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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blockbuster Inc. v. BuildIt-USA Inc.
Case No. D2009-0278
1. The Parties
Complainant is Blockbuster Inc., Dallas, Texas, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is BuildIt-USA Inc., Garden City, New York, United States of America, represented by its authorized representative identified as "Don A." with an email address of <[вЂ¦]@optonline.net>.
2. The Domain Name and Registrar
The disputed domain name <blockbustertogo.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2009. On March 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 3, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009.
In lieu of a formal response addressing the allegations in the Complaint, Respondent, by email dated March 26, 2009, advised the Center that it was "acknowledging the dispute in favor of Blockbuster" and that the domain name could be transferred to Complainant. The Center thereafter contacted Complainant by email dated March 27, 2009 to determine whether Complainant wished to suspend the proceedings so that the parties could reach a settlement. Complainant advised by email dated March 27, 2009 that it wished to proceed.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on April 6, 2009. 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
The facts set forth below are taken from the Complaint submitted by Complainant. Respondent has not contradicted any of the facts alleged by Complainant.
4.1 Complainant is a provider of in-home movie, television and game entertainment which it provides through stores in over 21 countries and on-line at the website "www.blockbuster.com".
4.2 Complainant owns trademark registrations that include in whole or in part BLOCKBUSTER including over 30 U.S. registrations for BLOCKBUSTER or BLOCKBUSTER-formative trademarks.1
4.3 On January 17, 2007, Respondent registered the domain name <blockbustertogo.com>. The registration occurred after Complainant had been using the BLOCKBUSTER mark and after Complainant had registered at least some of its BLOCKBUSTER marks in the United States.
4.4 The disputed domain name is used to connect to a parked webpage that includes sponsored links to various third party websites some of whom are competitors of Blockbuster. Respondent apparently receives revenue from the sponsored links and has utilized <parked.com> to monetize the domain name.
4.5 Complainant sent Respondent a demand letter dated June 27, 2008 and a follow up letter dated July 22, 2008 requesting the transfer of the domain name as well as other relief that is outside the scope of these proceedings.2
4.6 In response to the Complaint, Respondent has acknowledged Complainant`s claims and has offered to transfer the domain name to Complainant.
5. Parties` Contentions
5.1 Complainant contends that it is the owner of rights in the mark BLOCKBUSTER and marks that include the term BLOCKBUSTER by virtue of its registrations for the mark and its use of the mark since 1985.
5.2 Complainant asserts that the domain name <blockbustertogo> is confusingly similar to the BLOCKBUSTER trademark because the domain name incorporates the BLOCKBUSTER trademark in its entirety and merely adds to it the non-distinctive words "to go." Complainant argues that the addition of these words is likely to increase confusion since "to go" suggests that consumers may purchase Complainant`s goods and services from a website and have them available "to go."
5.3 Complainant claims that Respondent has no right to or legitimate interest in the domain name because <blockbustertogo.com> is being used to divert Internet traffic to a pay-per-click website that displays sponsored links for competitors of Complainant and that Respondent is not licensed or otherwise authorized, directly or indirectly, to register or use the BLOCKBUSTER trademark in any manner including in or as part of a domain name.
5.4 Complainant alleges that Respondent registered and used the domain name in bad faith as evidenced by Respondent`s use of the domain name in connection with a pay-per-click website that provides sponsored links and otherwise monetizes the domain name and that the use of the domain name is an attempt to attract for commercial gain Internet users to Respondent`s website by creating a likelihood of confusion with Complainant`s mark as to source, sponsorship, affiliation or endorsement. Complainant also points to Respondent`s constructive notice of Complainant`s rights and to Respondent`s failure to respond to a demand letter as further evidence of Respondent`s bad faith.
5.5 Complainant requests as its remedy that the domain name be transferred to it.
Respondent did not submit a formal response to the Complaint addressing the allegations made therein. Instead, Respondent advised by email dated March 26, 2009 that it acknowledged the dispute in favor of Blockbuster, that it purchased the domain name as a dictionary description, that it had no intent to damage the reputation of Complainant, that it recognized that its use of the domain name might lead to confusion because of the fact that ads that appeared on the site sent traffic to other sites, and that Respondent consented to the transfer of the domain name to Complainant. Respondent did not dispute the facts in the underlying complaint, did not seek monetary recovery for the domain name and did not seek any other concessions from the Complainant in exchange for the transfer of the domain name.
6. Discussion and Findings
There is no consensus among panelists as to whether consent to transfer, as presented here, provides a basis for an order of transfer without consideration of the elements set forth in paragraph 4(a) of the Policy. Compare e.g. John Bowers QC v. Tom Keogan,
WIPO Case No. D2008-1720 (and cases cited therein) (taking the approach that a unilateral consent to transfer by a respondent provides a basis for an immediate order of transfer) to Sanofi-aventis v. Standard Tactics LLC,
WIPO Case No. D2007-1909 (noting that the complainant is entitled to have the substance of its complaint considered notwithstanding respondent`s willingness to transfer the disputed domain name). In the present case, there are no circumstances that can be gleaned from the record to indicate why Complainant refused the offer to transfer the domain name in lieu of further proceedings.
This does not appear to be a case where the identity of Respondent was shielded, where Respondent has a history of abusive domain name registration, where Respondent made unreasonable (or any) demands as a condition for transfer of the domain name, or where Respondent`s offer seems disingenuous. While Complainant states that demand letters were sent to Respondent, Complainant offers no evidence that the letters were actually received (for example, by providing proof of delivery) and as the Panel has noted one of the letters appears to concern a different domain name. As a result, and for reasons similar to those set forth in Laerdal Medical Corporation v. V. Lee,
WIPO Case No. D2007-1672, it appears that there was little reason for Complainant to insist that these proceedings go forward. Complainant`s strategy may have been to force a decision which it could potentially use against third parties. The Panel will not indulge Complainant`s request and will not proceed to a consideration of the merits of the Complaint. Under the circumstances presented, in this Panel`s view, such consideration is not appropriate. Rather, solely in light of Respondent`s unilateral agreement to transfer the domain name, the Panel will order the transfer. See Infonxx.Inc. v. Lou Kerner, WildSites.com,
WIPO Case No. D2008-0434.
For the foregoing reason and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <blockbustertogo.com> be transferred to Complainant.
Barbara A. Solomon
Dated: April 21, 2009