Americree, Ltd. v. David R. Domiano & Greg M. Allen.
Claim Number: FA0803001163695
Complainant is Americree, Ltd. (“Complainant”), represented by James
P. Cullen, of James P. Cullen LLC, LPA, Attorney and
Counselor at Law, Ohio, USA.
Respondent is David R. Domiano & Greg M. Allen (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <northamericanbushman.com> and <bushmanoutfitters.com>, registered with Network Solutions, Inc.
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.
Hon. Sir Ian Barker, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On March 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 17, 2008 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Timely Additional Submissions were received and determined to be
complete from the Complainant on
The Response was filed by the Respondent, David R Domiano solely, but the Additional Submissions were filed jointly by the Respondents, David R Domiano and Greg M Allen. Despite the Complainant submitting that Mr. Allen should be considered in default because he did not joint in the original Response, the Panel considers that this is not a valid objection. A response filed by one of two joint owners of a disputed domain name is sufficient. The Panel refers to the Response as if it were filed by both Respondents. See Rules 1, 3(b)(v) and 5 of the Rules under the Policy.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant is the current registered owner of US Registered Trade
Marks North American Bushman and Bushman Outfitters, Reg’d. These trademarks were issued on
The Complainant purchased the assets of NAB and BUSHMAN OUTFITTERS
(“BO”) from Trustees in Bankruptcy appointed by the US Bankruptcy Court, Middle
District of Pennsylvania, pursuant to an asset purchase agreement approved by
the Court on
The business of both the Complainant and the Respondent is the
marketing and arranging of fishing trips to remote lakes in the
The disputed domain names were registered on
Persons accessing the websites via the disputed domain names wish to
find out about fishing at the remote
The Complainant alleges that, since the closing of the asset purchase agreement, the Respondents have been using its trademarks in the domain names. Mr. Domiano was involved in negotiations leading to the sale of the assets of the bankrupt estates, therefore, he was well aware of the provisions of the bill of sale.
Letters were sent on behalf of the Complainant requesting that the
Respondent “cease and desist” using the
disputed domain names on
The Respondents’ use of the disputed domain names is said to be in bad faith because the websites confuse prospective customers, of the Complainant as to who controls or owns rights to Lake Evans, Québec and as to who now owns the assets formerly owned by NAB and BO. Moreover, the Respondents’ use of the disputed domain names is tarnishing the trademarks and business of the Complainant by disseminating confusing and derogatory information about the Complainant’s business.
As at March 13, 2008, the website at <bushmanoutfitters.com> (controlled by the Respondents) uses
the name “Far North Outfitters, the bush specialists”. It refers to
The joint bill of sale excludes the rights of third parties to certain assets, including the disputed domain names. NAB no longer exists. Anyhow, the disputed domain names were registered three years before the marks were issued. Only some of the assets were sold by the bankruptcy trustees.
Mr. Domiano is the President and 100% stockholder of a
The Respondent believes that the Complainant did not have the right to register an assignment of the service mark. The incorporation of Bushman Limited – controlled by Mr. Domiano – has the right to use the name Bushman.
In a written settlement agreement, which is part of the bill of sale and court order, any disputes arising out of the agreement are to be resolved by the US Bankruptcy Court. Moreover, any assets allegedly owned by a third party such as Greg Allen and/or Gordon Bowen shall not be possessed or acquired unless a bill of sale is delivered to the third party. There is also, a mutual release clause.
The Complainant is well aware that the disputed domain names were registered to Messrs. Allen and Domiano in 1999 and these domain names were specifically excluded from the documents of sale. The Complainant is endeavouring to ruin the business of the Respondents by hijacking its domain names.
The domain name <bushmanoutfitters.com> is not identical to the service mark of BUSHMAN OUTFITTERS REG’D and there can be no confusion. The disputed domain names were not registered in bad faith in order to prevent anyone from reflecting the alleged mark in a corresponding domain name.
C. Complainant’s Additional Submissions
The disputed domain names were not specifically excluded from the joint bill of sale just because there is no reference to them.
The significance of the word REG’D in the Complainant’s trademark is irrelevant because the disputed domain name is confusingly similar.
The settlement agreement which is part of the bankruptcy sale of the assets of NAB and BO refers to a Mr. Saari and Mr. Domiano. The Complainant was not a party to that agreement.
The Respondent has asked to have the dispute transferred to the
Bankruptcy Court for adjudication. The
Respondent is not making legitimate use of the disputed domain names without
intent for commercial gain misleadingly to divert customers or to tarnish the
alleged service mark. The Complainant
makes reference to legal authorities under the
As to the contention that the Respondents registered the disputed domain names at a time when Mr. Domiano was involved with NAB, three years prior to the trademark registration, the Complainant claims out that, in 1999, there was also a third shareholder in NAB, a Mr. Saari. By registering the disputed domain names in their personal names, the Respondents acted in bad faith and violated their fiduciary duty to NAB and the co-shareholder. BO was established in 1998 by Messrs. Domiano, Saari, Allen and a Mr. Bowen. The purpose of the partnership was to use the native status of Mr. Bowen to obtain rights to licenses in Québec. The registration of the disputed domain names by Domiano and Allen was in derogation of the rights of partnership.
It is not correct the Respondents have used the disputed domain names
since 1999. This statement was false as
the disputed domain names were used by NAB from 1999 to 2007. The Complainant annexed emails from potential
customers which, it is said, demonstrates confusion,
and an affidavit from Mr. Saari, confirming that he was a Vice-President of NAB
from 1987 until 2001. He is now
President of Bushman Adventures Inc. an
Mr. Saari confirms that in 1998, Messrs. Domiano, Sari, Allen and Bowen formed another partnership called BO and that the disputed domain name <bushmanoutfitters.com> was registered to promote the business of both the partnership and the company. The Respondents were incorrect that there was no reference to domain names of any sort. The Respondents pointed to the provision in the joint bill of sales “this bill of sale is subject to any and all of rights of third parties to any such assets and specifically excludes the items in Property List Exhibit “B”.
Similarly, the Complainant takes issue with all the allegations against the Respondents relating to the former businesses which seem largely irrelevant to the matters which the Panel has to decide.
D. Respondents’ Additional Submissions
The Respondents contest the various allegations in the Claimant’s Additional Submission. They make allegations against Mr. Saari and the Complainant which are impossible for a Panelist to adjudicate upon in a proceeding under the Policy.
This is a contractual dispute between the parties concerning the Court-approved agreements transferring assets, including the NORTH AMERICAN BUSHMAN and BUSHMAN OUTFITTERS REG’D marks.
Respondents’ continued ownership of the
disputed domain names may relate to the contractual agreements arising from the
bankruptcy proceedings. There seems to
be the right to refer any such dispute back to the Bankruptcy Court in
Complaint cannot succeed because Complainant has been unable to prove that at the time of registration of the disputed domain names in 1999, Respondents were acting in bad faith.
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.
The disputed domain names are clearly identical or confusingly similar to registered trademarks in which the Complainant has rights. It does not matter that the Complainant obtained these trademark rights by way of assignment and that the disputed domain names were registered before the trademarks or the assignment of the trademarks. The fact that the marks may be under review by the USPTO does not prevent a finding that the Complainant for present purposes, has rights in these marks.
The Panel considers it unnecessary to make a finding under this heading. The position is somewhat confused but a finding is unnecessary in view of the clear failure of the Complainants under the next heading and because this is a commercial dispute quite inappropriate for determination under the Policy.
It is a requirement of the Policy that a complainant must prove separately both registration in bad faith and continued use in bad faith. As of the date of registration by the Respondents of the disputed domain names in 1999, there were no trademarks. The disputed domain names could not have been registered in the knowledge of trademarks which did not exist.
At best for the Complainant, there is its assertion of bad faith in 1999 against the Respondents. It is not for this Panel to decide whether, as between other partners and shareholders – not including the Complainant – the Respondents may or may not have registered the disputed domain names properly. That has nothing to do with the present inquiry which considers bad faith vis-a-vis the rights of the Complainant which, in 1999, were non-existent.
It is, therefore, unnecessary to consider the complex allegations as to subsequent use of the disputed domain names in bad faith. The Complainant has not been able to pass the threshold level of proving registration in bad faith. This view is reinforced by the fact that this is a trade dispute and that the Complainant may have an avenue of recourse in the Bankruptcy Court.
Reverse Domain Name Hijacking
The Respondents claim that the Complainant is using the Policy to harass and single out the Respondent because it knew the Respondent had registered the disputed domain names before the Complainant had obtained rights.
Even though the Complainant has not succeeded under the Policy, that fact does not mean a finding of reverse domain name hijacking is required.
The Panel declines to make such a finding. Unless and until the true situation between these parties is determined, then one cannot assess the allegations of bad faith subsequent to the sale of the trademarks and other assets by bankruptcy trustees to the Complainant.
Accordingly, no declaration on reverse domain name hijacking is to be made.
The Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, QC, Panelist
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