on December 9, 2014, and on January 1, 2015. The correspondence is discussed below.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on December 24, 2014. 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 is an industry leader in food and beverage flavoring and is owner of United States Trademark Registrations Nos. 2450886 and 2608457 for combined marks with the words BLUE PACIFIC FLAVORS & FRAGRANCES, INC.
The disputed domain name was registered on May 22, 2013 and no longer routes to an active website. 5. Parties' Contentions A. Complainant
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant's trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy. On the above grounds, Complainant requests transfer of the disputed domain name.
In light of the grounds for decision in this proceeding, as explained below, the Panel finds it unnecessary to recite Complainant's factual averments. B. Respondent
Respondent did not file a formal Response to Complainant's contentions, however the Center received several communications.
On November 7, 2014, Respondent explained that it arranged the disputed domain name registration as a service to one of its clients, an individual that had registered a company with the Pakistani commercial authorities. Other emails which referred to the Pakistani commercial registration of the client of Respondent were sent by Respondent on November 5, 2014, to the Registrar.
In email to the Center, Respondent stated it had no interest in disputing Complainant's claim and had changed the company owner's website to another domain name, refunding the fees it had charged for registration and hosting. On November 11, 2014, Respondent sent a brief further email to the Center explaining that it had limited facility in English, had no legal advisor, and would be unable to provide a proper response. On November 12, 2014, Respondent sent a further email explaining that Respondent did not engage in fraud and used its own email contact information for transfers, registrations and changes of websites for its clients. On November 28, 2014, the client emailed the Center to state that its advisor was occupied, and requested an extension of time to permit counsel time to respond.
Finally, on December 9, 2014, Respondent's client responded more fully. It explained that the registration of the disputed domain name was a mistake of its web developer, and that it was now using a new domain name, . The client's email stated that before commencing business, as of 2008, the client had duly taken steps with the Pakistan trademark and copyright registry. The email closed with, "We sincerely hope that our above explanations would address the issue." 6. Discussion and Findings A. Further Communications in this Proceeding
After reviewing Respondent's December 9, 2014 statement that registration of the disputed domain name was a "mistake" which "has now been rectified" by changing to another domain name, the Panel requested the Center to contact Respondent, which it did on January 14, 2015.
The Center's communication stated: "In light of the disclosures made by the Respondent, the Panel requests the Respondent to confirm, by January 19, 2015, whether it consents to the transfer of the disputed domain name." Respondent's client reiterated its prior statement by email on January 16, 2015, stating "we r repled on 9th dec.2014 and now i re sending the last email pls check thanks". The email also reproduced the email of December 9, 2014 described above. B. Substantive Rules of Decision
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). Paragraph 4(a) of the Rules lists the elements that complainants must prove to establish their claims.
Paragraph10(a) of the Rules gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules, and under paragraph 10(c) of the Rules, the Panel must "ensure that the proceeding takes place with due expedition". C. Respondent's Consent to Transfer
The Panel finds that Respondent has consented to transfer of the disputed domain name, as explained below.
Through the Center's email communication of January 14, 2015, the Panel sought confirmation of Respondent's prior communications respecting the disputed domain name. Among these were Respondent's statements that it did not wish to dispute Complainant's claim.
In response, there were further assurances that Respondent had no more interest, having abandoned the disputed domain name and using another domain name instead, now in the ".pk" country code top-level domain. The repeated characterization of Respondent's disputed domain name registration was as a "mistake", which has now been "rectified".
Under the circumstances of this case, the Panel interprets in the affirmative, the reaction to the request to confirm whether Respondent consented to transfer. Bearing in mind, among other things, that Respondent has both referred to and demonstrated a limited facility in English (the language of the proceeding), the Panel feels that it is reasonable to find that Respondent has consented. The Panel is comfortable in making this finding even though Respondent has not signified its consent through invoking the precise words, "I hereby unilaterally and unequivocally consent to transfer." D. Ordering Transfer without Consideration of all Elements Under Paragraph 4(a) of the Policy
The Panel concludes that Respondent's consent provides a basis for an immediate order for transfer.
Where Complainant has sought transfer of a disputed domain name, and Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can order transfer, and it is unnecessary for the Panel to determine whether Complainant has established its entitlement to transfer under paragraph 4(a) of the Policy. E.g., The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 (where complainant sought transfer of the disputed domain name, and Respondent consented to transfer, paragraph 10 of the Rules permit 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. See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.13.
This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, supra).1 The concept of restraint also supports avoiding unnecessarily reaching a decision under all elements of the Policy, particularly since these same parties (or related parties) may face other proceedings involving their respective domain names, trademarks and branding rights. 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 Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: January 21, 2015
1 The Panel has reservations whether the rule in the cited decisions should apply in the absence of a minimal showing that a complainant possesses relevant trademark rights. In any event, since Complainant in this proceeding has the requisite trademark rights, the Panel need not reach such a determination.
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