GuestLogix, Inc. v. Onboard
Retail Solutions Ltd / Dan Hayter
Claim Number: FA1008001338393
PARTIES
Complainant is GuestLogix, Inc (“Complainant”), represented by Kyle
T. Peterson,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onboardretail.com>, <onboardretailsolutions.com>,
<onboardretailsolution.com>, <onboardretail.net>, <onboardretailsolution.net>, and <onboardretailsolutions.net>,
registered with 1 & 1 INTERNET AG.
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 30, 2010.
On August 3, 2010, 1 & 1 INTERNET AG confirmed by e-mail to
the National Arbitration Forum that the <onboardretail.com>, <onboardretailsolutions.com>,
<onboardretailsolution.com>, <onboardretail.net>, <onboardretailsolution.net>, and <onboardretailsolutions.net>
domain names are registered with 1 & 1 INTERNET
AG and that the Respondent is the current registrant of the name. 1 & 1
INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 August 5, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of August 25, 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@onboardretail.com,
postmaster@onboardretailsolutions.com,
postmaster@onboardretailsolution.com,
postmaster@onboardretail.net, postmaster@onboardretailsolution.net, and postmaster@onboardretailsolutions.net by e-mail. Also on August
5, 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 and determined to be complete on August 25, 2010.
Complainant’s Additional Submission was received on August 30, 2010 in
compliance with Supplemental Rule 7. Respondent’s
Additional Submission was received on September 7, 2010 in compliance with
Supplemental Rule 7.
On September 3, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <onboardretail.com>, <onboardretailsolutions.com>, <onboardretailsolution.com>, <onboardretail.net>, <onboardretailsolution.net>, and <onboardretailsolutions.net> domain names, the domain names at issue, are confusingly similar to Complainant’s ONBOARD RETAIL SOLUTIONS, and POWERING ONBOARD RETAIL marks.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used domain names at issue in bad faith.
B. Respondent makes the
following assertions:
1. Complainant has no protectable registered or
common law rights to its marks as such are purely descriptive of services
performed by Complainant and the marks have developed no secondary meaning in
the mind of the public.
2. Respondent has been using the domains
extensively to promote its own services which are competitive with those of the
Complainant.
3. Respondent did not register or used the
domain names at issue in bad faith.
4. There is currently litigation between
Complainant and Respondent pending in
C.
Complainant’s Additional Submission:
Complainant failed to address the issue of pending litigation between the parties to this proceeding which
apparently involves the domain
names at issue, at least in part.
D. Respondent’s Additional
Submission: Respondent essentially makes
the same arguments in its Additional Submission as in the Response.
FINDINGS
Preliminary Issue:
Respondent contends, and Complainant does not deny, that currently Respondent and Complainant are adverse parties in legal proceedings commenced in the Ontario Superior Court of Justice (File No. CV-10-400356). According to Respondent, this court proceeding encompasses two earlier legal proceedings in the same court: File No. CV-10-395938 and File No. CV-08-00364372. Respondent claims that Complainant made similar allegations concerning the disputed domain names in these court proceedings as Complainant is making in the instant UDRP case. Respondent asserts that it has counterclaimed against Complainant. Complainant does not address Respondent’s assertions about the court proceedings.
This Panel will not proceed with the arbitration because of the pending litigation. 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.”). Accordingly, the Panel chooses to dismiss the Complaint.
DECISION
Accordingly, it is Ordered that the Complaint be DISMISSED.
James A. Carmody, Esq., Panelist
Dated: September 6, 2010
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