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Generic Top Level Domain Name (gTLD) Decisions |
ARBITRATION BEFORE THE
NATIONAL ARBITRATION FORUM
REGARDING AN INTERNET DOMAIN NAME DISPUTE
__________________
JACCARD
CORPORATION )
3421 North
Benzing Road )
Orchard Park,
New York 14127 )
)
Complainant )
)
v. ) Forum File No. FA0303000152463
)
GDC ) Domain Name in Dispute:
17 Buckeye
Road ) <jaccard.com>
Amherst, New
York 14226 )
)
Respondent )
DECISION
PARTIES
Complainant is Jaccard Corporation, Orchard Park, NY
("Complainant") represented by Michael
McDaniel, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria LLP. Respondent is GDC,
Amherst, NY ("Respondent") represented by Ari Goldberger, of ESQwire.com
Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name
at issue is <jaccard.com>,
registered with Network Solutions, Inc.
(hereinafter "NSI").
PANEL
The Panelists are
the undersigned, Honorable Robert R. Merhige, Jr. (Ret.); Rodney C. Kyle; and
David E. Sorkin.
Each Panelist
certifies that he has acted independently and impartially and to the best of
his knowledge has no known conflict in
serving as a Panelist in this
proceeding.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on March 28, 2003; the
Forum received a hard copy of the
Complaint on March 31, 2003.
On April 8, 2003,
Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <jaccard.com> is 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 April 8, 2003,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"),
setting a deadline of April 28, 2003 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@jaccard.com by e-mail.
A timely Response
was received and determined to be complete on May 19, 2003.
Complainant’s
Additional Submission was received and determined to be timely on May 27, 2003.
Respondent’s
Additional Submission was received and determined to be timely on June 2, 2003.
On June 6, 2003, pursuant to Respondent’s request to have the dispute
decided by a three-member Panel, the Forum appointed the Honorable
Robert R. Merhige, Jr. (Ret.), Rodney C. Kyle, and David E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant
requests that the registration of the domain name at issue be transferred from
Respondent to Complainant.
Respondent
requests a declaration that Complainant abused this proceeding and engaged in
reverse domain name hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
Basically,
Complainant makes three main contentions.
First,
Complainant basically contends by way of seven points that (i) Complainant is
the owner of United States Trademark Registration
No. 1,172,879, issued 13
October 1981, for the mark JACCARD in International Class 7 for a meat tenderizer
machine, United States
Trademark Registration No. 1,216,431, issued 16 November
1982, for the mark IT’S JACCARDIZED in International Class 8 for a meat
tenderizer in the nature of a hand tool, and United States Trademark
Application Serial No. 78/216,383, filed 19 February 2003, for
the mark JACCARD
in International Class 8 for manually operated meat tenderizers, manually
operated cutters for food, manually operated
choppers for food, operated food
shredders and manually operated food slicers; (ii) each of Complaint Exhibits
A, B, and C is a print-out
of authoritative ownership information from the
database of the United States Patent & Trademark Office respectively
evidencing
said trademark registrations and application; (iii) Complainant first
used said JACCARD mark in interstate commerce in 1964 to designate
its
products; (iv) said marks are famous and are used by Complainant as a
manufacturer and worldwide provider of such goods, both
on its goods and in the
promotion, advertisement, and sale thereof; (v) said trademark registrations
are but examples of trademark
registrations of JACCARD, and variations thereon,
that Complainant owns such as in China, Hong Kong, Japan, Taiwan and Turkey;
(vi)
Complainant registered the domain name <jaccardweb.com> on 30
December 2001, as evidenced by a print-out of current WHOIS information
that is
Complaint Exhibit H, and, no later than 30 December 2001, Complainant adopted
and commenced use of its famous JACCARD mark
in interstate and international
commerce for the purpose of designating a website at <jaccardweb.com> to
promote its goods,
as evidenced by a print-out of the current opening page of
said Complainant website that is Complaint Exhibit F; and (vii) the domain
name
<jaccard.com> was registered
by Respondent (pursuant to a domain name registration agreement evidenced by
the agreement document that is Complaint
Exhibit G) on 14 October 1998 (as
evidenced by a print-out of current WHOIS information that is Complaint Exhibit
D) which is long
after Complainant’s JACCARD mark was first adopted and
registered by the Complainant, comprises Complainant’s famous JACCARD mark
in
its entirety (the addition of ".com" to Complainant's famous JACCARD
mark not distinguishing said domain name from said
mark), strongly suggests
affiliation with or connection to or endorsement by Complainant, and therefore
is confusingly similar to
said marks, and (as evidenced by the print-out of the
current opening page of a website operating at <jaccard.com> that is Complaint Exhibit E) is being used to
divert internet users to a competing website for commercial benefit.
Second,
Complainant basically contends by way of ten points that Respondent has no
"rights or legitimate interests" in respect
of the domain name at
issue in that (i) Respondent GDC is not an authorized distributor of
Complainant’s JACCARD branded goods, has
no connection or affiliation with
Complainant, and has not received any license, authorization or consent,
express or implied, to
use Complainant’s famous JACCARD registered trademark in
a domain name or otherwise; (ii) the domain name <jaccard.com> was registered by Respondent long after
Complainant’s adoption of the JACCARD mark; (iii) the Website operating at the
domain
name <jaccard.com> is a
commercial Website offering goods and services, in direct competition with
Complainant; (iv) on 19 February 2003, Complainant’s
counsel issued a
registered letter to Respondent demanding, inter
alia, that the <jaccard.com>
domain name be transferred to Complainant, and Complaint Exhibit I is a copy of
said letter and return receipt and evidences said
issuance; (v) no written
response to said letter of 19 February 2003 was forthcoming from Respondent,
which has failed to agree to
transfer the <jaccard.com> domain name to Complainant; (vi) Respondent is not
commonly known by the <jaccard.com>
domain name; (vii) Respondent’s registration of Complainant’s trademark at <jaccard.com> and the sale of goods
manufactured by and in competition with Complainant fails to create or
demonstrate any bona fide offering
of goods-- such use is an illegitimate use
of said domain name and of Complainant’s famous JACCARD mark; (viii) Respondent
is, without
authorization, using a domain name identical and confusingly
similar to Complainant’s famous trademarks as a way to divert Internet
users to
a competing commercial website for commercial benefit; (ix) Respondent’s use of
<jaccard.com> to divert users
to a competing commercial website is not a legitimate, non-commercial fair use
of Complainant’s marks; and (x)
through Respondent’s unfair registration and
use of the domain name <jaccard.com>,
Respondent is causing damage to Complainant’s JACCARD trademark, and
Complainant has no control over said
registration and use.
Third, Complainant basically contends
by way of six points that Respondent's registration
and use of the domain name at issue
are in bad faith in that (i) the use of Complainant’s
famous JACCARD mark to sell JACCARD
branded goods suggests that the Respondent
acquired the domain name <jaccard.com> primarily for the
purpose of confusing
consumers and disrupting
Complainant’s business for financial gain; (ii) there is no
plausible
circumstance in which the Respondent could legitimately use Complainant’s
JACCARD mark; (iii) Respondent acquired the domain
name <jaccard.com> in the hope that
potential customers would believe that the website operated thereat is operated
or endorsed by Complainant,
owner of the famous JACCARD mark; (iv) the domain
name <jaccard.com> is being
used to intentionally attract, for commercial gain, Internet users who are
confused about the seller of the goods available
at, and operators of, the
website, and such use is evidence of bad faith; (v) Respondent’s unauthorized
registration and use of a
domain name identical, and thus confusingly similar,
to Complainant’s JACCARD mark is evidence of an attempt to disrupt
Complainant’s
business; and (vi) there is no plausible situation in which the
Respondent would have been unaware of Complainant’s famous JACCARD
mark at the
time of either or both of registration
or acquisition of the domain name.
B.
Respondent
Basically,
Respondent makes five main contentions.
First, Respondent
basically contends by way of two points that John Felgemacher, rather than GDC,
is the proper respondent in this
proceeding, in that (i) John Felgemacher is an
assignee, from GDC, of the registration of the domain name at issue, since (a)
GDC
was John Felgemacher's website designer and on 14 October 1998 registered
the domain name at issue on behalf of John Felgemacher--
though erroneously in
GDC's name, (b) in April 1999 GDC signed and had notarized an NSI Registrant
Name Change Agreement transferring
it to Keith Felgemacher-- a brother of John
Felgemacher who had been working with John Felgemcher, (c) John Felgemacher has
always
been the user of the domain name at issue, the operator of the
associated website, and listed in the registration as the administrative
contact of the registration-- but, due to further errors with the April 1999
NSI agreement, GDC was never replaced as the registrant
of the domain name at
issue, and (d) Ziggy's Mexican Food, Inc. is a corporation of John
Felgemacher's and on 1 April 2003 John Felgemacher
arranged with NSI for the
registration of the domain name at issue to be transferred to that
corporation-- but the WHOIS records
will not be updated until this proceeding
is concluded and the lock removed from the registration of the domain name at
issue; and
(ii) said assignment (a) is evidenced by Response Exhibits 1 (Declaration of John Felgemacher), 2 (GDC Invoice for
registration of Jaccard.com to John Felgemacher), 3 (NSI Registrant Name Change
Agreement for Jaccard.com), 4 (Letter dated April 25, 2003 from Complainant's
counsel to John Felgemacher's counsel), and 5 (Receipt
of request for transfer
of Jaccard.com) and (b) is in accordance with Ultrafem, Inc. v. Warren R.
Royal (FA 97682, Nat. Arb. Forum Aug. 2, 2001), hereinafter referred to by
the Panel as "Ultrafem",
which Respondent contends is to the effect that "[w]here the assignee of a
domain name is not properly reflected in the
registrar records, the true
assignee has standing as Respondent to file a response in a UDRP
proceeding".
Second Respondent
expressly pleads that it "does not dispute" the identicality of the domain
name at issue to one of Complainant's
registered marks, and implicitly pleads,
at least to the extent that Complainant's first main set of contentions
pertains to such
identicality, that Respondent does not dispute those
contentions.
Third, in response
to Complainant's second main set of contentions, Respondent basically contends
by way of two points that Respondent
has rights or legitimate interests in
respect of the domain name at issue in that, (i) by a perpetual and irrevocable license, made orally and by other
communications and conduct (whereby Complainant, and Complainant's
predecessor-in-title to Complainant's
trademarks, consented to or acquiesced in
(a) Respondent's registration of the domain name at issue, (b) Respondent's
investing substantial
money and effort in developing the corresponding website,
and (c) Respondent's use of the domain name at issue, to sell Jaccard-branded
products on-line), Respondent had and has a privilege to have registered, and
had and has a privilege to use, said domain name, such
that on this topic
Complainant is barred in this proceeding, by either or both of the doctrine of
estoppel or general doctrines of
the law of equity, from contending or, in any
event, from prevailing, against Respondent; and (ii) said contended perpetual
and irrevocable
license is (a) evidenced by Response Exhibits 1 supra, 4 supra,
6 (Sample invoices of sales of Jaccard products from Jaccard of Buffalo
to Respondent), 7 (Invoice from D’Arata & Company to John
Felgemacher), 8 (Declaration of David
D’Arata), and 9 (Email from Eric
Wangler to John Felgemacher) and (b) in accordance with ten
administrative panel decisions under the Policy and which Respondent cites and
either quotes from or summarizes.
Fourth, in
response to Complainant's third main set of contentions, Respondent basically
contends that Respondent has registered said
domain name, and is using said
domain name, but that (in view of the exhibits, and the contended perpetual and
irrevocable license,
referred to in the immediately preceding paragraph hereof)
such registration and use is not in bath faith.
Fifth, Respondent
basically contends by way of three points that Complainant abused this
proceeding and engaged in reverse domain
name hijacking, in that (i)
Complainant had full knowledge of said contended perpetual and irrevocable
license; (ii) despite such
knowledge, Complainant knowingly and intentionally
withheld, from the Panel, material information as to said contended perpetual
and irrevocable license; (iii) that such withholding was contrary to part of
the certification required by Rule 3(b)(xiv) to appear
as the closing paragraph
of the main body of a complaint and
which does indeed appear in the Complaint, i.e. "that the information
contained in this Complaint
is to the best of Complainant's knowledge complete
and accurate".
C.
Complainant’s Additional Submission
In its Additional
Submission, Complainant basically makes four main contentions.
First, by way of
two points, that Respondent's contentions that John Felgemacher is the proper
respondent to this proceeding do not
avail, in that (i) Respondent's contended
chain of title from GDC to John Felgemacher is contrary to headnote 3 of the
Policy, which
headnote provides that the Policy was entered into between, on
the one hand, a domain name registrar and, on the other hand, whomever
is both
the domain name registrant and a prospective mandatory administrative
proceeding respondent, i.e. GDC; and (ii) the Response
was submitted in the
name of John Felgemacher, and contains a self-serving and unsworn declaration
by him as to his purported ownership
of the registration of the domain name at
issue (i. e. Response Exhibit 1, supra),
and as a result the proper respondent, GDC, did not submit a response and the
Panel should enter a default against GDC.
Second, by way of
four points, that said contended perpetual and irrevocable license cannot avail
John Felgemacher or any other person,
in that (i) said contended perpetual and
irrevocable license does not exist and that, rather than being consented to or
acquiesced
in by Complainant or by the predecessor-in-title to Complainant's
trademarks, once aware of the ownership of the domain name at issue
each of
them has opposed Respondent's ownership thereof and has openly expressed discontent
to Respondent about such ownership, trying
for several years to obtain the
domain name at issue; (ii) what is commonly referred to as the statute of
frauds (as interpreted
in D & N
Boening v. Kirsch Beverages, 63 NY2d 449, (1984) and which the Panel hereinafter
generally refers to as "Boening")
requires a writing to memorialize contracts of indefinite terms and there is no
such writing; (iii) Response Exhibit 1, supra,
is a self-serving and unsworn declaration, by John Felgemancher, of little or
no weight; and (iv) if a perpetual license of some
sort was granted, it
was by Andre Jaccard who on behalf of
said predecessor-in-title (without granting a privilege to use JACCARD as a
domain name at <jaccard.com> or
any other domain), merely stated verbally to John Felgemacher that John
Felgemacher could advertise Jaccard meat tenderizers on
the internet, and if
granted it was revocable for cause and was revoked.
Third (basically
in support of the first, second, and fourth contentions in the immediately
preceding paragraph hereof as well as
of bad-faith registration, and bad-faith
use, by Respondent), that Complainant Additional Submission Exhibits A to G
respectively
comprise (a) the Declaration of Complainant's president and owner,
Eric Wangler, who avers under oath as to Complainant Additional
Submission
Exhibits B to G (and, inter alia,
that (i) shortly after said verbal statement by Andre Jaccard, John Felgemacher
effected the registration of the domain name at
issue and boasted that he
thereby now held the keys to Jaccard Corporation and that any owner would have
to pay him $50,000 to get
the domain name back, (ii) John Fegelmacher's
contention of investing substantial money and effort in developing the
corresponding
website is not true since approximately 90% of the content at
said site has been taken verbatim from Jaccard Corporation marketing
materials,
(iii) from 1997 to the present date sales of Jaccard branded goods by way of
the website operating at <jaccard.com>
amounted to $4,559.15 whereas during the same period Jaccard Corporation's
annual sales total approximately $1.1 million, and (iv)
Complainant, and Andre
Jaccard before it, have repeatedly attempted to obtain control of the domain
name at issue by various means
such as requests, demands, and other inducements
but to no avail); (b) an e-mail dated 18 April 2002 from John Felgemacher to
Eric
Wangler, threatening Eric Wangler of Jaccard Corporation; (c) a copy of a
letter, dated 30 April 1999 (i.e. less than one year after
the domain name at
issue was registered by Respondent), from Andre Jaccard to John Felgemacher,
notifying John Felgemacher that he
must release the disputed domain name <jaccard.com> to Jaccard
Corporation; (d) a copy of letter,
dated 30 April 1999, from Andre Jaccard's then-counsel to John Felgemacher,
which letter both provided that said counsel was
surprised to learn that John
Felgemacher was using the domain name at issue and clearly demonstrates that
John Felgemacher did not
have authorization to use the domain name at issue;
(e) a copy of a letter, dated 29 September 1999, from Andre Jaccard to John
Felgemacher,
stating that John Felgemacher was no longer an authorized
distributor of Jaccard brand goods, that at least as early as September
1999
John Felgemacher had promised and failed to shut down the website associated
with the domain name at issue, and threatening
legal action against John
Felgemacher for John Felgemacher's misuse of the JACCARD trademark; (f) an
exchange of e-mails, taking
place on 22 December 2002 and 2 January 2003,
between Eric Wangler of Jaccard Corporation and <zzBusiness.com>, an
on-line
business portal, informing the operator of said portal that the website
at <jaccard.com> is not related to Jaccard Corporation
and asking that
said portal operator change the link to <jaccardweb.com>, the official
website of Jaccard Corporation; and (g)
an undated printout from the website at <jaccard.com>
suggesting it is the official website of Jaccard Corporation.
Fourth, as to
reverse domain name hijacking, that Complainant did not engage in it, as
indicated by the contentions described in the
immediately preceding three
paragraphs.
D.
Respondent’s Additional Submission
In its Additional
Submission, Respondent basically makes five main contentions.
First, as to John
Felgemacher being the proper respondent, Complainant's Additional Submission
concedes to John Felgemacher's being,
since 1998, the owner and user of the
domain name at issue.
Second,
that in view of Complainant's having stated in Complainant's Additional
Submission that Response Exhibit 1 is unsworn, substitute
evidence for Response
Exhibit 1 comprises John Felgemacher's sworn declaration, attached as
Respondent Additional Submission Exhibit
1 and which evidences what Response
Exhibit 1 had evidenced plus further testimony relevant to issues raised by
Complainant's Additional
Submission.
Third, that said
further testimony is that (as evidenced by credit card statements attached as
an exhibit to Respondent Additional
Submission Exhibit 1), along with a company
owned by Eric Wangler, Complainant and the predecessor-in-title of
Complainant's trademarks
supplied John Felgemacher with Jaccard branded
products in 2000 and 2001 and those products totaled approximately $17,000 and
were
in turn sold through <jaccard.com>,
evidencing Complainant's and said predecessor-in-title's recognition of and
acquiescence in said contended perpetual and irrevocable
license.
Fourth, that on 7
May 1999 and 5 October 1999 John Felgemacher replied to the letters from Andre
Jaccard referred to in Complainant's
Additional Submission, copies of which
letters from John Felgemacher are Respondent Additional Submission Exhibit 2
and evidence
said contended perpetual and irrevocable license.
Fifth, basically,
that the statute of frauds is inapplicable to said contended perpetual and
irrevocable license whereas the administrative
panel decision in Gorstew Limited, Jamaica, and Unique
Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000),
which the Panel hereinafter refers to as "Gorstew", is applicable or, alternatively, that to the extent
that both Gorstew and the statute of
frauds apply and conflict, Gorstew
prevails over the statute of frauds to the extent of that conflict.
FINDINGS
The
Panel finds
(i)
the domain
name at issue <jaccard.com> is
registered to Respondent, there are United States Trademark Registrations No.
1,172,879 as to JACCARD and No. 1,216,431 as
to IT’S JACCARDIZED, and in which
Complainant has rights, and the domain name at issue is either or both of
identical or confusingly
similar thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name at issue;
and
(iii)
the domain
name at issue has been registered and is being used in bad faith.
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 and 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:
(i)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(ii)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second,
especially as to mode "3", that Rule 10(d) provides that "The
Panel shall determine the admissibility, relevance,
materiality and weight of
the evidence." Third, as to construing and applying Rule 10(d), especially
as to whether mode "1"
rather than mode "3" applies: a
complainant’s pleading of fact that is not disputed (or, phrased differently,
not "put
in issue") by a respondent against whom it is contended, is
an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being
"relevant to") establishing that fact becomes immaterial,
and hence
inadmissible, as to establishing that fact.[3]
Fourth, as to whether mode "2" rather than either of mode
"1" or mode"3" applies, a canvassing of law
and commentary
shows that
It
was not desirable, nor indeed possible, to foreclose the trier's use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
and that
"The party who has the burden of proof on the issue may have to call on
the trier to judicially notice the fact when
it comes time to analyze the
question."[5]
Also in
view especially of Rule 15(a), the Panel notes three rules and principles of law that it especially deems applicable to
ascertaining whether each of the three elements of Policy paragraph 4(a) has
been proven. First,[6] that laws
are rules of human conduct that have the following three attributes: they (i)
are established by people who have and use
law-making power; (ii) are
enforceable by people acting as or through a nation-state (e.g. courts); and
(iii) define what facts are
dispositive of legal relations. Second,[7]
that, at least in common-law nation-states, law basically comprises those rules
of human conduct, in and as to the following ascending
hierarchy: rules of the
common law, rules of the law of equity, rules of enacted law (i.e. enactments),
and rules (from whatever
source) of constitutional law. Third,[8]
rules of the common law and rules of the law of equity, as well as some rules
of constitutional law, are commonly referred to as
judge-made law in the sense
of being "the law established by judicial precedent and decisions … [and]
… having their source
in judicial decisions as opposed to laws having their
source in statutes or administrative regulations."
What
then, of the Policy, rules made under the Policy, and administrative panel
decisions made under the Policy and under such rules?
It is basic that neither
the Policy nor rules made under the Policy are law.[9]
(Moreover, there are court decisions to that effect.[10])
As well, this Panel agrees with earlier administrative panel decisions under
the Policy that "as general rule, it is desirable
to have conformity with
the decisions of earlier panels in relation to the same or closely similar
facts"[11] and that
"[i]n this process, we should look to prior panel decisions to offer
guidance, and, to the extent reasonable, we should
attempt to harmonize our
decisions with those of prior panels"[12]
and be "reluctant to point up areas of disagreement with other panels
dealing with other sets of facts".[13]
However, consistently with neither the Policy nor rules made under the Policy
being law, it appears that administrative panel decisions
under the Policy are
not law and that there is not any enactment, or adjudication, or convincing
learned commentary, to the contrary.
Indeed, previous administrative panel
decisions under the Policy have included that decisions by previous panels
"are not binding"[14]
and that "the principle of stare
decisis does not apply in these proceedings and that the Panel is not bound
by decisions reached by earlier panels".[15]
PROCEDURAL ASPECTS
Considering, or Not Considering, Various
Submissions
Except for the following,
neither Party’s Additional Submission permissibly provides anything pertinent
that, in view of the Complaint
and the Response, was not already apparent to
the Panel as being at issue in this proceeding or as being the responsibility
of the
Panel: (i) Complainant Additional Submission contentions concerning (a)
John Felgemacher not being the proper respondent, (b) the
contended perpetual
and irrevocable license and the interaction thereof with contended revocation
and with the statute of frauds,
and (c) reverse domain name hijacking; and (ii)
Respondent Additional Submission contentions concerning the interaction of the
statute
of frauds with Gorstew and
with the contended perpetual and irrevocable license.
As for Additional
Submissions considered by the Panel, in this proceeding it was in the Response
that Respondent first asserted to
Complainant that (i) John Felgemacher is a
proper party to this proceeding; (ii) Respondent has said contended perpetual
and irrevocable
license; and (iii) Complainant engaged in reverse domain name
hijacking. Even if a prospective complainant is aware that a prospective
respondent is or might be of the view that in relation to the complainant a
particular person has interests (e.g. as to standing,
or a license, or against
reverse domain name hijacking), the complainant may not necessarily be of the
same view, and it is a basic
principle of making submissions, which principle
does not conflict with the Rule 3(b)(xiv) requirement of certification of
completeness
and accuracy, that a complainant's submissions in proceedings such
as this (as contrasted with e.g. an ex
parte proceeding) not expressly anticipate any of a respondent's defenses
in factual detail or as to the law; it is up to a respondent
to defend
themselves rather than, for example, a complainant to raise and then wholly or
partially rebut possible defenses that the
respondent might raise. Similarly,
in this proceeding it was in Complainant's Additional Submission that
Complainant first asserted
to Respondent each of the following: (i) if John
Felgemacher was licensed it was only to advertise Jaccard meat tenderizers on
the
Internet (rather than to register and use JACCARD as a domain name at <jaccard.com> or any other
domain), and that such license had been revoked; and (ii) that the statute of
frauds is a defense against Respondent's
contended perpetual and irrevocable
license.
As for Additional
Submissions not considered by the Panel, Complainant's Additional Submission as
to Response Exhibit 1 (i.e. that
it is a self-serving and unsworn declaration
and is therefore of little or no weight) is clearly on a topic that is apparent
to the
Panel as already being the responsibility of the Panel. Similarly,
Respondent's Additional Submission of, and as to, sworn evidence
to substitute for
John Felgemacher's unsworn declaration, and which evidence is made part of
Respondent Additional Submission as
Exhibit 1, is an attempt to amend the
Response, and therefore is clearly contrary to the Forum's Supplemental Rule
7(d) which provides
that "Additional
submissions and responses to additional submissions may not amend the original
Complaint or Response." (The same is not true, however, of the
submissions of and as to Respondent Additional Submission Exhibit 2 or of and
as to
the last few paragraphs of Respondent Additional Submission Exhibit 1 and
the attachments to that Exhibit 1.) Several administrative
panel decisions
under the Policy include statements, whether as to evidence or otherwise, that
the Parties are expected to "get
it right the first time".[16] In view of all of the above, the Panel
prefers to apply that approach to the newly-sworn quality of the re-submitted
parts of Respondent
Additional Submission Exhibit 1, but neither as to
procedural aspects nor as to substantive aspects of this case has that
preference
affected the outcome of this case: on each topic Complainant
prevails either way.
As well, each
Party's Additional Submission to some extent repeated that Party's original
submission, and the Panel has endeavored
to neither set out nor consider such
repetition.
Proper Respondent
On
this topic, this case appears to have more in common with America Online, Inc. v. Informatics, Inc., FA 104570 (Nat. Arb.
Forum March 15, 2002) (finding that a submission by an entity other than the entity
who registered the disputed
domain name was inadmissible in the proceeding) and
Broadcom Corp. v. Philippines Online c/o
InfoDyne, FA 96683 (Nat. Arb. Forum March 20, 2001) (stating "[t]here
is no obligation under the Policy to recognize any party other
than the holder
of the domain name registration") than with Ultrafem.
However, even
taking John Felgemacher as Respondent, Complainant still prevails in the
substantive aspects of this proceeding.
Reverse Domain Name
Hijacking
In view of the
Panel's disposition of the substantive aspects of this proceeding, the Panel
dismisses the request for a declaration
of reverse domain name hijacking.
SUBSTANTIVE
ASPECTS
As for Policy
paragraph 4(a)(i), Respondent basically does not take issue with Complainant's
contentions. On this topic, those contentions
are therefore admitted by
Respondent and Complaint Exhibits A to H are therefore immaterial and hence
inadmissible.
In view of the
immediately preceding paragraph hereof, the Panel finds that Policy paragraph
4(a)(i) is proven: the domain name at
issue <jaccard.com> is registered to Respondent, there are United
States Trademark Registration Nos. 1,172,879 (issued 13 October 1981, for the
mark
JACCARD in International Class 7 for a meat tenderizer machine) and
1,216,431 (issued 16 November 1982, for the mark IT’S JACCARDIZED
in
International Class 8 for a meat tenderizer in the nature of a hand tool), and
in which Complainant has rights, and said domain
name is identical thereto.
Even
if the Panel were to allow Respondent's attempted substitution of sworn
evidence for unsworn evidence, Complainant still prevails
on this topic.
The
context in which this part of this discussion occurs includes (i) Policy paragraph
4(c); (ii) consent or acquiescence; (iii) the
applicable statute of frauds
along with court decisions thereunder and the relationship of administrative
panel decisions thereto;
and (iv) administrative panel decisions as to burden
of production.
Policy
Paragraph 4(c)
Policy paragraph 4(c) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy paragraph] 4(a)(ii):
(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial
or fair use of the domain name, without intent for commercial gain to
misleadingly
divert consumers or to tarnish the trademark or service mark at
issue.
(See
endnote 2 hereof for some provisions of Rule 5.)
As
for Policy paragraphs 4(c)(iii) and 4(c)(ii), neither of them appears to be
contended for or against by evidence in this proceeding.
As
for Policy paragraph 4(c)(i), and the preamble of Policy paragraph 4(c), they
appear to be contended for or against by evidence
in this proceeding, i.e. by
evidence for or against Respondent's contended perpetual and irrevocable
license.
Even
conflicting evidence is no bar to resolution of disputes that are submitted to
a mandatory administrative proceeding under the
Policy; see e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
D2000-1525 (WIPO Jan. 29, 2001) citing both Electronic
Commerce Media, Inc. v. Taos Mountain,
FA 95344 (Nat. Arb. Forum Oct. 11, 2000) and Do the Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000).
Consent or Acquiescence
Neither
consent to, nor acquiescence in, Respondent's contended perpetual and
irrevocable license appears to have occurred in this
case.
In
Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, D2002-0799
(WIPO Oct. 10, 2002), includes, with underlining added herein, that
even where a reseller is an authorized
reseller, without a specific agreement between the parties, the reseller
does not have the right to use the licensor’s trademark as a domain name. Nikon,
Inc. and Nikon Corporation v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52
(4th Ed. 2000) ("licensee’s
use [of a mark] inures to the benefit of the
licensor-owner of the mark and the licensee acquires no ownership rights in the
mark
itself."). Thus, even if Respondent is acting on behalf of an
"authorized" dealer (indeed, even if Respondent were
itself an
authorized dealer), its use of Complainant’s mark would not be legitimate absent
a specific agreement between Complainant and Respondent to the contrary.
There is no evidence of such an agreement here. The Panel finds that
Complainant
has shown that Respondent has no legitimate interest in the domain
name.
As
in that case, so too in this case: there is no evidence of an agreement between
Complainant and Respondent whereby Respondent has
either or both of a privilege
to have registered, and a privilege to use, the mark that is the subject of one
or more of Complainant's
trademarks as a domain name. Nor is there any evidence
that Respondent has obtained either or both of such types of privilege by
any
other means.
This
case is much like Galatasaray Spor Kulubu
Dernegi, Galatasaray Pazarlama A.S., Galatasaray Sportif Sinai Ve Ticari
Yatirimlar A.S. v. Maksimum Iletisim
A.S. D2002-0726 (WIPO October 15, 2002). That case illustrates that a
prospective complainant's co-operation with a prospective respondent,
regarding
the disputed domain name and that prospective respondent's then-extant website,
does not necessarily result in acquiescence
by that prospective complainant. As
stated in part 6 thereof as to Policy paragraph 4(c), the evidence in that case
(over an approximately
two year period and including the complainant's having
on at least one occasion expressly "approved" that website) indicated
to the panel in that case that "[t]hroughout the period in question the
Respondent knew perfectly well that the Complainant
objected to the
Respondent's ownership of the Domain Name and was calling for its
transfer" and that "there was still a
live dispute over the ownership
of the Domain Name and no acquiescence on the part of the Complainant. That
being the case, notwithstanding
the co-operation between the parties, the
Respondent still has a case to answer."
Statute of Frauds, Court Decisions
Thereunder, and the Relationship of Administrative Panel Decisions Thereto
Complainant
appears to be the first disputant, in a proceeding under the Policy, to have
pleaded a statute of frauds; indeed, there
do not appear to be any previous
reasons for decision, under the Policy, even mentioning a statute of frauds.
If a statute of frauds is potentially
applicable as a result of Complainant's pleading, it is New York General
Obligations Law §5-701,
subdivision a, paragraph 1,[17]
which is as follows:
Every
agreement, promise or undertaking is void, unless it or some note or memorandum
thereof be in writing, and subscribed by the
party to be charged therewith, or
by his lawful agent, if such agreement, promise or undertaking:
1. By its terms is not
to be performed within one year from the making
thereof or the
performance of which is not to be completed
before the end of a lifetime[.]
The
Panel notices Cron v. Hargro Fabrics, which includes[18]
that
[t]he
Statute of Frauds was originally rooted in the prevention of "fraud in the
proving of certain legal transactions
particularly susceptible to deception, mistake and perjury" (Boening, Inc. v Kirsch Beverages, supra,
63 NY2d, at 453) but not "'to afford persons a means of evading just
obligations'" (Cohon & Co. v
Russell, 23 NY2d 569, 574, quoting 4
Williston, Contracts, § 567A, pp 19 20 [3d ed.]).
(Boening was, of course, expressly
referred to in Complainant's Additional Submission.)
The
Panel also notices that Cron also
includes[19] that
New York law
provides that an agreement will not be recognized or enforceable if it is not
in writing and "subscribed by the
party to be charged therewith" when
the agreement "by its terms is not to be performed within one year from
the making
thereof ..." (General Obligations Law § 5 701[a][1]). We have
long interpreted this provision of the Statute of Frauds to encompass
only
those contracts which, by their terms, "have absolutely no possibility in
fact and law of full performance within one year"
(Boening, Inc. v Kirsch
Beverages, 63 NY2d 449, 454). As long as the agreement may be "fairly
and reasonably interpreted" such that it may be performed within a year,
the Statute of Frauds will not act as a bar however unexpected, unlikely, or
even improbable that such performance will occur during
that time frame (Warren Chem. & Mfg. Co. v Holbrook, 118 NY 586, 593; see also, Kent v Kent, 62 NY 560, 564; Nat Nal
Serv. Stations v Wolf, 304 NY
332, 335; North Shore Bottling Co. v Schmidt & Sons, 22 NY2d 171, 175; Shirley Polykoff Adv. v Houbigant, Inc.,
43 NY2d 921, 922 [contract "which by its terms [could] be performed within
a year *** would be without the statute even if, as a practical
matter, it were
well nigh impossible of performance within a year"]; Boening, Inc. v Kirsch
Beverages, supra, 63 NY2d, at 455
[statute will not bar agreement where "there might be any possible means
of performance within one year ***
in whatever manner and however
impractical"]).
The Panel further
notices Romaine v. Colonial Tanning Corporation et al.,[20]
which includes and applies the statement[21]
that "[a]n agreement that cannot be performed within one year is void
under the statute of frauds unless it is in writing and
subscribed by the party
to be charged". Romaine also
includes accurate summary, and apt application, of two cases. First, at 2 to 3,
that "whenever the option of terminating
the contract is not an option
retained by the party, but instead, a breach of the agreement, the statute of
frauds applies (see D & N Boening
v. Kirsch Beverages, [63 NY2d 449] at
456)". Second, at 4, that "full performance by both parties generally
must be possible within a year
to remove the contract from the statue of frauds
(see Cron v. Hargro Fabrics, 91 NY2d 362 …) … [and that in Romaine] [t]he oral agreement … cannot be performed within one year
and, accordingly, is void under the statute of frauds." The Panel
also
notices that Romaine was a case, like
the case at hand, of a type in which it is relatively rare for the Statute Of Frauds to be pleaded in that,
as is stated in Romaine,[22]
"the existence of an underlying oral agreement is in dispute since the
complainant-corporation denies an agreement was ever
reached and, thus, all
terms of the contract are based on" Respondent's allegations.
There is well-established
New York case-law (similar to case law in other jurisdictions) requiring that
for that statute of frauds
to be satisfied the acts have to be
"unequivocally referable to" the contended contract, in the sense of
being "unintelligible
or at least extraordinary" except by reference
to the contended contract.[23]
The acts in this case do not meet that test. Although the invoices in
Respondent's Additional Submission were of some concern to
the Panel,
ultimately they are not unequivocally referable to Respondent's contended
perpetual irrevocable license; they appear to
be, for example, referable to
point "iv" of the second main contention in Complainant's Additional
Submission as set out
above, and to point "iv" of item "a"
in the third main contention in that same Additional Submission. (Point
"iv" of that second main contention is that if a perpetual license of
some sort was granted, it was by Andre Jaccard who
on behalf of said
predecessor-in-title-- without granting a privilege to use JACCARD as a domain
name at <jaccard.com> or any
other domain-- merely stated verbally to John Felgemacher that John Felgemacher
could advertise Jaccard meat tenderizers on
the internet, and if granted it was
revocable for cause and was revoked. Point "iv" of item "a"
of that third
main contention is as to the contents of the sworn declaration of
Complainant's president and owner, Eric Wangler; that point is
that
Complainant, and Andre Jaccard before it, repeatedly attempted to obtain
control of the domain name at issue by various means
such as requests, demands,
and other inducements but to no avail and that instead, as stated in paragraph
25 of Eric Wangler's affidavit,
John Felgemacher has placed orders for Jaccard
products from a local distributor in Buffalo, New York.) Moreover, Complainant
sales
appear to be on the order of millions of dollars over the last several
years, so some spillage corresponding to Respondent sales
on the order of a
couple of tens of thousands of dollars in the earlier part of that time would
be understandable even if, as stated
at page 5 of Complainant's Additional
Submission, "Complainant has attempted to prevent Felgemacher form
acquiring its products
for resale". (In any event, such spillage would not
confer Respondent's contended perpetual and irrevocable license. The evidence,
i.e. the last two paragraphs of John Felgemacher's sworn declaration, indicates
that only approximately $5,000 of the re-sales, and
then only in the year 2000,
were through the website at <jaccard.com>.)
Instead, despite some degree of co-operation, there was, to use an expression
from Galatasaray, supra, a "live dispute".
What, it might be
asked, of defences against applying the statue of frauds? There appear to be
conflicting views, expressed in and
applied by administrative panel decisions
under the Policy, as to whether various doctrines, such as the doctrine of
estoppel, or
such as general or other doctrines from the law of equity, can be
applied in administrative panel decision-making under the Policy.
That said,
however, Respondent's contended defenses against the Statute of Frauds, such as equitable estoppel, do not apply in this
case because there appears to be no evidence that Complainant was engaged in
any
conduct inducing or allowing Respondent to proceed such that Complainant
should be estopped from asserting the Statute
of Frauds against said contended perpetual and irrevocable license.[24]
The Panel finds
that, within the meaning of the Statute
of Frauds expressions quoted in the remainder of this sentence (and
especially in the sense that respective ones of said expressions have in
whole
or in part been interpreted in the above-cited New York court decisions),
Respondent's contended perpetual and irrevocable
license has the following five
attributes: (i) it is a contended "promise or undertaking" or is part
of a contended "agreement";
(ii) neither "it" nor
"some note or memorandum thereof" is "in writing"; (iii) it
is not "subscribed
by the party to be charged therewith, or by his lawful
agent"; (iv) it "[b]y its terms is not to be performed within one
year from the making thereof or the performance of which is not to be
completed before the end of a
lifetime"; and (v) in view of the
first four enumerated points of this sentence, if it does indeed exist, it is,
as a result of the Statute of Frauds,
"void" and in this proceeding, as stated in Cron, supra, "will
not be recognized or enforceable".
The Panel also
finds that for the Panel to rule that if the contended-for perpetual and
irrevocable license does indeed exist, and
that pursuant to Statute of Frauds it is neither
recognized nor enforceable, is in accordance with the purpose of that statute
as stated in Cron, supra: "prevention of 'fraud in the
proving of certain legal transactions
particularly susceptible to deception, mistake and perjury'" (citing Boening) without "'afford[ing]
persons a means of evading just obligations'" (citing Cohon & Co. v Russell
quoting Williston on Contracts).
Administrative
Panel Decisions as to Burden of Production
Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this
case, "the complainant has made a prima
facie showing, the burden of production shifts to the respondent to show by
providing concrete evidence that it has rights to or legitimate
interests in
the domain name at issue" (emphasis in original). To similar effect see
e.g. Gene Logic Inc. v. Bock, FA
103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth
Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).
Summary
In
view of all of the above, the Panel finds that the burden of production shifted
to Respondent but that on this topic Respondent
has not met it. Accordingly,
the Panel finds Respondent has "no rights or legitimate interests in
respect of the domain name"
within the meaning of that expression as it
occurs in Policy paragraph 4(a)(ii).
In view of the
immediately preceding paragraph hereof, the Panel finds that Policy paragraph
4(a)(ii) is proven.
The
context in which resolution of the issue occurs also includes Policy paragraph
4(b).
Policy paragraph 4(b) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that you
have registered or you have 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 your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have 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, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by using
the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to your website or
other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation,
or endorsement of your website or location or of a
product or service on your website or location.
As
for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically
define respective types of bad-faith registration
and provide that if any one
of such types of registration has been ascertained by a panel then bad-faith
use is in turn evidenced
via application of the respective one of those three
provisions.
As
for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and
provides that if such type of use is ascertained
by a panel then bad-faith
registration is in turn evidenced via application of that provision.
In
this proceeding, Policy paragraph 4(b)(ii) appears to not be contended for.
However,
in this proceeding, Policy paragraphs 4(b)(i), 4(b)(iii), and 4(b)(iv) appear
to be contended for by Complainant.
In response, Respondent basically repeats various of
Respondent's Policy paragraph 4(a)(ii) contentions, but they are as
inapplicable
on this topic as they were to Policy paragraph 4(a)(ii). Moreover,
the Statute of Frauds standard of "unequivocally referable
to", is long-extant, clear, and widely known; especially in view of it,
and of the
evidence submitted in this case, Respondent cannot seriously be
contended to have not registered, and not be using, the domain name
at issue in
Policy paragraph 4(a)(iii) "bad faith".
Furthermore,
there is the matter of initial interest confusion. Entry of Complainant's mark
will result in visits not only to Complainant's
website (referred to in
uncontested Complaint contention "(i)" of Complainant's third main
set of contentions) but also
to Respondent's website which resolves through the
domain name at issue. See e.g. Madonna
Ciccone p/k/a Madonna v. Dan Parisi
and ‘Madonna.com’, D2000-0847
(WIPO Oct. 12, 2000), which is extensively cited and applied for the
proposition that even
Respondent's
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet Users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent's actions.
Such confusion is a basis for finding a violation of Complainant's
rights.
Similarly see
e.g. The Prudential Insurance Company of
America v. Prudential Mortgage Loans,
FA 103880 (Nat. Arb. Forum March 20, 2002), which includes that the "fact
that the Internet user ultimately discovers that
a site is not that of
Complainant, or that Respondent disclaims any association with Complainant,
does not cure the fault".
In view of the
immediately preceding eight paragraphs hereof, the Panel finds that Policy
paragraph 4(a)(iii) is proven.
DECISION
All three
elements required under the ICANN Policy having been established, the Panel
concludes that the requested relief shall be
GRANTED.
Accordingly,
it is Ordered that the <jaccard.com>
domain name be TRANSFERRED from
Respondent to Complainant.
For
the Panel
Robert
R. Merhige, Jr., Chair
U.S.D.J.
(Ret.)
June
19, 2003
This
Opinion, authored by Panelist Rodney C. Kyle, is concurred in by Panelist
Robert R. Merhige, Jr. Panelist David
E. Sorkin Dissents.
DISSENTING OPINION
I respectfully
dissent.
To prevail under
the Policy, Complainant must prove, inter
alia, that the disputed domain name was registered in bad faith. The disputed domain name in this proceeding
was registered and has been used over a period of years for the purpose of
marketing genuine
goods bearing Complainant’s trademark. It is an unsettled legal question whether a
distributor or reseller of such goods may legally use the trademark in or as an
Internet
domain name without permission from the trademark owner. Compare
Ty Inc. v. Perryman, [2002] USCA7 474; 306 F.3d 509
(7th Cir. 2002), with PACCAR Inc. v. TeleScan Technologies,
L.L.C., [2003] USCA6 45; 319 F.3d 243 (6th Cir. 2003).
But even if the courts ultimately make it clear that such use is
foreclosed by trademark laws, it most certainly cannot be said that
the
registration of a domain name for this purpose back in 1998 was an act of bad faith. See
MatchMaker International Development
Corp. v. Kaiser Development Corp.,
FA 146933 (Nat. Arb. Forum May 9, 2003) (Sorkin, dissenting) (bad faith not
present where respondent registered a domain name for
purposes it reasonably
believed were legitimate).
Furthermore, at
the time of registration, Respondent or its client apparently was an authorized
distributor of Complainant’s products.
While the existence of such authority is not essential to Respondent’s
position, it lends further support to the view that the registration
was not in
bad faith. If Complainant revoked such
authority that could, of course, affect Respondent’s present rights or
interests in the domain name, but
it would not retroactively transform the 1998
registration into an act of bad faith.
I would dismiss
the Complaint.
David E. Sorkin, Panelist
[1] W.N. Hohfeld, "Some Fundamental Legal Conceptions as Applied in Judicial Reasoning", (1913-14) 23 Yale L. J. 16, at 27, footnote 23. Emphasis in original.
[2] See e.g. Rules 5(b)(i), 5(b)(ix), and 14(b). Rule 5(b)(i) includes that "The response shall … [r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name", Rule 5(b)(ix) includes that "The response shall … [a]nnex any documentary or other evidence upon which the Respondent relies" , and Rule 14(b) includes that "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules … the Panel shall draw such inferences therefrom as it considers appropriate. Rule 5(b)(i) and Rule 5(b)(ix) are each clearly a "provision of, or requirement under, these Rules" within the meaning of that expression as it appears in Rule 14(b).
[3] The mode "1" referred to in the passage cited in endnote 1 above, together with Delisle, Evidence Principles and Problems, (1984), Carswell, Toronto, at 5:
The concept of relevancy is simply dictated by our own present insistence on a rational method of fact-finding.
However, not only must the evidence tendered be rationally probative of the fact sought to be established; the fact sought to be established must concern a matter in issue between the parties, i.e. it must be material. …
The law of evidence then principally consists of the study of canons of exclusion, rules regarding admissibility, which deny receipt into evidence of information which is rationally probative of a matter in issue between the parties.
Therefore, evidence which is immaterial, or is material but irrelevant, is inadmissible, and even evidence which is material and relevant may still be inadmissible in view of further inadmissibility rules of the law of evidence.
[4] Delisle, endnote 3 above, at 94.
[5] Delisle, endnote 3 above, at 91.
[6] See e.g. Arthur L. Corbin, "Legal Analysis and Terminology", (1919) 29 Yale L. J. 163, at 164 and 166.
[7] See e.g. Wesley N. Hohfeld, "The Relations Between Equity and Law", (1913) 11 Mich. L. Rev. 537, particularly, at 546, "Part I" and, at 558, the diagram, both the 546 and 558 passages being entitled "The Position of Equity in [as contrasted with "in relation to"] the Legal System".
[8] Black's Law Dictionary, 6th ed. (St. Paul, Minnesota: West Publishing Co., 1990), at 841 on "Judge-made law".
[9] If either the Policy or rules made under the Policy were rules of law, they would clearly not be rules of judge-made law and would instead have to be rules of enacted law; yet, in so far as they are established by other than a nation-state, they are not established by people who have, let alone use, enactment-making power and are instead made by people who have and use merely contract-making power; as a result, they do not have the first of the above-listed three attributes of laws and are, instead, facts. Consistent therewith, the First WIPO Report ("The Management of Internet Names And Addresses: Intellectual Property Issues -- Final Report of the WIPO Internet Domain Name Process", 30 April 30 1999, and available at
<http://wipo2.wipo.int/process1/report/finalreport.html>) includes at paragraph 2 that "There has not been … a central rule-making entity that has exercised comprehensive legislative authority over the Internet" and at paragraph 18 that "neither national governments acting as sovereigns nor intergovernmental organizations acting as representatives of governments should participate in management of Internet names and addresses." (Emphasis added.) Likewise, as pointed out by Timothy Denton, "Canadian Domain Name Governance: The Twice Delegated CIRA", a paper presented at "The 2000 Domain Name Governance, Law & Policy Forum", University of Ottawa, 29 November 2000, at 9: "Governments do not have a role as such in the management of the IP numbering system and the DNS, as the ICANN organization chart shows." Similarly, paragraph 66 of the Second WIPO Report ("The Recognition Of Rights And The Use Of
Names In The Internet Domain Name System -- Report of the Second WIPO Internet Domain Name Process", 3 September 2001, and available at <http://wipo2.wipo.int/process2/report/html/report.html#1>) includes that the First WIPO Report process of proposing the Policy "was less about legislation than about the efficient application of existing law in a multijurisdictional and cross-territorial space. (Emphasis added.)
Cf (i) some of the commentaries in the collection of commentaries on ICANN and the Policy and related matters, in Journal of Small and Emerging Business Law (2002) 6 and (ii) Steven L. Schwarcz, "Private Ordering" (18 February 2002 draft) originally available through <http://papers.ssrn.com/paper.taf?abstract_id=298409>, especially at 23 et seq.
[10] See e.g. Register.com Inc. v. Verio Inc., 126 F. Supp. 2d 238 (S.D.N.Y. 2000) at 247 to 248, as to ICANN policies and rules not being law but instead being facts that are part of contract documents. To similar effect, particularly as to the Policy being such facts, see e.g. Parisi v. Netlearning, 139 F. Supp. 2d 745 (E.D.Va. 2001) at 747; Sallen v. Corinthians, [2001] USCA1 330; 273 F.3d 14 (1st Cir. 2001) at 28; Bord v. Banco de Chile and U.S. Department of Commerce, 01-CV-1360-A (E.D.Va., 15 May 2002) available at <http://www.icann.org/legal/bord-v-banco-de-chile/opinion-15may02.htm>; Dluhos v. Strasberg, [2003] USCA3 43; 321 F.3d 365 (3rd Cir. 2003) in the first line of Part V; and Barcelona.com v. Excelentisimo, (4th Cir. C.A., 2 June 2003) available at <http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf> in part II thereof especially at 9 (first sentence of second para. on that page) and 11 (second-last sentence of first full para. on that page).
[11] The Leading Hotels of the World Ltd. v. Online Travel Group D2002-0241 (WIPO May 24, 2002) in para. 6.3.
[12] Ty Inc. v. Joseph Parvin d/b/a Domains For Sale D2000-0688 (WIPO Nov. 9, 2000).
[13] Julian Barnes v. Old Barn Studios Limited D2001-0121 (WIPO March 26, 2001).
[14] Irish Institute of Purchasing and Materials Management v. Association For Purchasing and Supply, Owen O'Neill D2001-0472 (WIPO May 30, 2001).
[15] Societe Des Hotels Meridien SA v. United States of Moronica D2000-0405 (WIPO June 27, 2000).
[16] See e.g. CTV Television Inc. v. Icanada Co., D2000-1407 (WIPO Dec. 13, 2000) "on the need to put forward the best evidence at the outset" citing, in that decision's endnote 8, "WIPO Case No. D2000-0703 re iriefm.com, per Hon. Sir Ian Barker QC; WIPO Case No. D2000-0026 re 4tel.com, per Jordan Weinstein and WIPO Case No. D2000-0423 re telstrashop.com, per John Terry"; and Friends Of Kathleen Kennedy Townsend v. B. G. Birt, D2002-0451 (WIPO July 31, 2002) albeit as to re-filings.
[17] Hereinafter, generally "the Statute of Frauds", available at <http://assembly.state.ny.us/leg/?cl=49&a=15>.
[18] Cron v. Hargro Fabrics, 91 NY2d 362, fourth-last para. of the "Discussion" therein; hereinafter generally "Cron".
[19] Ibid., second para. of the "Discussion" therein.
[20] NYSC (AD), 3rd Judicial Department, 2 January 2003, per Lahtinen J. for a unanimous decision of a five-judge panel; hereinafter Romaine, available at
<http://decisions.courts.state.ny.us/ad3/Decisions/2003/92369.pdf>.
[21] The statement is made citing Coppola v. Coppola, 260 AD2d 774, 775 as well as the Statute of Frauds.
[22] In Romaine, see its footnote 1 on its page 2.
[23] That case-law extends back at least as far as Cardozo J.'s opinion in Burns v. McCormick, 233 N.Y. 230, 232, 135 N.E. 273 (1922). It includes Raj Acquisition Corp. v. Atamanuk, NYLJ, 12/1/99 (S.Ct., N.Y. Cty); Bridgeview Development Corp. v. Hooda Realty, Inc., 145 A.D.2d 457, 458, 535 N.Y.S.2d 419, 420 (2d Dept. 1988); Francesconi v. Nutter, 125 A.D.2d 363, 364, 509 N.Y.S.2d 88 (2d Dept. 1986); and Cooper v. Schube, 86 A.D.2d 62, 449 N.Y.S.2d 32 (1st Dept.), aff'd, 57 N.Y.2d 1016, 443 N.E.2d 953, 457 N.Y.S.2d 479 (1982).
[24] See e.g. Gordon F. Henderson "Patent Licensing-- Problems From the Imprecision of the English Language", (1969) 63 C.P.R. 99, at 132, citing Caton v. Caton (1865), L.R. 1 Ch. 137 and Maddison v. Alderson (1883), 8 A.C. 467 at 475 as being to the following effect:
A Court of Equity will not allow the Statue of Frauds to be used as an instrument of fraud. In a situation where a party has conducted itself in a manner unequivocally referrable to a pre-existing contract, the court may give effect to the oral agreement even in the absence of a memorandum in writing as required by the statute. For instance, where a contract has been partly performed by one party, a Court of Equity may sometimes enforce the contract at the instance of that party even if a memorandum has not been signed by him.
See also e.g. Actionstrength Limited (t/a Vital Resources (formerly t/a Morson Alltrades) (company number 2761631) v. International Glass Engineering In.Gl.En. SpA et al., [2003] UKHL 17 (3 April 2003) especially per Lord Walker of Gestingthorpe, at para. 50 et seq, for a unanimous five-member House of Lords panel (albeit as to a statute of frauds provision on guarantee rather than license), including that "there appears to be no English case (indeed, so far as his researches have gone, no case in any jurisdiction) in which an oral contract of guarantee has been enforced through the medium of an estoppel".
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