AmeriPlan Corporation v. Shane Gilbert d/b/a NewWave Solutions, Inc.
Claim Number: FA0203000105737
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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:
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.
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.
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.
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
Paul M. DeCicco, Panelist
Paul A. Dorf, Panelist
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