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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo Italia S.p.A. v. Eric Schier
Case No. D2001-0025
1. The Parties
The Complainant is Salvatore Ferragamo Italia S.p.A. of Florence, Italy.
The Respondent is Mr. Eric Schier of San Francisco, California, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is "ferragamo.net". The registrar is Network Solutions, Inc. ("NSI") of Herndon, Virginia, U.S.A.
3. The Procedural History
The Complaint was lodged with the WIPO Arbitration and Mediation Center ("the Center") according to the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy implemented by ICANN ("the Rules"), and is dated January 5, 2001. As certified by the Attorney for the Complainant, the Complaint was duly served on the Respondent.
The Center ascertained that the Complaint was subject to NSI Service Agreement Version 4.0 and was thus deficient in failing to specify that the Complainant would, under this agreement, need to submit to the jurisdiction of the courts at the location of the domain-name holder's (i.e. Respondent's) address with respect to any challenges of a panel decision in an administrative proceeding. The Complainant was notified of this deficiency on February 1, 2001, and the deficiency was immediately rectified. The time period for response by the Respondent began with the service of a Notification of Complaint on February 2, 2001.
In the meantime, the Respondent had communicated with the Center by e-mail dated January 10, 2001, indicating that he had "already chosen to transfer ownership to the Complainant" and wished to know if he would be responsible for any monetary payments if he "did not pay the $1500 Respondent fee". In a response dated January 11, 2001, the Center assured the Respondent that the $1500 Respondent fee was payable only if the Respondent elected to have a three member panel. The Center asked the Complainant whether it wished, under the circumstances, to "suspend" the case. On January 11, 2001, the Complainant indicated that it did not wish to suspend the case "in the absence of Mr. Schier's completion of the transfer".
The Center received a Response from the Respondent dated February 14, 2001, and acknowledged this on February 16, 2001. This Response confirmed the Respondent's willingness to transfer the disputed domain name to the Complainant. It referred to, and had attached to it, a copy of a transfer document that had been allegedly forwarded to the Complainant and to the Center on February 1, 2001. The Panelist has reviewed the copy submitted by the Respondent, which appears to be a Network Solutions "Registrant Name Change Agreement Version 3.0 -- Transfer". This Transfer appears to have been duly executed by the Respondent and duly notarized on January 24, 2001. The Respondent has provided evidence that this transfer document was forwarded to the American solicitors for the Complainant by Express Mail courier on January 24, 2001.
The Panel was duly appointed on February 23, 2001, after an invitation had been issued to the undersigned and a Statement of Acceptance and Declaration of Impartiality and Independence had been duly submitted
4. Factual Background
In light of the now apparently settled resolution of this proceeding, the Panelist will refrain from entering into a detailed discussion of the factual background or the Parties' contentions, other than as necessary to establish the context and the Panel's jurisdiction.
The Complainant has submitted evidence of its ownership of numerous trademark registrations in the United States and elsewhere. This evidence is in the form of copies of the American registrations and a print out listing registrations in numerous other countries. For the purpose of this proceeding, it suffices to note that there are several subsisting registrations in the United States for SALVATORE FERRAGAMO and FERRAGAMO, both as design and word registrations. The most germane of these registrations would appear to be for FERRAGAMO, which was registered in the USPTO as No. 1,031,093 on January 20, 1976 for various types of apparel, shoes, etc.
The Respondent allegedly registered the domain name "ferragamo.net" on March 10, 1999.
5. Parties’ Contentions
The Complainant alleges that its trademarks, including FERRAGAMO, are "extremely well-known within the fashion industry as well as to the public".
The Complainant alleges that the Respondent's domain name "ferragamo.net" is confusingly similar or identical to the Complainant's FERRAGAMO and SALVATORE FERRAGAMO trademarks.
The Complainant states that the Respondent responded to a complaint concerning the disputed domain name by claiming to be "a fan of NFL champion Vince Ferragamo and that the domain name is to be used to build a fan web site dedicated to him", according to a letter allegedly sent to the Complainant's American attorney's on March 11, 2001, in response to their cease and desist letter of March 1, 2001, copies of both of which are filed. The web site has allegedly not yet been established, and a visit to the website "ferragamo.net" by the Panel at the time of writing this decision confirms this to be the case. The Complainant alleges that the Respondent has no rights or legitimate interest in "ferragamo.net". The Complainant alleges bad faith on the part of the Respondent. There is no allegation by the Complainant and no evidence of any financial demands whatsoever by the Respondent.
The Respondent, in his timely response dated February 14, 2001, does not dispute any of the substantive allegations of the Complainant and indicates that he has executed and forwarded a transfer document and attaches an electronic copy thereof and "requests the Administrative Panel to settle this case".
6. Discussion and Findings
Having regard to the fact that the Respondent has consented to the transfer of the disputed domain name, and has apparently executed and forwarded a copy of a transfer document to the American solicitors for the Complainant, it would seem that the Panel is required by Paragraph 17 (a) of the Rules to "terminate" this administrative proceeding. Accordingly, there is no need to make any finding as to the substance of the allegations in the Complaint, or to consider whether there would even be jurisdiction under these circumstances to make such findings.
In light of Paragraph 4(i) of the Policy, Paragraphs15(a) and 17(a) of the Rules, it would appear that, although the Panel must terminate the proceedings where there has been a settlement, the Panel can still give effect to the intentions of the Parties by requiring a transfer. Such an order could be useful, even in an instance such as this where an adequate transfer document appears to have been executed, if for any reason the documentation is technically insufficient to give effect to the agreement of the parties. In such event, the order would spare the Parties, the registrar, the Center and the Panel the need for further proceedings and could save much time. See WIPO decision No. D2000-0207.
Similar settlement or consensual situations have been previously considered in WIPO Decisions Nos. D2000-0058, D2000-0081, D2000-0207, D2000-0331, D2000-0601, D2000-0984, D2000-1398, and D2000-1466 and transfers have been required in these decisions.
Having regard to Paragraphs 4(i) of the Policy and Paragraphs 15(a) and 17 of the Rules, the Panel hereby requires that the registrar Network Solutions, Inc. transfer the domain name "ferragamo.net" from the Respondent to the Complainant and orders that this administrative proceeding be hereby terminated.
Dated: March 11, 2001