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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rodd & Gunn New Zealand Limited v. WhoisGuard, Inc. / Adam Kim

Case No. D2020-2872

1. The Parties

1.1 The Complainant is Rodd & Gunn New Zealand Limited, New Zealand, represented by Ellis Terry, New Zealand.

1.2 The Respondent is WhoisGuard, Inc., Panama / Adam Kim, United States of America (“United States”).

2. The Domain Names and Registrar

2.1 The disputed domain names <roddandgunn.fashion>, <roddandgunn.life>, <roddandgunn.style>, and <roddandgunn.vip> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. At that time the Domain Names were registered in the name a privacy service operated by WhoisGuard, Inc., of Panama, but whose services appear to be generally offered to registrants by the Registrar. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Names. The Center sent an email communication to the Complainant on November 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 10, 2020.

3.2 The Center verified that the Complaint together with the amendment to 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020.

3.4 The Respondent did not submit any response but sent an email to the Center on November 20, 2020, in which he stated as follows:

“I would like to state for the record, that I love this company and bought the domains because I thought they would hold value in the future. I will do my part to either cancel the domains or I will be happy to transfer them to roddandgunn.”

3.5 The Center notified the Commencement of Panel Appointment on December 29, 2020. The Center appointed Matthew S. Harris as the sole panelist in this matter on January 5, 2021. 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.

3.6 On January 7, 2021 and having reviewed the case file, the Panel informed the parties (through a Panel Order) that it appeared to the Panel that the Respondent consented to the transfer the Domain Names into the hands of the Complainant. The Panel also informed the parties that given this it was of the view that it would be appropriate to issue an abbreviated form of decision similar to that adopted Statoil ASA v. gaelle etienne / WhoisGuard Protected WIPO Case No. D2015-1812, ordering the transfer of the Domain Names to the Complainant. It requested that if the Complainant objected to that approach, the Complainant should inform the Center of that objection together with reasons for that objection. No objection has been so filed.

4. Factual Background

4.1 The Complainant is a company incorporated in New Zealand. It is the owner of a large number of registered trade marks in numerous territories that either comprise or incorporate the words Rodd & Gunn. These include:

(i) New Zealand registered trade mark no. 176918 for RODD & GUNN as a word mark with a filing date of January 21, 1988 and registered on September 27, 1989 in class 25;

(ii) New Zealand registered trade mark no. 265407 for RODD & GUNN as a word mark with a filing date of August 6, 1996 and registered on July 23, 1997 in classes 12, 14, 18, 20, 21; and

(iii) United States registered trade mark no 4295391 for RODD & GUNN as a standard character mark with a filing date of June 28, 2012 and a registration date of February 26, 2013 in class 25.

4.2 The Respondent appears to be an individual based in the United States.

4.3 According to the Registrar the Domain Names were all registered on October 16, 2020. There is no evidence to suggest that they have been used for any purpose since registration.

5. Parties’ Contentions

5.1 Given the matters set out in the Procedural History section of this decision and the Panel’s reasoning below, it is not necessary to set out the parties’ contentions in this matter.

6. Discussion and Findings

6.1 As the Panel has already recorded in the Procedural History section of this decision, the Respondent has agreed that the Domain Names be transferred to the Complainant. The parties have also been informed that the Panel proposes to deal with this matter based on that consent without the need to issue a substantive decision. Neither party has suggested that the Panel should not proceed on this basis.

6.2 The basis upon which a UDRP panel might decide to order a transfer or cancellation in circumstances where the respondent consents to this, is addressed at paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. In the opinion of this Panel, the Policy and the Rules permit a panel to order transfer in such circumstances, subject to the discretion of a panel not to do so should it for any reason consider this to be inappropriate.

6.3 Having reviewed the case file in this matter the Panel is of the view that there is no good reason not to simply order the transfer of the Domain Names.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <roddandgunn.fashion> <roddandgunn.life>, <roddandgunn.style>, and <roddandgunn.vip> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: January 11, 2021

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