National Arbitration Forum




TRUTHOUT, a California Non-Profit Corporation v. Marc Ash c/o Artfix

                                                   Claim Number: FA1004001317457            



Complainant is TRUTHOUT, a California Non-Profit Corporation (“Complainant”), represented by Sol Levitt, of Sayre & Levitt, LLP, California, USA.  Respondent is Marc Ash c/o Artfix (“Respondent”), represented by Karen J. Bernstein, of Law Offices of Karen J. Bernstein, LLC, New York, USA.



The domain names at issue are <>, <>, and <> registered with Safenames Ltd.



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.



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 <>, <>, and <> 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,, and  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.



Complainant requests that the domain names be transferred from Respondent to Complainant.



A. Complainant

Complainant is a non-profit organization named Truthout, formed under the laws of California. The organization was founded in 2003 by Respondent in conjunction with others.


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 <> in January 2001 and subsequently the disputed domain names <> and <> 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.




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 Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”)  


Preliminary Issue – Concurrent Court Proceedings


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.




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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