In an interesting move by a panel, a Respondent’s attempt at agreeing to the transfer was not sufficient. In the case of ANOVO v. Moniker Privacy Services / Alexander Lerman (WIPO D2008-1049, September 8, 2008), despite the Respondent’s assertion that it had no objection to the transfer of the domain, the panel decided to still go through the full three prong analysis in accordance with paragraph 4(a) of the UDRP Policy.
The Complainant is a French company incorporated since 1992 and is the owner of various trademark registrations, including a Community Trademark registration for ANOVO. Respondent registered the disputed domain, anovo.com, on May 7 2007. Respondent used Moniker Privacy Services who identified Alexander Lerman as the owner.
The Respondent’s representative proposed a suspension of the proceedings to enable the transfer to take place, by Complainant’s representative declined. Respondent noted that many prior panels had explored this similar situation, where there was a unilateral consent to transfer. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.
Wihtout regard to the Respondent’s consent to trasnfer, the Panel found that Paragraph 10 of the UDRP Policy did not grant broad powers to disregard the substantive requirement of paragraph 4(a) of the UDRP Policy and further found as follows:
In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is this Panel’s opinion that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must proceed with at least a basic assessment of the Complaint on its merits.
Additionally, the Panel observed:
Nor is it necessarily true that a complainant will only cause further delay by having a case taken to a decision rather than having the proceedings suspended in reply to a respondent’s reported intention to facilitate a transfer of the domain name at issue. Past experience suggests that such expressed intentions may also be employed as a delaying tactic by a Respondent. Furthermore, in cases where a respondent believes that it is likely to lose, it may also prefer to propose a transfer simply to avoid having itself identified on the list of UDRP respondents. The Panel considers it quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a Complaint, might not wish to allow the respondent to avoid a formal decision at such a late stage.
As a result, the Panel embarked through the full analysis of the three prong policy test and ultimately ordered transfer of the domain.
