Applied
Technology Limited v. Watermaster
Claim Number: FA0710001102452
PARTIES
Complainant
is Applied Technology Limited (“Complainant”), represented by William
J. Sapone, of Coleman Sudol Sapone P.C.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <batteryvitamin.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2007.
On October 24, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <batteryvitamin.com> domain name 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 October 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2007 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@batteryvitamin.com by e-mail.
A timely Response was received and determined to be complete on November 19, 2007.
An Additional Submission was filed by Complainant and it acknowledges that the Submission is untimely under Rule 7(a), but it believes that the Panel may, in its discretion, consider this additional information in the interests of justice. The Additional Submission was reviewed and considered by the Panel.
On November 2, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant raises issues under ICANN Policy Paragraph 4(a)(i) “confusing similarity,” Policy 4(a)(ii) “no rights or legitimate interests,” and Policy 4(a)(iii) “bad faith registration and use.”
B. Respondent
Respondent does not dispute Complainant’s contention with respect to Complainant’s assertion that the names are identical or confusingly similar, see Policy 4(a)(i).
With respect to rights and legitimate interests under Policy 4(a)(ii), Respondent alleges that it had a contractual right with Complainant authorizing it to be a distributor of Complainant’s products. No evidence in this regard is submitted.
Registration and use in bad faith: Policy 4(a)(iii) Respondent alleges that it has rights and legitimate interests in the <batteryvitamin.com> domain name because it is an authorized distributor of Complainant’s products through a contractual agreement. Respondent further alleges that Complainant was aware of and even encouraged Respondent’s registration and use of the disputed domain name. Respondent states that it had permission and received authorization from Complainant to register and use the disputed domain name.
C. Additional Submissions
Complainant’s
Additional Submission alleges Respondent is a former distributor of its
products and not a current distributor.
Complainant confirms that litigation pending in the State of
PROCEDURAL
ISSUE:
CONCURRENT COURT PROCEEDING:
Complainant
commenced legal action against Respondent in June, 2007, based upon claims of
breach of contract and other causes of action.
Both Complainant and Respondent acknowledge that they are presently
engaged in litigation before the courts of
In situations where concurrent court proceedings are pending, as in the instant case, the panel may choose to proceed with the arbitration. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court).
Some panels have chosen not to proceed with the arbitration because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy Paragraph 4(k) required that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Under such circumstances a panel may choose not to render a decision when there is a court proceeding pending because no purpose may be served by the panel rendering a decision on the merits to transfer the domain name or have it remain, when such a decision regarding the domain name will have no practical consequence.). Under such circumstances, the panel may choose to dismiss the complaint.
After a review of the entire file, the Complaint and Additional Submission, as well as the Response, the Panel has determined that the Complaint should be dismissed. This is similar to the situation found in Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) where the panel stated:
A dispute, such as the present one, between parties who each have at least
a prima facie case for rights in the disputed domain names is outside the
scope of the Policy ...the present case appears to hinge mostly on a
business or civil dispute between the parties, with possible causes of
action for breach of contract or fiduciary duty. Thus, the majority holds
that the subject matter is outside the scope of the UDRP and
dismisses the Complaint.
DECISION:
Having determined that National courts are better equipped to take evidence and to evaluate its credibility to determine the disputed facts, the Panel has decided to Dismiss the Complaint Without Prejudice.
Accordingly, it is ORDERED that the Complaint be Dismissed Without Prejudice.
Robert T. Pfeuffer, Senior District Judge, Panelist
Dated: December 11, 2007