Complainant is Mobile Communication Service Inc., doing business as Mobilcom, Meadville, Pennsylvania, United States of America, appearing pro se.
Respondent is WebReg, RN, Washington, DC, United States of America, represented
by Ari Goldberger of the ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mobilcom.com> (the “Domain Name”)
is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2005. On December 19, 2005, the Center transmitted by email to the Registrar a request for registrar verification; on December 21, 2005, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2006. There is no dispute that Respondent received timely notice of the Center’s notification of the commencement of the proceedings.
Respondent did not submit a timely Response. Accordingly, the Center notified Respondent’s default on January 19, 2006.
Later on January 19, 2006, the Center received an email from Respondent’s counsel requesting, under the “exceptional cases” provision of paragraph 5(d) of the Rules, an extension of the deadline by which Respondent would be permitted to submit its Response. Respondent based its request on an alleged clerical error by which it had entered the deadline in its calendar as January 28, 2006, instead of the actual deadline, January 18, 2006. Respondent’s counsel further stated that he would submit a Response “as soon as possible” and requested that the Center grant an extension until January 28, 2006.
The Center acknowledged receipt of Respondent’s counsel’s email communication on Friday, January 20, 2006, and referred Respondent’s request for an extension of the filing deadline to Complainant (because paragraph 5(d) of the Rules permits extensions if agreed to by the parties or the provider). On Monday, January 23, 2006, Complainant informed the Center that it did not consent to Respondent’s request. The Center informed the parties on Tuesday, January 24, 2006, that the Center would proceed to appoint the Panel. The Center also informed Respondent that it should file its submission, but that the decision of whether to accept the Response would remain in the sole discretion of the Panel.
On Friday, January 27, 2006, Respondent submitted a Petition for Consideration of Late-Filed Response, along with a copy of the proposed Response. In its Petition, Respondent repeated the reason for its late filing, claiming that it only learned of the actual deadline on January 19, 2006, when it received the notice of default from the Center. Respondent further claimed that it could not file its submission immediately upon learning of the default because its counsel was engaged in another WIPO filing, which was due on January 25, 2006. Respondent therefore requested that the Panel accept the late-filed Response in the interest of “fairness and substantial justice” pursuant to the Panel’s authority under paragraph 10(c) of the Rules, which allows the Panel to “extend, in exceptional cases, a period of time fixed by these Rules.”
The Center appointed David H. Bernstein as the sole panelist in this matter on January 30, 2006. 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. Because of the complex procedural issue raised by this late-filed Response, the Panel extended the time for decision from February 13, 2006, to February 24, 2006, pursuant to paragraph 10(c) of the Rules.
This procedural history presents the difficult question
of whether Respondent’s late-filed Response should be accepted. This issue
was discussed at some length in 1099 Pro, Inc. v. Convey Compliance Systems,
Inc., WIPO Case No. D2003-0033 (April 1, 2003).
In that case, the three-member Panel (on which this Panelist sat) wrote:
“In the early days of the Policy, some panels
were willing to accept late-filed responses if they were submitted prior to
the appointment of the panel on the theory that the Rules were still relatively
new and some flexibility should be shown, especially when there was no prejudice.
See,e.g., Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 (February 29, 2000). Now, more than three years later,
the Internet community has had a wealth of experience with the Rules, making
it appropriate to revisit this approach.
“On this question, there is a split amongst the Panel. In one Panelist’s view, default proceedings under the Policy should be avoided when it is reasonable to do so, taking into account paragraph 10(b) of the Rules providing that, ‘[t]he Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.’ In this proceeding, since there is no apparent prejudice to Complainant from an initial Response filed on the date of the default notification, followed by an Amended Response one week later, one Panelist would accept the Amended Response.
“The majority, however, believes that it is important to apply the Rules as written, absent a good reason. Otherwise, parties will feel free to disregard deadlines and Respondents will regularly submit late responses. Thus, absent good cause, the majority of the Panel holds that late-filed responses should be disregarded.1”
In the 1099 Pro case, the panel ultimately held that respondent’s
assertion that it did not file its response on time because it was its “busiest
time of our season” was not good cause for missing the deadline. The panel
thus rejected the late-filed responses. Some panels since then have taken a
similar approach. See, e.g., Museum of Science v. Jason Dare, WIPO
Case No. D2004-0614 (October 11, 2004) (rejecting 16-day delay because “[m]any
panels have disregarded late-filed responses making clear that it is important
to apply the Rules as written, absent a good reason, otherwise parties will
feel free to disregard deadlines and [r]espondents will regularly submit late
responses”); Fashiontv.com GmbH v. Chris Olic, WIPO
Case No. D2005-0994 (December 8, 2005) (rejecting response filed two days
late when only cause given was that respondent had “‘difficulties’
in obtaining evidence, without any explanation of what those ‘difficulties’
were”); OMV AG v. SC Mondokommerz SRL, WIPO
Case No. DRO2005-0005 (January 5, 2006) (declining to find exceptional circumstances
where respondent’s excuse for eight-day delay was “the misplacement
of files in the respondent’s archive” and “the need to extensively
research the complex case-law surrounding the subject”).
It has now been another three years, and the Rules governing UDRP proceedings are even more well known.2 This Panel thus reaffirms its view that, absent exceptional circumstances supported by good cause, panels should not accept late-filed responses, even in the absence of prejudice.
Such a showing of good cause is absent in this case. Respondent concedes that it learned of the “clerical error” that led to this late filing on Thursday, January 19, 2006. Although Respondent’s counsel then promised to submit a Response “as soon as possible,” Respondent did not submit a Response until more than a week later, on Friday, January 27, 2006. The only “good cause” offered for this delay was that Respondent’s counsel was working on another UDRP Response, which was due on January 25, 2006.
This Panel is well familiar with the effort required to prepare a response. If need be, a response generally can be prepared and submitted in two or three days, if the exigencies of the circumstances require quick action and the respondent has already gathered the necessary information and evidence.3 That would be particularly true of an experienced practitioner like Respondent’s counsel.4 There is no indication in the record in this case that additional time was needed because Respondent needed more time to gather the relevant evidence; rather, the only reason offered for the requested extension was that Respondent’s counsel was working on another UDRP Response.
For these reasons alone, the Panel would find that
this is not an exceptional case. The record in this case, though, when considered
along with the publicly-available records of other cases, suggests that there
may be a broader issue here. As noted above, paragraphs 5(d) and 10(c) of the
Rules contemplate extensions only in “exceptional” cases. An “exceptional”
case, by its very nature, must be the exception, not the rule.
This Panel is aware, though, of other cases in which Respondent’s counsel
has sought an extension or filed submissions late, allegedly for exceptional
reasons. See, e.g., Advance Magazine Publishers Inc. v. Vanilla Limited/
Domain Finance Ltd./ Minakumari Periasany, WIPO
Case No. D2004-1068 (April 18, 2005). In an effort to quantify the extent
of this practice, the Panel has used the WIPO Search Tool (which is available
at the WIPO website at http://www.wipo.int/amc/en/domains/search/index.html) to
identify all WIPO cases in which Respondent’s counsel represented a party.
Of the 57 cases identified by the Search Tool, the word “late” or
“extension” appears in 37 decisions. The Panel has reviewed all
37 of these cases. In 10 of the cases, respondent requested an extension of
time in which to file a response. In 12 additional cases, respondent submitted
a filing that was late – in many instances after having also received
an extension. Respondent’s counsel has thus claimed the presence of “exceptional”
circumstances in 22 of his 57 WIPO cases, representing nearly 40 percent of
these cases. These statistics suggest that Respondent’s counsel treats
requests for extensions and late filings as the norm rather than the exception.
It is likely that, in at least some of these cases, the respondent genuinely
had good cause for being late or requesting an extension. Indeed, there are
legitimate reasons for requesting an extension or for having filed a response
or a supplemental submission late. See, e.g.,Gaiam, Inc. v. Nielsen,
NAF Claim No. 112469 (July 2, 2002) (accepting late response filed twenty days
after respondent received the complaint when the notification to respondent
was itself delayed); DK Bellevue, Inc. v. Landers, WIPO
Case No. D2003-0780 (November 24, 2003) (accepting late response filed on
first business day after weekend due date given respondent’s good faith
belief that applicable deadline would be extended to the next business day,
consistent with US litigation practice); Alain-Martin Pierret d/b/a Bordeaux
West v. Sierra Tech. Group, LLC, NAFClaim No. 472135 (July 1, 2005)
(accepting complainant’s late supplemental submission where respondent
failed to send response to complainant on a timely basis).
However, even if there was good cause in some subset of these cases, this pattern
of extension requests and late filings raises legitimate questions about the
bona fides of other requests. See, e.g., Trader Publishing Co. v.
Krasny, WIPO Case No. DBIZ2002-00138
(June 26, 2002) (respondent, represented by Respondent’s counsel, sought
extension because he claimed not to have received the Notification of the Complaint
“either because the Center did not send it via e-mail or because of the
[r]espondent’s substantial problem with computer viruses ‘during
the month of May 2002’” and because the hard-copy was “received
by [r]espondent’s wife, who was busy with child care and forgot to provide
the package to the [r]espondent”; after extension request was denied,
respondent nevertheless filed response two weeks late; the Panel disregarded
the late-filed response); National Football League Players Association, Inc.
v. Cayman Trademark Trust, WIPO Case No. D2005-0234
(May 13, 2005) (Respondent’s counsel sought 20-day extension because he
would be unavailable for a nine-day period for reasons unexplained in the decision;
the Center, with complainant’s consent, granted a 10-day extension; respondent
thereafter defaulted and sought an additional extension because “it had
been prejudiced by the [c]omplainant’s refusal to settle”; ultimately,
respondent filed no response); Real SB-Warenhaus Holding GmbH v. Anutarapun
Pugdechat, WIPO Case No. DBIZ2002-00017
(July 26, 2002) (Respondent’s counsel requested a 20-day extension “owing
to the exceptional number of STOP disputes in which he was involved”);
Puerto Rico Tourism Co. v. Virtual Countries, Inc., WIPO
Case No. D2002-1129 (April 14, 2003) (Respondent’s counsel requested
a 30-day extension “owing to the intervening holiday season”).
In some cases, panels faced with extension requests or late filings have commented
upon whether acceptance of the late submission would have affected the final
decision on the merits. Indeed, even in the 1099 Pro decision, the panel
stated that its decision to disregard the response did not affect the outcome.
When panels indicate that a rejected submission – whether a response,
as in 1099 Pro, or a party’s supplemental submission, e.g.,
OkiData Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903 (November 6, 2001) (refusing to accept complainant’s
supplemental submission) – would not have changed the outcome, that obiter
dictum is not being disclosed for the purposes of justifying the panel’s
decision to disregard the submission. Rather, at least when this Panel has made
such an observation, it has been offered for the avoidance of doubt, and to
give the parties comfort that this procedural ruling did not affect the decision,
and that the decision also stands on the merits.
In this case, too, the Panel has reviewed the proposed Response and can affirm that, even if it had been accepted, the Panel would have ruled the same way on the merits. It is important to note, though, that the Panel’s decision to disregard the Response would stand regardless of whether the Response might have affected the outcome. A panel presented with a late or otherwise improper filing for which good cause has not been shown should not normally be swayed by the fact that the outcome might have been changed had the submission been accepted. Otherwise, if panels had to consider how a late or improper submission might affect their decision, it would render meaningless the inquiry into good cause. If the Rules are to be fairly applied, panels must be prepared to enforce them regardless of their potential effect on the outcome.
That conclusion is particularly appropriate given
the nature of UDRP proceedings. As noted above (see footnote 1, supra),
if either party is unhappy with the outcome – whether because it disagrees
with the Panel’s decision on the merits, or feels that it has been treated
unfairly by the procedures, or believes that local law is more favorable than
the standards of the Policy – it is free to file suit and have a court
determine ultimate ownership of the domain name. Policy, paragraph 4(k). In
such a proceeding, the parties can take advantage of all the due process protections
provided by court rules and procedures, including, in United States matters,
the rights to take discovery and cross-examine witnesses and to ask the court
to make credibility determinations. Moreover, in such proceedings, the parties
can litigate all issues that may affect ownership of a domain name (not just
the abusive cybersquatting issues addressed by the Policy). See, e.g., Thread.com,
LLC v. Poploff, WIPO Case No. D2000-1470
(January 5, 2001); Lopez v. Irish Realty Corp., NAF Claim No. 94906 (August 8, 2000).
For all these reasons, the Panel concludes that Respondent lacks good cause for its nine-day delay. Accordingly, because this is not an exceptional case, the Panel shall not consider the Response further in rendering its decision in this case.
4. Factual Background
Complainant states that it is in the business of two-way radio sales and repairs. It alleges that it has been in the business since 1948, actively has used the MOBILCOM mark since 1980, and has since expanded its business to encompass paging, integrated security systems, tower space rental, and cellular phone sales. Complainant’s website is located at <mobilcom.net>.
In 1987, Complainant registered MOBILCOM as a trademark
in the Commonwealth of Pennsylvania in connection with “radio paging and
signaling services.” Complainant does not have, and does not appear to
have applied for, a federal registration.
5. Complainant’s Contentions
Complainant contends that the Domain Name consists entirely of Complainant’s trademark, and is therefore identical to its trademark.
Complainant alleges that Respondent lacks any rights or legitimate interests in respect of the Domain Name. Complainant alleges that Respondent has never used the MOBILCOM mark in its business, is not known by the name MOBILCOM, and that Complainant has not authorized Respondent to use the MOBILCOM mark. Complainant further argues that there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
Complainant also alleges that the Domain Name was
registered and is being used in bad faith. Complainant argues that Respondent’s
sole purpose in registering the Domain Name was to obtain a substantial sum
through its sale. Complainant notes that Respondent offered to sell the Domain
Name for $35,000, which is consistent with Respondent’s pattern of registering
domain names that incorporate the marks of third parties and offering them for
sale. Complainant identifies two cases to support this argument, Prisma Presse
v. BuyDomains.com, WIPO Case No. D2001-1073
(October 22, 2001), and Echelon Corp. v. RN WebReg, a.k.a. Rarenames, LLC,
WIPO Case No. D2003-0790 (December 15,
2003).
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant alleges that it owns a Pennsylvania trademark registration. State
trademark registrations, though, are entitled to minimal weight because they
are not examined and thus do not represent persuasive evidence of ownership
of a valid, distinctive trademark. Randan Corp. v. Rapazzini Winery,
WIPO Case No. D2003-0353 (July 28, 2003)
at n.1; WIPO Decision Overview§ 1.1. Thus, to prevail
under the first factor, Complainant will need to establish common law trademark
rights in the MOBILCOM name. Stanford Microdevices, Inc. v. Sheryl Morace,
WIPO Case No. D2001-0382 (May 13, 2001);
see also WIPO Decision
Overview § 1.7.
Complainant cannot establish trademark rights in the MOBILCOM name if that
mark is generic for mobile communication services such as two-way paging. The
MOBILCOM mark appears to be a shortened version of Complainant’s corporate
name, Mobile Communication Service, Inc. MOBILE COMMUNICATION likely could not
be registered as a mark for two-way paging and other mobile communication services
because that mark would be generic. See Pet Warehouse v. Pets.com, Inc. WIPO
Case No. D2000-0105 (April 13, 2000); see also U.S. Trademark Registration
No. 2,460,839 (disclaiming “Mobile Communications, Inc.” from mark
AMBER PRE-PAID WIRELESS ALICOMM MOBILE COMMUNICATIONS INC.)5.
MOBILCOM, on the other hand, is not necessarily understood as meaning “mobile
communications.” Indeed, the Panel notes that the U.S. Patent and Trademark
Office has apparently registered MOBILECOMM and MOBILCOMM as trademarks for
pagers (Reg. Nos. 1,485,998 and 2,708,237). If MOBILECOMM and MOBILCOMM are
not generic for mobile communication devices like pagers, then MOBILCOM likely
is not generic for such devices and related services as well. The Panel thus
concludes, for purposes of this proceeding, that MOBILCOM is not generic for
two-way paging services.
Turning to the evidence in this case, the Panel finds that Complainant has alleged sufficient facts to establish common law trademark rights. Complainant avers that it has used the MOBILCOM mark for more than twenty-five years in connection with its paging services. That mark appears to be in active use on Complainant’s website, and the Internet Wayback Machine (located at “www.archive.org”) shows that the MOBILCOM mark has been used on Complainant’s website since at least 1998. Accordingly, on the record submitted, the Panel finds that Complainant has established common law trademark rights in the MOBILCOM mark.
In considering the similarity between the Domain Name
and the trademark, it is well accepted that the gTLD may be disregarded. See,
e.g.,VAT Holding AG v. vat.com, WIPO
Case No. D2000-0607 (August 22, 2000). When the .com gTLD is disregarded,
the Domain Name consists in its entirety of Complainant’s MOBILCOM trademark.
Accordingly, Complainant has carried its burden of proving that the Domain Name
is identical to a mark in which Complainant has rights.
Complainant has thus satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The website to which the Domain Name resolves is entitled
“Tech Buyer.com” and contains links to other sites that offer technology
and Internet-related services that appear to compete with those offered by Complainant.
This type of use is neither a bona fide offering of goods or services
pursuant to paragraph 4(c)(i) of the Policy nor a legitimate non-commercial
or fair use pursuant to paragraph 4(c)(iii). Gerber Products Co. v. LaPorte
Holdings, WIPO Case No. D2005-1277 (February
8, 2006).
The Panel thus finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As noted above, Internet users who access the website associated with the Domain
Name are directed to a website that offers certain services that compete with
those offered by Complainant. Using a domain name “to redirect Internet
users to websites that host links to external websites, including websites of
Complainant’s competitors,” is evidence of bad faith. Royal Bank
of Canada v. Chan, WIPO Case No. D2003-0031
(March 5, 2003).
In addition, Respondent offered the Domain Name for sale for $35,000, a sum
that is far in excess of the cost of registering a domain name. In the absence
of a legitimate interest by Respondent, the offer to sell the Domain Name for
a price in excess of registration costs supports an inference that Respondent
registered the Domain Name in bad faith, with the primary purpose of selling
it in violation of paragraph 4(b)(i) of the Policy. Echelon Corp. v. RN WebReg,
a.k.a. Rarenames, LLC, WIPO Case No. D2003-0790
(December 15, 2003).
Finally, Complainant asserts that Respondent is guilty of a pattern of registering
domain names to prevent the owners of trademarks from reflecting their marks
in the corresponding domain names. In support of this assertion, Complainant
cites two WIPO cases where Panels have ordered transfer of domain names registered
by this Respondent. Echelon Corp. v. RN WebReg, a.k.a. Rarenames, LLC,
WIPO Case No. D2003-0790 (December 15,
2003) (digitalhome.com); Prisma Presse v. BuyDomains.com, WIPO
Case No. D2001-1073 (October 22, 2001) (sintef.com). Based on a search of
the NAF database of decisions, the Panel is aware of at least five additional
cases in which this Respondent’s domain names were transferred. Limco,
Inc. and Limited Stores Inc. v Rarenames, NAF Claim No. 99693 (November
27, 2001) (limited.net); DLJ Long Term Investment Corp. v. Buydomains.com
aka Buy This Domain aka Stockscan.com aka Stockscans.net aka RareNames/WebReg,
NAF File No 144646 (May 6, 2003) (stockscan.com, stockscans.net); Benjamin
Young v. RN WebReg, NAF Claim No. 250244 (May 18, 2004) (webavenues.com);
Texas Lottery Commission v. RN, WebReg, NAF Claim No. 348158 (December
13, 2004) (thetexaslottery.com); SystemSoft Corp. v. RareNames, WebReg,
Claim No. 474793 (June 28, 2005) (ecertifications.com).
Based on a review of these decisions, it appears that Respondent’s business
practice includes the registration of domain names containing fanciful trademarks
(e.g., SINTEF), trademarks created by the joinder of common or dictionary
words (e.g., THE TEXAS LOTTERY), and or that have expired, seeSystemSoft Corp. v. RareNames, WebReg, Claim No. 474793 (June 28, 2005),
followed by efforts to resell those names. Although this Panel has held (including
in a number of cases in which Respondent’s counsel represented the respondent)
that it is not bad faith to resell domain names that incorporate common dictionary
terms if the respondent was unaware of complainant’s trademark rights
at the time of registration, e.g., National Trust for Historic Preservation
v. Preston, WIPO Case No. D2005-0424 (August
10, 2005); Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 28549
(August 6, 2004); HQ Holdings, LLC v. EquiCorp, Inc., NAF Claim No. 256402
(June 15, 2004), respondents cannot rely on this precedent to shield their conduct
by closing their eyes to whether domain names they are registering are identical
or confusingly similar to trademarks. In other words, where a respondent has
registered a domain name consisting of a dictionary term because the respondent
has a good faith belief that the domain name’s value derives from its
generic qualities, that may constitute a legitimate interest and the offer to
sell such a domain name is not necessarily a sign of bad faith. Where, in contrast,
a respondent registers large swaths of domain names for resale, often through
automated programs that snap up domain names as they become available, with
no attention whatsoever to whether they may be identical to trademarks, such
practices may well support a finding that respondent is engaged in a pattern
of conduct that deprives trademark owners of the ability to register domain
names reflecting their marks.
On the record of this case, the Panel believes it a fair inference that Respondent’s conduct falls into the latter category. Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that Respondent is engaged in a pattern of such conduct.
Complainant has therefore satisfied the requirements of paragraph 4(a)(iii)
of the Policy.
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 <mobilcom.com> be transferred to Complainant.
David H. Bernstein
Sole Panelist
Dated: February 24, 2006
1 In the 1099 Pro decision,
the Panel included the following footnote at the end of the above-quoted passage:
“This ruling does not mean that Respondents who file late responses have
no recourse. First, even in the absence of a response, the Complainant still
must bear the burden of proof and panels have ruled for defaulting Respondents
when Complainants have failed to do so. E.g., Action Instruments, Inc. v.
Technology Associates, WIPO Case No. D2003-0024
(March 6, 2003); Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO
Case No. D2002-0273 (July 8, 2002); Rodale, Inc. v. Cambridge,WIPO Case No. DBIZ2002-00153 (June 28, 2002)
(finding reverse domain name hijacking); Shopping.com v. Internet Action
Consulting,WIPO Case No. D2000-0439
(July 28, 2000); EAuto, L.L.C. v. EAuto Parts,WIPO
Case No. D2000-0096 (April 9, 2000). Second, Respondents always have the
ability to seek judicial review of a decision with which they disagree. Paragraph
4(k) of the Policy.”
2 The Panel notes that
the WIPO Decision Overview
does not yet indicate whether a consensus position has emerged on this issue.
As this Panel has written before, it is in the best interests of the Policy
and of parties to UDRP proceedings for panels to follow the consensus once a
consensus position has been identified. See, e.g., Fresh Intellectual Properties,
Inc. v. 800Network.com, Inc., WIPOCase
No. D2005-0061 at n.3 (March 21, 2005). In the absence of an identified
consensus, this Panel has surveyed a number of decisions to determine what constitutes
the most appropriate decision. Although the Panel is aware of decisions that
take a different approach, including those cited by Respondent, e.g., Mirama
Enters., Inc. v. NJDomains, NAF Claim No. 588486 (Jan. 16, 2006),many
of those decisions either lack any explanation for their reasoning (thus making
it difficult for future panels to assess the facts that may have constituted
good cause or an exceptional case) or are based on the “no prejudice”
justification considered, but rejected, by the majority in 1099 Pro.
3 Indeed, Respondent’s counsel appears to have allotted three days for preparation of the Response in this case. In the Petition for Consideration of Late-Filed Response, Respondent’s counsel stated that he was unable to immediately commence work on the Response because he was working on a Response in another case that was due in January 25, 2006. That would have left Respondent’s counsel with three days to prepare and file the Response by the January 28, 2006 date that Respondent requested in its extension request.
4 A search of the WIPO and NAF databases of decisions shows that Respondent’s counsel in this case has represented parties in more than 140 other UDRP matters.
5 It is well accepted
that Panels may conduct their own research, including reviewing the parties’
websites (both in the current and past versions) and examining other publicly-available
information (such as trademark office records), in connection with rendering
decisions in UDRP proceedings. See, e.g., Bass Hotels & Resorts, Inc.
v. Rodgerall, WIPO Case No. D2000-0568
at n.1 (August 7, 2000); WIPO
Decision Overview§ 4.5.
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