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Generic Top Level Domain Name (gTLD) Decisions |
AmeriPlan Corporation v. Shane Gilbert
d/b/a NewWave Solutions, Inc.
Claim Number: FA0203000105737
PARTIES
Complainant is AmeriPlan Corporation, Dallas, TX
(“Complainant”) represented by Mia
Giliotti. Respondent is Shane Gilbert d/b/a NewWave Solutions,
Inc., Newport Beach, CA (“Respondent”) represented by Andrew S. Mansfield.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <ameriplan.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned
certifies that they have acted independently and impartially and to the best of
their knowledge, have no known conflict
in serving as Panelists in this
proceeding.
Anne M. Wallace.
Q.C. as Panel Chair. Paul M. DeCicco and Paul A. Dorf, Panelists.
PROCEDURAL HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (“the Forum”) electronically on March
1, 2002; the Forum received
a hard copy of the Complaint on March 4, 2002.
On , Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ameriplan.com> is/are registered
with Network Solutions, Inc. and that the Respondent is the current registrant
of the name. Network Solutions, Inc.
has verified that Respondent is bound by the Network Solutions, Inc.
registration agreement and has thereby
agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution
Policy (the “Policy”).
On March 6, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of March 26, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail,
post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@ameriplan.com by e-mail.
A timely Response
was received and determined to be complete on March 26, 2002.
Complainant’s
Additional Submission was received March 29, 2002, in a timely manner according
to the Forum’s Supplementary Rule #7.
Respondent’s
Additional Response was received in a timely manner according to the Forum’s
Supplementary Rule #7 on April 3, 2002.
Another
additional submission from Respondent was received on April 4, 2002. This
submission was not in compliance with Supplementary
Rule #7.
Another
additional submission from Complainant was received on April 9, 2002. This
submission was not in compliance with Supplementary
Rule #7.
On April 9 and
10, 2002, the Forum received an additional exchange of e-mail communications
from counsel for each of the parties.
These submissions were not in compliance
with Supplementary Rule #7.
On April 11, 2002, pursuant to the Respondent’s request to have the
dispute decided by a three-member
Panel, the Forum appointed Anne M. Wallace,
Q.C. (Panel Chair), Paul M. DeCicco and Paul A. Dorf as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant, AmeriPlan
Corporation, is a nationally known company that has been doing business under
the name AmeriPlan since July
1992. Complainant offers dental, vision,
prescription, and chiropractic plans. Complainant also offers a veterinary plan
under the
name AmeriPlan Veterinary Care. AmeriPlan currently has over 50,000
brokers and over 600,000 covered members enrolled nationally.
All printed
materials and the website <ameriplanusa.com> use both the AmeriPlan and
AmeriPlan USA names interchangeably.
AmeriPlan first began using the
AmeriPlan trademark in 1992 and filed it for registration with the U.S. Patent
and Trademark Office
on May 8, 1998.
AmeriPlan filed for registration of AmeriPlan Veterinary Care on June
20, 2001. Since 1992, AmeriPlan has expended considerable time,
effort and
money to develop the good will associated with the name “AmeriPlan” and does
not allow unauthorized parties to use its
marks as part of their Internet
domain names or to establish Internet websites.
AmeriPlan created its Internet
presence in July 1996 using the domain name <ameriplanusa.com>. <ameriplan.com>
was already registered by one Jun Tang for the purpose of reselling it to
AmeriPlan. He asked a high price and was turned down.
Mr. Tang had not
developed a site at that domain name and was not attempting to divert or
mislead customers away from AmeriPlan,
so it was not pursued further.
In August 2001, Respondent, Shane Gilbert registered over 30 AmeriPlan
hybrid domain names, including <ameriplanuas.com>, with
the intention of
setting up a web site targeted at AmeriPlan brokers. A list of such domain names was presented
in evidence. There were 32 names on that list. Every name began with
“ameriplan”.
On October 16, 2001 Respondent purchased the domain name <ameriplan.com>
from Mr. Tang without any permission or contact with AmeriPlan Corporation. On
November 2, 2001 Respondent signed an AmeriPlan
Broker Agreement and
subsequently on November 12, 2001 signed a Sales Director Agreement. In both
agreements he agreed to comply
with the Broker Policies and Procedures Manual
then in effect and as amended from time to time. The policies and procedures
state
on page 15:
“The
official AmeriPlan USA Internet web domain is WWW.AMERIPLANUSA.COM. This is the
only site besides Broker websites iboplus.com
and mybenefitsplus.com that have
the legal right to use the AmeriPlan or AmeriPlan USA name and/or logo,
trademark or trade name.
AmeriPlan Corporation will take all legal steps
available to protect the use of its intellectual property and will order all
sites
that are in violation of this policy to be immediately removed from the
Internet.
AmeriPlan
Corporation employee names, corporate names and trademarks or logos are
proprietary and may not be used in any manner, including
reproduction of
literature or in any advertisement without prior approval from AmeriPlan
Corporation. Any approved use of such corporate
names, trademarks or logos must
indicate that the Broker is an “independent Broker” of AmeriPlan Corporation.
Advertisements to attract
Broker or business opportunity advertising must be
run “blind,” i.e. without reference to AmeriPlan Corporation unless approved by
AmeriPlan Corporation. AmeriPlan
strictly prohibits the use of its corporate name, logo or trademark or any
statements with respect to AmeriPlan Corporation
business or operations in any
banking activity by an AmeriPlan Corporation Broker.
AmeriPlan
Corporation in no way approves or condones any such banking activities.
VIOLATION OF
THIS POLICY COULD LEAD TO THE TERMINATION OF YOUR BROKER AGREEMENT.
Request for
approval must be submitted by mail to Marketing Services exactly as it is to
appear in the publication. The approval
process takes approximately ten (10) business days. Once approved, AmeriPlan
Corporation will notify the Broker by phone,
fax or e-mail.”
The site
<ameriplan.com> was brought to the attention of corporate officers
when AmeriPlan brokers began complaining about enrolling erroneously on
Respondent’s
<ameriplan.com> web site not on the official
AmeriPlan Web site. Upon further
investigation, it was discovered that Gilbert’s site misrepresented itself as
AmeriPlan and that he was selling unauthorized
sub-domains to AmeriPlan
brokers. AmeriPlan contacted Gilbert on December 19, 2001 and advised him that
the Board of Directors of
AmeriPlan had determined that his site was in
violation of AmeriPlan’s Internet Policies and Procedures and was a trademark
infringement.
On
January 1, 2002 Cecil Mathis, counsel for AmeriPlan directed Gilbert to “cease
and desist” and to transfer the domain name to AmeriPlan.
Gilbert was made
aware that he was infringing on the AmeriPlan trademark and in violation of the
broker agreement and subject to
termination.
On
January 23, 2002 Gilbert spoke to Dennis Bloom, CEO and Director of AmeriPlan.
Bloom stated that AmeriPlan was interested in resolving
the matter without
having to terminate Gilbert’s Sales Director Agreement. He asked what it would
take to transfer the domain to
AmeriPlan Corporation and Gilbert demanded
$60,000. Bloom said that the amount was absurd and told Gilbert he was not
entitled to
use the name to sign up brokers, that his site was causing
confusion with AmeriPlan Corporation and that they would cancel him as
a broker
for cause. Gilbert’s commission account was frozen on January 24, 2002 and the
Sales Director Agreement was thereafter terminated
for cause.
Complainant submits that the domain name <ameriplan.com>
is identical to the AmeriPlan corporate name in which AmeriPlan has
rights. Respondent was aware of this as
is evident by his purchasing the AmeriPlan hybrid domain names (i.e.
<ameriplanuas.com>) to
set up a “knockoff” web site and redirect
AmeriPlan brokers that make accidental keystrokes. Evidence of web site content
filed shows
the obvious similarity of Gilbert’s site to the official AmeriPlan
site, which is confusing and is a deception to brokers searching
for the true
AmeriPlan site.
Respondent
has no rights or legitimate interests in or to the domain name <ameriplan.com>. By signing the Broker Agreement and, subsequently
the Sales Director Agreement, he agreed to comply with all the terms and
conditions
of the AmeriPlan Broker Policies and Procedures Manual. Respondent is illegally using <ameriplan.com>
in violation of his agreement with AmeriPlan as well as in violation of United
States laws.
Respondent
was not a broker of AmeriPlan at the time that he purchased the imitation
AmeriPlan domain names and developed the <ameriplan.com> web site.
Respondent’s
business, NewWave Solutions, had no prior dealing with AmeriPlan and was not
commonly known as AmeriPlan before purchasing
the domain names.
Respondent
demonstrated bad faith by demanding $60,000 for the domain name <ameriplan.com>,
an amount that far exceeds out-of-pocket costs.
Respondent
set up the web site with intent for commercial gain off the AmeriPlan name as
evident by his signing up active AmeriPlan
brokers for sub-domain names for a
fee of $7.95 per month or $95.40 per year.
This is in direct competition with AmeriPlan and causes substantial
dilution to the AmeriPlan trademark. Gilbert’s registered domain names disrupt
AmeriPlan’s primary business as a provider access organization that markets its
services
by multi-level marketing.
Respondent purchased and registered the domain name
<ameriplan.com> for the purpose of intentionally attracting, for
commercial gain, brokers to his site by creating a likelihood of confusion with
the corporate web site <ameriplanusa.com>. This confusion is evident by the brokers who have complained to
AmeriPlan about the site or who signed up for a sub-domain of <ameriplan.com>
assuming that they were getting a legitimate corporate sponsored web site.
Complainant seeks to misuse the ICANN Policy to appropriate the domain
name of one of its independent brokers who has invested time,
money and skill
in developing his brokerage at this disputed web address. Further, in
accordance with his contract with Complainant,
Gilbert obtained the consent of
the Western Region Sales Manager for the development and deployment of his
website at this address.
Finally, this attempted reverse domain name hijacking
is part of a larger plan by AmeriPlan to revoke its authorization provided
to
Gilbert for the sale of sub-domains to other independent brokers and to enter
that market itself, after the risk and development
was borne by Gilbert.
Further complicating and undermining Complainant’s case, New Wave
Solutions, Inc. (“New Wave”) is a Delaware corporation that owns
the domain
name at issue. Gilbert, the registered
independent broker with AmeriPlan and putative respondent, has a contractual
arrangement with New Wave whereby
New Wave hosts his website and provides
services to other independent brokers. Although New Wave is wholly owned by
Gilbert, Complainant
has alleged no facts allowing the corporate veil to be
pierced nor has the corporate entity been shown to be Gilbert’s “alter ego.”
The words in Complainant’s registered mark are “AmeriPlan USA.” Since 1996,
by its own admission, Complainant has operated its website at <ameriplanusa.com>.
Complainant’s domain name directly
corresponds to its mark. The domain name
<ameriplan.com> is not identical to the words AmeriPlan USA in the
design plus word mark. Complainant has purchased and is operating its website
at the domain name that is identical to its mark.
Complainant is thus left to argue
that the domain name <ameriplan.com> and AmeriPlan USA are
confusingly similar and are likely to mislead the average consumer. This is not so. By its own actions,
Complainant has allowed its independent brokers to operate websites with the
words ameriplan and
even “ameriplan usa” in the URL without ever alleging
confusion. Currently, brokers operate the following AmeriPlan-related websites
that contain these characters:
<Ameriplan-usa.com>
<Ameriplanusa.ws>
<Ameriplanhealth.net>
<Ameriplandental.com>
<Ameridentalplan.com>
<Ameri-dental-plan.com>
<Ameriplancentral.com>
<Ameriplanhome.com>
These domain names are not
operated by Complainant. Each is owned and operated by an independent broker in
order to market the prepaid
medical services offered by Complainant. The list
could be expanded and many of the brokers have operated such websites for years
without complaint from Complainant. There is no likelihood of confusion between
<ameriplan.com> and <ameriplanusa.com> in a milieu of broker
domain names such as the ones that Complainant has allowed, approved and
fostered.
Gilbert began
preparations to open his independent AmeriPlan brokerage in July and August
2001. He was attracted to the growth and
income potential that Complainant
advertised and promoted was available to independent brokers. After reviewing the scores of websites
authorized and operated by other AmeriPlan independent brokers and noting the domain
names
AmeriPlan authorized them to use, Gilbert entered an agreement with New
Wave to purchase numerous domain names under which he might
operate his own
brokerage.
Although
Complainant seeks to introduce the registration of these alternative domain
names as evidence of intent to resell the domain
names to AmeriPlan, New Wave
invested considerable time, energy and money in searching for and purchasing
domain names in its effort
to locate an outstanding website for Gilbert’s
brokerage. New Wave intended to let
certain names expire or, in the alternative, redirect traffic from certain
addresses to the ultimate address
selected by Gilbert.
After New
Wave’s effort to purchase domain names was complete, Jun Tang approached New
Wave and offered to sell <ameriplan.com> to Gilbert for
$10,000. New Wave accepted and the
domain name was transferred in October 2001.
Gilbert opened his AmeriPlan brokerage on November 3, 2001. He was
promoted to Regional Sales Director on November 15, 2001.
Between the
opening of his brokerage and his promotion, Gilbert submitted his website to
Todd Wilson, Complainant’s Divisional Sales
Manager, for approval pursuant to
the Brokers’ Policies and Procedures Manual.
Complainant is
a multi-level marketing company. Complainant does not enroll customers directly
nor does it advertise for itself. Instead,
it provides incentives to legally
independent brokers to advertise and enroll customers. Complainant and Gilbert do not compete for
the same traffic because of this fact.
In addition,
Complainant does not offer its independent brokers websites on which to
advertise. It does provide automated sign-up
pages for use by brokers, but
these “cookie-cutter” enrollment forms are not promotional pages. Gilbert, in
addition to owning and
operating his approved brokerage, approached the company
about using the <ameriplan.com> domain to locate other brokers’
promotional pages. The phrase he and the company used for such sites was
“replicated websites.” Wilson
provided permission for Gilbert to offer other
brokers such sub domains, or replicated websites, for promotional websites.
This would
save other brokers the time and cost of registering and operating
independent websites.
New Wave has
enrolled over thirty other independent brokers who wished to locate promotional
websites at <ameriplan.com> after Gilbert received company
approval on November 6, 2001. Gilbert properly obtained the consent of Complainant to use the <ameriplan.com>
web site for his brokerage. After having allowed numerous other brokers to use
domain names containing ameriplan and after having
approved Gilbert’s use,
Complainant cannot simply revoke that permission and expropriate the domain
name to itself.
As late as February 15, 2002, counsel for
Complainant indicated that he predicted “a long business relationship [between
Gilbert and
AmeriPlan] will be established” once the parties simply had the
opportunity to discuss the domain name and replicated web sites.
In order to
avoid the very confusion of which AmeriPlan complains, Gilbert was extremely
careful to represent his independent brokerage
as www.ameriplan.com. That is the actual name of the brokerage and
is the only name used on the website. Not once is Complainant’s design and word
mark
used nor does Gilbert refer to his brokerage as AmeriPlan or AmeriPlan
USA.
There are no circumstances indicating
that Respondent has registered or has acquired the domain name primarily for
the purpose of
selling, renting, or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or
service
mark or to a competitor of that Complainant, for valuable consideration in
excess of Respondent’s documented out-of-pocket
costs directly related to the
domain name.
New Wave acquired the domain name
and the other domain names referred to above,
solely for the purpose of opening and operating an AmeriPlan independent
brokerage and, with the company’s approval, of offering a
service to other
independent brokers (in the form of the “replicated sites”). New Wave’s
operations and Mr. Gilbert’s conduct indicate
that he acted in good faith.
Disputing his pattern of conduct is only Complainant’s assertion that Mr.
Gilbert demanded $60,000 for
the transfer of the domain name.
Complainant’s assertion is false.
Gilbert never offered to sell the domain name. He has no intention of selling
the domain name. He
has valued the potential income from his brokerage (one
component of which is the domain name at issue) at approximately $1,191,475.00
after only three years of operation. An offer to sell the domain name, an
integral element of Gilbert’s brokerage, for $60,000 is
not plausible.
Respondent has not registered the domain
name in order to prevent the owner of the trademark or service mark from
reflecting the mark
in a corresponding domain name and has not engaged in a
pattern of such conduct.
AmeriPlan has successfully
operated its general information site at <ameriplanusa.com> for over six
years. That address corresponds to its
trademark. By its own admission,
AmeriPlan had the opportunity to purchase the domain name at issue from the
prior owner but declined to do so.
Neither New Wave nor Gilbert has any pattern
of purchasing and reselling domain names.
This alone defeats a finding of bad faith on this ground.
Respondent has not registered the domain
name primarily for the purpose of disrupting the business of a competitor. Gilbert
is not a competitor of Complainant. He is a registered, authorized AmeriPlan
independent sales broker. Every sale he makes
benefits Complainant. Complainant
does not enroll customers. Complainant and Gilbert could not be further from
“competitors.”
Complainant
only suspended or “froze” Respondent’s account in an effort to expropriate the
domain name at issue after it realized
the value of the replicated web sites.
Gilbert has commenced a civil action in California Superior Court demanding his
immediate
reinstatement and compensation for this illegal action.
Respondent has not intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s web
site by creating a
likelihood of confusion with the Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of Respondent’s web
site.
Gilbert’s use of <ameriplan.com>
for his brokerage domain name was approved by Complainant. This alone, in
equity, prevents Complainant from claiming a likelihood
of confusion or
diversion of traffic. A licensee, such as Gilbert was in fact, cannot be held
to have infringed a trademark.
Further, trademark fair use
dictates that a reseller of a good or service has the right to use the name of
the good or service for
promotional or sales purposes. The trademark fair use
doctrine requires that such use be minimal and accurate, as it is in this case.
Insurance agents that serve as brokers for insurance companies surely have the
right to refer to their companies or web sites by
the names of the companies
they serve. There can be no mistake as to source, affiliation, sponsorship or
endorsement because Gilbert
does indeed offer enrollment for Complainant.
Finally, Complainant’s web site
does not enroll customers. Broker web sites, such as that operated by
Respondent, do enroll customers.
The functional distinction between these two
processes prevents any customer confusion.
Complainant’s additional submission raised the following
points:
Gilbert did not
follow corporate policy which requires Marketing Services to approve all web
sites. Gilbert did not obtain such permission
but rather sought permission of
Wilson, the Western Region Sales Manager, who does not have the authority to
grant the approval of
a web site. Furthermore, Wilson has declared that
Respondent’s current web site does not “look anything like the site” he
approved
in November of 2001, and that the understanding was that the
replicated sites were to be free to Brokers.
While New Wave is
a corporation, Gilbert is responsible for the content of <ameriplan.com>
and New Wave is responsible for hosting and purchasing on his behalf. New Wave
is wholly owned by Gilbert.
The addition of
the generic or common term USA to the term ameriplan is not sufficient enough
to make it not confusingly similar to
Complainant’s trademark. Furthermore,
Complainant uses the terms AmeriPlan and AmeriPlanUSA interchangeably in its
materials.
Complainant has
not endorsed, licensed or allowed any site to use its trade name or trademark
on the Internet. In the past, all notifications
of illegal web site or URLs
were made to Brokers as Complainant became aware of them. Since February 11,
2002, Complainant has a
fulltime Internet Compliance Officer.
When Respondents
purchased numerous domain names in July and August, 2001, he was not then doing
business with Complainant, nor was
he commonly known as AmeriPlan. Respondent’s
business cannot be seen as bona fide because he had knowingly broken
Complainant’s rules
before he even entered into an agreement with Complainant.
Complainant
submits that the correspondence from Cecil Mathis submitted with the Response
should be excluded from evidence on the
ground that it is a statement offering
to compromise a dispute and therefore is not admissible to prove liability.
Gilbert was only
a broker of Complainant for one month when the offending web site was brought
to Complainant’s attention and Complainant
directed that a cease and desist
letter be sent. Furthermore, Respondent signed an agreement in which he agreed
that he was not allowed
to use the AmeriPlan logo, graphics from the AmeriPlan
web site or the AmeriPlan name (except the name may be used in a link back
to
the Ameriplan web site).
Brokers,
potential brokers and Members of AmeriPlan have been confused and misled by the
domain name. Gilbert himself chose the domains
to be misleading. For example,
<ameriplanuas.com> was obviously designed to catch customers who mis-type
Complainant’s URL.
Complainant filed
a declaration by Dennis Bloom, CEO of Complainant to the effect that Gilbert
did offer to sell the domain name for
$60,000. This was far beyond the out of
pocket expenses incurred by Respondent. Furthermore, Respondent’s calculations
of potential
income from his brokerage are completely unrealistic given his
performance.
Gilbert is a
competitor of Complainant in the sense that they both can attract and sign up
Brokers. Also Complainant offers independent
web broker web sites to its
Brokers and Respondent is acting in competition with Complainant in this
respect.
There is no
trademark fair use in this case because the use by the reseller must be minimal
and accurate, and this is not the case.
Respondent filed
an unlimited civil complaint against Complainant for breach of contract, breach
of the implied covenant of good faith
and fair dealing, interference with
prospective business advantage, intentional infliction of emotional distress,
negligent infliction
of emotional distress and unfair business practices on
February 7, 2002, in Superior Court for the State of Californian, Orange
County,
Santa Ana. The case is identified as No. 02CC02601. Respondent’s motion
for a preliminary injunction was heard on March 15, 2002
and was denied.
Complainant has filed a Motion to Dismiss and Quash Service and the hearing of
that motion is set for April 24, 2002.
Respondent
disagrees with Complainant on the question of whether the Western Divisional
Sales Manager had the authority to approve
Respondent’s web site and submitted
evidence that another Broker was referred to said Manager when seeking approval
for ad copy.
Respondent repeats its position that it received Complainant’s
approval when it received approval from the Western Division Sales
Manager.
Respondent
repeats its position that <ameriplan.com> is not confusingly
similar with AmeriPlan USA. Respondent submits that long time use of “ameriplan”
in a number of web sites mitigates
against any confusion.
Respondent
submits that Complainant delayed two years in seeking to enforce its rights,
and this gives rise to a defence of laches,
and demonstrates that if confusion
were a problem Complainant would not have waited so long to do something.
Furthermore, Complainant’s
approval of the web site gives rise to estoppel and
amounts to acquiescence and a promise that Complainant would not assert its
trademark
rights against Respondent. Respondent relied to his detriment on
those representations and has been substantially damaged, including
the costs
of this administrative proceeding.
Complainant’s
admission that use of ameriplan in domain names has been unregulated by
Complainant until February 2002 is evidence
of abandonment of the mark through
uncontrolled licensing.
Respondent argues
that the only similarity between his web site and Complainant’s web site is
five small images that appear to be
from off-the-shelf graphics programs.
Otherwise, Respondent says he constructed his web site using his own graphics
and text.
Respondent argues
that purchase of domain names before he became a Broker is not evidence of bad
faith, but rather was merely preparation
for establishing the brokerage.
Respondent asserts that his investigation of sites and the permission granted
by Wilson demonstrate
that he acted in good faith.
Respondent
asserts that the fact the letter from Complainant’s counsel seeks to settle the
civil suit is admissible because a letter
that makes an offer but that does not
expressly request that any claims be dropped or any rights relinquished is not
an inadmissible
settlement offer. Complainant’s letter is not identified as an
offer of settlement nor did it call for relinquishment of any rights.
Respondent says
there is no likelihood of confusion with Complainant’s mark because of the
multi-level marketing nature of Complainant’s
business. Complainant does not
sign up members. Its site is only an information site about services that its
brokers offer, how to
become a broker and a listing of broker benefits. You
can’t sign up as a broker or a member on Complainant’s web site. A person can
provide contact information that is then provided to a random broker.
Complainant
provides cookie-cutter web site solutions to its brokers, but these are not
adequate web marketing tools for its brokers.
Respondent denies
offering to sell the domain name at issue in Gilbert’s conversation with Bloom
on January 23, 2002. Gilbert taped
the conversation and submits what is alleged
to be a digital version of conversation in evidence. Respondent asserts that in
that
conversation he never offered to sell the domain name. Respondent also
asserts that during that conversation Bloom admits that Wilson
approved the web
site and the use of the <ameriplan.com> domain name.
Respondent says
these clear contradictions should cast all evidence introduced by Complainant
in doubt.
Respondent requests that the panel not consider any submissions
of the Complainant after the Complainant’s first Additional Submission
because
they violate Supplemental Rules 7 and 8.
Respondent
responded paragraph by paragraph to Complainant’s Additional Submission. While
Complainant may have been surprised that
Gilbert had a tape of the January 23,
2002 conversation with Bloom, Complainant first identified this as the
conversation where Gilbert
had allegedly demanded $60,000. Respondent asserts
that because Bloom has apparently committed perjury in so attesting, as
demonstrated
by the recording, Complainant now seeks to raise as many
extraneous issues as possible in a quick-fire manner to confuse the case.
In this submission, Complainant questions the legality of
the recording of the telephone conversation between Bloom and Gilbert.
Thereafter,
there are additional e-mail submissions of the parties arguing this
point.
FINDINGS
We
have set out the parties submissions in some detail in this case to demonstrate
the complexity of the issues, thereby assisting
the Panel to explain our
reasons for dismissing this Complaint. The Panel dismisses the Complaint for
two reasons. First, we consider
that this is not the type of case that a UDRP
Panel should decide on the merits. Secondly, since there is a civil action
pending
against the Complainant, any decision to transfer the domain name by
the Panel will be immediately mooted upon issuance. There is
therefore no good
reason to decide this case on its merits.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint
on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of
law that it deems applicable.”
Paragraph 4(a) of
the Policy requires that the Complainant must prove each of the following three
elements to obtain an order that
a domain name should be cancelled or
transferred:
(1) the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the domain
name has been registered and is being used in bad faith.
In this case, the Panel has decided not
to consider the case on its merits, so we will not be considering these three
elements. We
have outlined the evidence and submissions of the parties to
demonstrate the complexity of the issues in this case. Because of the
number
and complexity of the issues and the reasons which will follow, the Panel is of
the view that this is not a dispute we should
be deciding on its merits and
that our decision should leave the domain name registration status quo.
The narrow grounds on which a Panel is permitted
to rule under the UDRP, in this case, would require the examination of several
complex
factual and legal issues. Such predicate issues (for example, the
interpretation of a contract and determination of whether or not
it has been
breached) may be best determined by a more robust forum. Under Section 5 of the
Policy, disputes outside of the narrow
framework set out in Section 4 of the
Policy "... shall be resolved through any court ... available."
While Section 5
primarily seems to be concerned with using a UDRP forum to
settle matters unrelated, or indirectly related, to issues concerning
domain
name registration and use, a complainant or respondent should not be permitted
to use a UDRP claim to boot strap decisions
regarding more senior disputes
between the parties. This is especially so when, as here, an action is already
pending in a Court
of competent jurisdiction.
The pivotal issue in this UDRP dispute is
whether or not there has been a breach of the contract between the Complainant
and the Respondent.
It would be impossible for this Panel, with the sparse and
conflicting statements before us, to make that decision without considerable
improper speculation. There are numerous evidentiary issues that could only be
resolved by testing of evidence through full disclosure
and cross-examination.
We are not prepared to so speculate, nor need we do this because the issues are
already before another forum
in California.
Rendering a decision on the merits when there is
already a court action pending does violence to the one function of the UDRP -
to
reduce the cost and effort required to resolve domain name disputes issues
by offering a simplified mechanism in lieu of litigation.
Instead of minimizing
the amount of effort (time and money) needed to resolve a dispute, filing a
UDRP proceeding when the parties'
dispute is already in front of a court, adds
to that effort.
We are also of the view that the Policy at
Section 4(k) has some application here. When evidence of a court proceeding is
submitted
ICANN "will not implement the Administrative Panel's decision,
and ... take no further action until . . ." the court proceeding
is
resolved. No purpose is served by our rendering a decision on the merits to
transfer the domain name, or have it remain, when
as here, a decision regarding
the domain name will have no practical consequence. This coupled with the
complexity of the issues
involved in this case which in our view require the
testing of the credibility of both sides and the determination of a number of
legal issues that require much better evidence and argument, leads us to the
conclusion that this is not a case on which this Panel
should rule.
DECISION
The
Complaint of AmeriPlan Corporation with respect to the domain name <ameriplan.com>
is hereby dismissed.
Anne M. Wallace, Q.C., Panel Chair
Dated: April 22, 2002
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