Herrmann International d/b/a The Ned Herrmann Group v. Sally Bishop c/o Herrmann International
Claim Number: FA0806001203379
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.
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.
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 firstname.lastname@example.org and email@example.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.
Complainant requests that the disputed domain names be transferred from Respondent to 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.
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.
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.
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).
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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