Americree, Ltd. v. David R.
Domiano & Greg M. Allen.
Claim Number: FA0803001163695
PARTIES
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.
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.
Hon. Sir Ian Barker, QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@northamericanbushman.com and
postmaster@bushmanoutfitters.com 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
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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
B. Respondent
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.
FINDINGS
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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name
has been registered and is being used in bad faith.
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.
DECISION
The Panel concludes that relief shall be
DENIED.
Hon. Sir Ian Barker, QC, Panelist
Dated:
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