Blue Magic, Inc v. JCSI c/o Domain
Claim Number: FA0806001211470
Complainant is Blue Magic, Inc. ("Complainant"), represented by D. Brit Nelson, of Locke Lord Bissell & Liddell LLP, Texas, USA. Respondent is JCSI Oo Domain Administrator ("Respondent"), represented by Stevan Lieberman, of Greenberg & Lieberman, LLC, Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <purecitrus.com> and <northamericanoil.com>, registered with Enom, Inc.
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 24, 2008.
On June 23, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <purecitrus.com> and <northamericanoil.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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.
On July 21, 2008, Respondent filed with the National Arbitration Forum under the National Arbitration Forum's Supplemental Rule 6 a Request for an Extension of Time in which to Respond to the Complaint. On June 22, 2008, the National Arbitration Forum granted this request extending the deadline by which Respondent could file a Response to the Complaint to August 1, 2008.
A Response was received on August 1, 2008. Pursuant to ICANN's Rule 5, it was determined to be deficient because it was not received in hard copy prior to the Response deadline.
An Additional Submission from Complainant was timely received on August 5, 2008.
On August 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
[a.] Complainant contends that it owns a federal trademark registration for PURE CITRUS and common law rights to NORTH AMERICAN and trade name rights to NORTH AMERICAN OIL, all by assignment from the North American Oil Company Corporation.
[b.] Respondent registered the domain names <purecitrus.com> and <northamericanoil.com> as agent for Complainant to allow Complainant to market its products.
[c.] The registered domain names are confusingly similar to trademarks of Complainant.
[d.] Respondent has no rights or legitimate interests with respect to the domain names.
[e.] Respondent has registered and used the domain names in bad faith in that it has used the associated Pure Citrus website to advertise, promote and market products of companies other than Complainant.
[a.] Respondent contends that pursuant to the Internet Hosting Services Agreement ("IFISA") between Complainant and Respondent, Complainant may redirect domains to other projects to insure that this still pending revenue in the event that the account is in default. Respondent further contends that its account with Complainant was indeed in default.
[b.] Respondent argues that this case is outside the scope of the Uniform Dispute Resolution Policy ("UDRP") since it hinges on a business dispute between the parties, with possible causes of action for breach of contract.
C. Additional Submission
In its Additional Submission, Complainant states, in the form of an attached declaration, that it did not understand the IHSA to permit Respondent to register the domains in its name, and was not even aware that registration of a domain name was a necessary prerequisite to establishing a website.
FINDINGS AND DISCUSSION
As a preliminary issue, the Panel notes that Respondent's Response was received on August 1, 2008 and was determined deficient pursuant to ICANN Rule 5 because it was not received in hard copy prior to the response deadline. It is within the Panel's discretion as to what extent it will afford the deficient Response any weight. See Clear Blue Holding, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum March 28, 2007) (deciding to consider a deficient response even though it was deficient because it provided useful information to the panel in making its decision). In this case, the Panel has considered the Response only to the extent that it points out that this dispute raises contractual issues outside the scope of the UDRP.
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.
In this case, the Panel has decided not to decide the case on the merits, so it will not be considering these three elements.
Resolution of the narrow issues on which the Panel is permitted to rule under the UDRP in this case would require the examination of additional factual and legal issues outside the scope of the UDRP. A determination of whether or not Respondent was authorized under its Internet Hosting Services Agreement to redirect the domain at issue to other projects, due to default of Complainant's obligations under that Agreement, would require an analysis of contract issues which may be best resolved by a forum of broader jurisdiction.
Under Section 5 of the Policy, disputes outside of the narrower framework of Section 4 of the Policy “..., shall be resolved through any court ... available.
This Panel is not prepared to resolve these contractual issues since they are outside the framework of the UDRP. (See, similarly, LC Insurance Group, LLC v. Bart Peabody & Assoc., FA 690778 (Nat'l Arb. Forum June 21, 2006) (dispute concerning whether respondent had the right to transfer domains to itself during the course of its agency was outside the framework of Section 4 of the Policy).
This decision should not be viewed as a ruling in favor of Respondent. The Panel is simply of the view that this is not a dispute which it should be resolving on the merits and that its decision should leave the domain name registrations status quo.
The Complaint of Blue Magic, Inc. with respect to the domain names <purecitrus.com> and <northamericanoil.com> is hereby dismissed.
David A. Einhorn, Panelist
Dated: August 24, 2008
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