TRUTHOUT, a
Claim
Number: FA1004001317457
PARTIES
Complainant is TRUTHOUT, a California Non-Profit
Corporation (“Complainant”),
represented by Sol Levitt, of Sayre & Levitt, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <truthout.org>, <truthout.com>, and <truthout.net>
registered with Safenames Ltd.
PANEL
The undersigned, Jonas Gulliksson, David Sorkin and Richard D.
Rosenbloom, certify that they have acted independently and impartially and to
the best of his or her knowledge has no known conflict in serving as Panelist
in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 6, 2010.
On April 9, 2010, Safenames Ltd confirmed by e-mail to the National
Arbitration Forum that the <truthout.org>, <truthout.com>, and <truthout.net>
domain names are registered with Safenames Ltd
and that the Respondent is the current registrant of the name. Safenames Ltd
has verified that Respondent is bound by the Safenames
Ltd 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 April 13, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of May 3, 2010
by which Respondent could file a Response to the Complaint, via e-mail to all
entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@truthout.org, postmaster@truthout.com,
and postmaster@truthout.net. Also on April
13, 2010, the Written Notice of the Complaint, notifying Respondent of the
email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received on May 3, 2010. Respondent’s Response was received without
the annexes separated from the Response and so the Forum deemed the Response
deficient according to ICANN Rule 5(a).
On May 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson, David Sorkin and Richard
D. Rosenbloom as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a non-profit organization named Truthout, formed under
the laws of
The domain names in dispute are confusingly similar to the
organizations name Truthout and service mark T Truthout.
Respondent has no legitimate interest in the disputed domain names.
Respondent’s possible use of the domain names would create a likelihood of
confusion and divert Internet traffic from Complainant’s website. Respondent
has no ongoing relationship with Complainant and thus no
legitimate interest or authority to use the names. Moreover Respondent has no bona fide right to offer goods, services
or information in association with Complainant’s name.
The disputed domain names are registered and used in bad faith.
B. Respondent
Respondent registered the disputed domain name <truthout.com> in January 2001 and
subsequently the disputed domain names <truthout.net>
and <truthout.org> in September
2002. All were registered in Respondent’s name. In 2003, Respondent amongst
others, formed the non-profit corporation Truthout, i.e. Complainant.
The present dispute falls outside the scope of the
UDRP. There is pending litigation between the parties concerning inter alia control of the domain names
at issue. Moreover, it concerns business and contractual obligations as well as
trademark rights.
Should the Panel consider the dispute to fall within
the scope of UDRP, the domain names in dispute are neither identical, nor
confusingly similar to Complainant’s design mark. Furthermore, the Complainant
has failed to establish that it has rights in the common law mark.
Complainant has not proven lack of legitimate interest
and has failed to prove that Respondent has registered and used the domain
names in bad faith.
FINDINGS AND DISCUSSION
Procedural
Issue – Deficient Response
The submitted Response was indeed timely,
however, it did not comply with the formal ICANN Rule 5(a) as the annexes were
not submitted separated from the Response.
The Panel is free to
decide whether to consider Respondent’s deficient submission. See Telstra Corp. v. Chu, D2000-0423 (WIPO June
21, 2000) (finding that any weight to be given to the lateness of the Response
is solely in the discretion of the Panelist); and Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding
that a Panel may consider a response which was one day late, and received
before a Panelist was appointed and any consideration made).
This Panel has chosen to consider the Response
despite the deficiency based on the ground that it would not be consistent with
the fundamentals of the UDRP process to reject the Response on a formal matter
such as failure to separate the annexes, particularly in view of the fact that
the Response otherwise was timely. See Strum v.
Nordic Net
Preliminary
Issue –
The dispute over the domain names is related to a
dispute that is well beyond the scope
of UDRP proceedings. See
Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the
scope of the Policy because it involves a business dispute between two
parties. The UDRP was implemented to address abusive
cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb.
Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a
common-form claim of breach of contract or breach of fiduciary duty. It
is not the kind of controversy, grounded exclusively in abusive
cyber-squatting, that the Policy was designed to address.”)
The Panel notes that the full dispute between the
parties is already the subject of civil litigation. The civil court is a better
suited arena for the presenting of evidence for the comprehensive adjudication
of the dispute. In any case, no purpose is served by giving a decision based on
the merits of this case when it is likely that it will not have any practical
consequences. See
AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22,
2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶
4(k) requires that ICANN not implement an administrative panel’s decision
regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a
decision when there is a court proceeding pending because “no purpose is served
by [the panel] rendering a decision on the merits to transfer the domain name,
or have it remain, when as here, a decision regarding the domain name will have
no practical consequence.”)
For the foregoing reasons, the
Panel declines to consider the arguments presented in this case and the
Complaint is dismissed.
DECISION
The Panel concludes that relief shall be DENIED.
Jonas Gulliksson, Panel Chair
David Sorkin, Panelist
Richard D. Rosenbloom, Panelist
Dated: May 26, 2010
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