SBD Enterprises, LLC v. Hwi Sue Oon / HewExe Web Publishing
Claim Number: FA1902001828373
Complainant is SBD Enterprises, LLC (“Complainant”), represented by Lisa Lori of Klehr Harrison Harvey Branzburg LLP, Pennsylvania, USA. Respondent is Hwi Sue Oon / HewExe Web Publishing (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southbeach-diet-plan.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2019; the Forum received payment on February 4, 2019.
On February 4, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <southbeach-diet-plan.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@southbeach-diet-plan.com. Also on February 8, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A deficient Response was received and determined to be complete on March 1, 2019.
On March 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known and highly respected provider of diet and weight loss products and services. Complainant has rights in the SOUTH BEACH DIET mark through its trademark registrations with various trademark offices, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,633,433, registered Oсt. 8, 2002, No. 2,910,278, registered Dec. 14, 2004) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No, TMA758101, registered Jan. 27, 2010) and EUIPO. Respondent’s <southbeach-diet-plan.com> domain name, which was registered later than the Complainant’s mark, is confusingly similar to Complainant’s SOUTH BEACH DIET mark as Respondent merely adds the term “plan” and a “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <southbeach-diet-plan.com> domain name. Respondent is not permitted or otherwise authorized to use Complainant’s SOUTH BEACH DIET mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to sell competing goods and services.
Respondent registered and uses the <southbeach-diet-plan.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where Respondent directly competes with Complainant. Respondent also failed to respond to Complainant’s cease and desist letters. Further, Respondent had actual and constructive knowledge of Complainant’s rights in the SOUTH BEACH DIET mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent appears to consent to transfer the disputed domain name to Complainant. Respondent registered the disputed domain name on August 19, 2003, using it to provide good faith information regarding Complainant. Respondent also included a disclaimer at the top of the website connected to disputed domain name to avoid consumer confusion.
Complainant, SBD Enterprises, LLC, is a well-known provider of diet and weight loss products and services.
Complainant has rights in the SOUTH BEACH DIET mark through its trademark registrations with various trademark offices, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,910,278, registered Dec. 14, 2004) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No, TMA758101, registered Jan. 27, 2010). Complainants first use in commerce as specified in its relevant registration (U.S.Reg.No.2633433) with the USPTO, May 20, 1999, which is long before the Respondent registered the disputed domain name on August 19, 2003.
Complainants registration of SOUTHBEACHDIET.COM was on June 9, 2002.
Respondent is Hwi Sue Oon / HewExe Web Publishing, Malaysia.
Respondent registered the disputed domain name on August 19, 2003, using it to provide information regarding Complainant. Respondent also included a disclaimer at the top “This is NOT an official site for South Beach Diet. South Beach Diet trademark holder is NOT affiliated with this website. For official website please go to www.southbeachdiet.com”.
Preliminary Issue: Deficient Response
Respondent submitted a Response on March 1, 2019, which was one (1) day late from the Respondent’s deadline. The Panel exercises its discretion to accept the Response and to take it into consideration. See Zillow, Inc. v. Chris Storseth / Chris L Storseth, FA1578264 (Forum Oct. 3, 2014) (“On this occasion, the Panel exercises its discretion to accept the Response and to take it into consideration. The Panel’s reasons for doing so are that the delay was comparatively short, no harm seems to have been done by the delay, it is in the interests of both parties to have the matter resolved as soon as possible and, as the matter clearly raises issues of importance, it is better for the Panel to consider the matter with the benefit of submissions from both sides”).
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <southbeach-diet-plan.com> domain name to Complainant.
The question here is the proper course of action for the Panel when faced with a unilateral consent to transfer, and in particular whether a unilateral consent to transfer justifies an order to transfer the disputed domain name without any finding that the three UDRP paragraph 4(a) elements exist, or whether, notwithstanding the consent, the Panel must be satisfied that the UDRP paragraph 4(a) elements are proven. See Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408).
The treatment of a unilateral consent to transfer was considered in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 where it was stated:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
After the initiation of this proceeding, NameCheap, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <southbeach-diet-plan.com> domain name. See Bloomberg Finance L.P. v. Alex Player, FA1817498 (Forum Dec. 24, 2018) (“In this case, the Panel considers it appropriate to award the relief requested by Complainant and consented to by Respondent in the interest of efficiency and expedience. The Panel therefore concludes, solely for purposes of this proceeding and without analyzing the specific requirements set forth in Paragraph 4(a) of the Policy, that Complainant has met its burden of proving these requirements and is entitled to the relief it seeks.”); see also Lyft, Inc. v. Lester Crafton, FA1824549 (Forum Feb. 8, 2019) (“Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer “deems” proved the three elements of paragraph 4(a) of the Policy see Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408.
Since Respondent has agreed to Complainant’s request that the disputed domain names be transferred to Complainant, there is no dispute in this case to be resolved. Moreover, there is no evidence before the Panel to suggest that Respondent’s agreement to that transfer is not genuine.
The Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course See Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, see also Tokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408).
Pursuant to the foregoing, the Panel concludes that relief shall be GRANTED.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <southbeach-diet-plan.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: March 19, 2019
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