Herrmann International d/b/a
The Ned Herrmann Group v. Sally Bishop c/o Herrmann International
Claim Number: FA0806001203379
PARTIES
Complainant is Herrmann International d/b/a The Ned
Herrmann Group (“Complainant”),
represented by Michael Lasky, of Altera Law Group. LLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <herrmanninternational.net> and <hbdi-uk.com>,
registered with Register.com, Inc. and Network Solutions, Inc, respectively.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 10, 2008.
On June 10, 2008, Register.com, Inc. and Network Solutions, Inc.
confirmed by e-mail to the National Arbitration Forum that the <herrmanninternational.net> and <hbdi‑uk.com>
domain names are registered with Register.com,
Inc. and Network Solutions, Inc., respectively and that the Respondent
is the current registrant of the names. Register.com, Inc. and Network Solutions, Inc.
have verified that Respondent is bound by the Register.com,
Inc. and Network Solutions, Inc. registration agreements and have 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 June 17, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 7, 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@herrmanninternational.net and postmaster@hbdi-uk.com
by e-mail.
A timely Response was received and determined to be complete on July 7, 2008.
A timely Additional Submission was received from
Complainant on July 11, 2008, and determined to be timely and complete in
compliance with the National Arbitration Forum’s Supplemental Rule 7.
A timely Additional Submission was received from
Respondent on July 16, 2008, and determined to be timely and complete in
compliance with the National Arbitration Forum’s Supplemental Rule 7.
On July 10, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant was founded by Ned Herrmann in 1981. Complainant states that it “markets products
and services that help clients achieve increased productivity, creativity, and
results through personality evaluation products and scoring services,” and that
it also certifies others to administer Complainant’s products and
services. Complainant further states
that it owns various registered and common-law trademarks, including HERRMANN,
HERRMANN INTERNATIONAL, and HBDI, and that it uses these marks in international
commerce.
Complainant states that Respondent “at one time” was authorized by
Complainant to sell its products and services in the
Respondent registered the disputed domain name <hbdi‑uk.com> on
July 29, 1997. Complainant asserts that
because Respondent was acting as Complainant’s authorized agent at that time,
she “could not have registered that domain name except to hold in trust for
Complainant’s benefit.” Respondent
registered the other disputed domain name, <herrmanninternational.net>, on June 20, 2003, at which time she was no longer
acting under authority from Complainant.
Complainant contends that the disputed domain names
are identical or confusingly similar to Complainant’s trademarks. Complainant further contends that Respondent
lacks rights or legitimate interests in the disputed domain names. In support thereof, Complainant states that
distribution of another’s goods or services does not constitute a bona fide offering under the Policy;
that Respondent is not known by either of the domain names; and that Respondent
is not making a legitimate noncommercial or fair use of the domain names.
Finally, Complainant asserts that Respondent
registered the domain names in bad faith and continues to use them in bad
faith. In support thereof, Complainant
states inter alia that Respondent registered
the domain name <hbdi‑uk.com>
in 1997 while serving as an authorized distributor of Complainant’s services,
but that relationship did not give her the right to register a domain name
incorporating Complainant’s mark.
Complainant further states that the relationship between the parties has
been terminated, and notes that Respondent registered the domain name <herrmanninternational.net> less than one month after that termination.
B. Respondent
Respondent states as follows with respect to the domain name <herrmanninternational.net>:
I have not used and do not use this domain name and agree that using it
would, indeed, cause confusion. Since
there is no longer any likelihood that an agreement will be reached whereby I
could represent Herrmann International again, I am very willing to transfer it—along
with <herrmanninternational.biz> and <herrmanninternational.info>
(and other names I own which include Herrmann) to the Complainant. However, I will only do this in return for the
cost incurred in its registration and maintenance of these names and upon
receipt of the letter agreeing not to defame me and/or continue unfair
competition with me and my organisation, drafted by my solicitor and requiring
signature by the Complainant. If the
Complainant had called me, I would have agreed to this simple solution on the
telephone. The response which follows, therefore,
applies only to <HBDI‑UK.com>.
As to the other disputed domain name, <hbdi‑uk.com>, Respondent contends that it is not identical
or confusingly similar to Complainant’s marks, claims that she has rights or
legitimate interests in the domain name, and denies registering or using it in
bad faith. In support thereof,
Respondent states inter alia that she
no longer promotes the domain name for a website, but many friends and clients
continue to use it to reach her by e‑mail; that she has owned the domain
name for ten years with Complainant’s knowledge and without challenge; that
since 1988 she has been authorized to reproduce and use the HBDI testing
instrument, the only limitation being that she not teach others to score it;
that she continues to score and sell the 1988 version of the HBDI profile to
clients under that authorization; and that in 1997, when she registered the
domain name, she was operating as the Herrmann Brain Dominance Institute (UK).
Respondent also raises allegations of bad faith on Complainant’s
part. Respondent notes that Complainant
has not responded to correspondence from Respondent’s solicitors, and suggests
that in this context the bringing of a Complainant under the Policy may be
viewed as harassment and an abuse of the administrative proceeding.
C. Additional Submissions
The Panel considers Complainant’s Additional Submission only to the
extent that it responds to arguments in the Response that Complainant could not
reasonably have anticipated. See e.g. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr.
10, 2006).
Complainant characterizes Respondent’s statement regarding the domain
name <herrmanninternational.net> “as an admission that she does not really believe she
owns” the domain name.
Complainant challenges Respondent’s claim that she
possesses a perpetual license to reproduce Complainant’s HBDI instrument, but
asserts that “[t]he core issue before this panel is whether a licensee-reseller
can resign from her position and retain domain names based on her licensor’s
trademark rights.” Complainant further
argues that Respondent’s request for more than her registration costs in
exchange for relinquishing one of the disputed domain names should be viewed as
additional evidence of Respondent’s bad faith.
Complainant states that it was previously unaware that Respondent had
registered other domain names including Complainant’s HERRMANN mark, and that
this fact further substantiates the bad faith claim.
FINDINGS
The Panel finds that the disputed domain name
<herrmanninternational.net> is identical to a mark in which Complainant has
rights; that Respondent lacks rights or legitimate interests in respect of the domain
name <herrmanninternational.net>; and that the domain name <herrmanninternational.net> was registered and is being used
in bad faith.
The Panel finds that the disputed domain name
<hbdi‑uk.com> is confusingly similar to a mark in which Complainant
has rights, but that Complainant has not met its burden of proving that the
domain name <hbdi‑uk.com>
was registered 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 domain name <herrmanninternational.net> is identical to Complainant’s registered mark
HERRMANN INTERNATIONAL, but for the top-level domain extension. Complainant has presented a prima facie case that Respondent lacks
rights or legitimate interests in this domain name, shifting to Respondent the
burden of coming forward with concrete evidence of her rights or interests, and
Respondent has not done so. See, e.g. Am. Online, Inc. v. Thricovil,
FA 638077 (Nat. Arb. Forum Mar. 22, 2006).
The Panel therefore finds that Complainant has satisfied the first and
second elements set forth in Paragraph 4(a) of the Policy.
As to bad faith registration and use, Complainant
asserts that these requirements are met because Respondent registered the domain name <herrmanninternational.net> shortly after the relationship between the parties
was terminated and any authorization to use Complainant’s marks had been
withdrawn. Respondent does not contest
this claim, and the Panel accordingly finds that the third element has been
established.
The domain name <hbdi-uk.com> is comprised of Complainant’s registered mark
HBDI, appending the geographic designation “
According to Complainant, Respondent registered the domain name <hbdi-uk.com> in 1997, while
serving as Complainant’s authorized representative in the United Kingdom, and
at approximately the same time she registered H.B.D.I. as a U.K. trademark. Complainant became aware of these facts at a
later date, perhaps as late as 2001, but the relationship between the parties
continued until 2003.
Complainant contends that it should be considered the beneficial owner
of both the
As to the “core issue” posed by Complainant—“whether a licensee-reseller can resign from her position and
retain domain names based on her licensor’s trademark rights”—the answer is
that the Policy simply does not apply to such a situation unless the licensee’s
original registration of the domain name was in bad faith. The Policy’s requirement of bad faith
registration and use is conjunctive, so a lack of bad faith at the time of
registration is fatal regardless of whether retaining such domain names
subsequent to the termination of the relationship constitutes an act of bad
faith. See, e.g. Gold Medal Travel Group plc v. Kruzicevic, No. D2007-1902
(WIPO Mar. 12, 2008).
Complainant may well have a viable legal
claim to the disputed domain name <hbdi‑uk.com>
based upon its theory that Respondent acted as its agent, registering the
domain name for its benefit, but that question is beyond the scope of this
proceeding. The Panel concludes that
Complainant has failed to prove that Respondent registered the domain name in
bad faith as required by Paragraph 4(a)(iii) of the
Policy.
The Panel’s conclusion as to bad faith being
dispositive, the Panel declines to address the question of rights or legitimate
interests under Paragraph 4(a)(ii). The Panel notes, however, that resolution of this
question would likely require consideration of matters not susceptible to
adjudication under the Policy. See, e.g. ICANN, Second Staff Report on Implementation Documents for the Uniform Domain
Dispute Resolution Policy, para. 4.1(c) (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>;
see also Am. Online, Inc. v. Inetekk.com,
Inc., FA 231685 (Nat. Arb. Forum Mar. 17, 2004).
DECISION
Having considered all three elements required under the ICANN Policy
with respect to each of the disputed domain names, the Panel concludes that
relief shall be GRANTED as to
the domain name <herrmanninternational.net>, and DENIED as to the domain
name <hbdi‑uk.com>.
Accordingly, it is Ordered that the domain
name <herrmanninternational.net> be TRANSFERRED from
Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 24, 2008
The Response in this matter was
received by the Forum on July 7, 2008. Under
the Forum’s Supplemental Rule 7(a), either party may file additional written
statements and documents within five calendar days after receipt of the
Response. Complainant filed such an Additional
Submission on July 11, 2008. If an
additional submission is filed, Supplemental Rule 7(c) permits the opposing
party to file additional material of its own within five calendar days thereafter. Respondent filed an Additional Submission on
July 16, 2008.
Paragraph 6(b) of ICANN’s UDRP Rules
requires that a single Panelist be appointed within five calendar days following
receipt of the Response, and Paragraph 9 requires that
the case file be forwarded to the Panel “as soon as the Panelist is appointed.” But see
Supplemental Rule 8 (defining “the complete file to be considered by the
Panel” as including not only the Complaint and Response, but also any
additional materials subsequently provided to the Panel). Absent exceptional circumstances, a Panel must
submit its decision within fourteen days of its appointment, under Paragraph
15(b), and the dispute-resolution service provider must communicate the
decision to the parties, the concerned registrar(s), and ICANN within three
days thereafter under Paragraph 16.
In this case, the case file
comprising the Complaint and Response was transmitted to the Panel on July 10,
2008, and the Panel was given a deadline of July 24, 2008, to render its
decision. The Decision set forth above
was prepared by the Panel and submitted to the Forum on July 15, 2008. The following day, Respondent filed an
additional submission that was timely under the Forum’s Supplemental Rules. (Both parties’ additional submissions were
forwarded to the Panel on the same day that they were received by the Forum,
apparently within two hours of receipt in each instance.) The Panel therefore must determine whether to
withdraw and revise its original decision—one that was prepared and submitted
in accordance with the applicable rules, within the very short timeframe
allocated to the Panel for this purposes by Paragraph 15(b) of the UDRP
Rules—in order to accommodate a party’s additional submission that was made
fully in accordance with Paragraph 7 of the Forum’s Supplemental Rules.
The Panel’s decision in this
particular matter is not especially difficult, but only because (1) Respondent’s
Additional Submission appears to be comprised largely of repetition of points
made earlier and responses to material in Complainant’s Additional Submission
that the Panel has already decided to disregard, so it is unlikely that any
exceptional circumstances are present that would warrant substantive
consideration of Respondent’s Additional Submission; and (2) in light of the
decision that the Panel has already made on the merits (i.e., in Respondent’s
favor with respect to the domain name that was truly contested), consideration
of Respondent’s Additional Submission is unlikely to affect the outcome. Nonetheless, the experience of this case
illustrates a problem created by Supplemental Rule 7, which permits parties to
file additional material even after a case file has been transmitted to a Panel
with a 14-day decision deadline. Supplemental
Rule 7 effectively reduces the Panel’s 14-day period to as short as four
days. (Actually, it is even shorter than
that, if the last submission is received by the Forum on a weekend or late on a
Friday, presumably a fairly commonplace occurrence, since the Panel will not
receive it at least until the following Monday.) It is true that a Panel may request an
extension of the deadline based upon exceptional circumstances (under Paragraph
15(b) of the UDRP Rules), and that a Panel should consider additional
submissions only where such consideration is warranted by exceptional
circumstances (see Decision, supra, and the Deep Foods decision cited there).
But a Panel ordinarily must review a party’s additional submission to
determine whether such circumstances are present to warrant substantive
consideration of the submission, and the consequence is a substantial and
unacceptable reduction of the time that Panel is afforded to consider and
prepare its decision.
For the reasons set forth above, the
Panel declines to consider Respondent’s Additional Submission, and instructs
the Forum to proceed with notification and publication of the Decision as set
forth above, with this Addendum appended thereto.
David E. Sorkin, Panelist
Dated: July 24, 2008
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