Photobooth StL, LLC v. St. Louis Photobooth LLC / Michael Tran
Claim Number: FA1009001349312
Complainant is Photobooth StL, LLC ("Complainant"), represented by Daniel T. Batten of Greensfelder, Henker & Gale, P.C., Missouri, USA. Respondent is St. Louis Photobooth LLC / Michael Tran ("Respondent"), represented by Jeffrey H. Kass of Gallop, Johnson & Neuman, L.C., Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <stlouisphotobooth.com>, registered with eNom, Inc.
The domain name at issue is <saintlouisphotobooth.com>, registered with WILD WEST DOMAINS, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010; the National Arbitration Forum received payment on September 29, 2010.
On September 30, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stlouisphotobooth.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2010, WILD WEST DOMAINS, INC confirmed by e-mail to the National Arbitration Forum that the <saintlouisphotobooth.com> domain name is registered with WILD WEST DOMAINS, INC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, INC has verified that Respondent is bound by the WILD WEST DOMAINS, INC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@stlouisphotobooth.com and postmaster@saintlouisphotobooth.com. Also on October 4, 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 October 26, 2010.
On November 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant rents photobooths for events including wedding receptions, parties, etc. throughout the Midwest, focusing on the St. Louis metropolitan area since September 2002, and in that year adopted the trademark PhotoboothStL which it registered with the Missouri Secretary of State. In addition a federal trade mark registration was issued to the Complainant. Complainant owns the domain names <PhotoBoothStL.com> and three similar others.
Respondent registered the domain name <stlouisphotobooth.com> on December 27. 2007 and uses it to promote its services in the St. Louis area, and it directly competes with that of Complainant by steering unsuspecting consumers to its own website.
The Complaint thereupon proceeds to allege that in accordance with ICANN Policy ¶ 4(a) the names are nearly identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect to the domain name; and the domain name has been registered in bad faith. It is not necessary to list the Complainant’s alleged specific evidence in view fact that this decision will not be based on any of the aforesaid items.
B. Respondent
There is currently a civil action pending between the parties in the United States District Court for the Eastern District of Missouri in which Respondent seeks cancellation of the Registration upon which Complainant relies for its allegations that the mark is generic and/or generic with a geographically descriptive modifier. Respondent further seeks a declaration that its Domain Names in issue in this proceeding do not infringe upon Complainant’s Trademark, and also that the laws of the United States vests in the District Courts exclusive jurisdiction.
In addition Respondent supplies alleged facts to contravene Complainant’s allegations of violation of the three elements of Policy ¶ 4(a).
C. Additional Submissions
On October 29, 2010, Complaint through its attorney sent a letter to the National Arbitration Forum offering to consent to a decision that would suspend this proceeding pending resolution of the suit currently in The United States District Court. This will be taken into consideration in rendering a the decision.
FINDINGS
Respondent provides evidence of a court case in the United States District Court for the Eastern District of Missouri (Case No. 4:10cv01978) that involves the <stlouisphotobooth.com> and <saintlouisphotobooth.com> domain names and Complainant’s corresponding trademarks.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel determines, based on the WHOIS information and the fact that Respondent responded for both domain names, that the registrant of both of the disputed domain names is a single entity.
Preliminary Issue: Complainant’s Request for a Suspension
The parties jointly consent to a suspension or termination of the current proceedings under Rule 18, which states:
In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
Respondent provides evidence that it has filed a lawsuit against Complainant with the United States District Court for the Eastern District of Missouri (Case No. 4:10cv01978). Complainant and Respondent agree that the concurrent court proceeding involves the disputed domain names and Complainant’s trademark rights. Prior panels have chosen not to 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.”); see also NAT Int’l v. Suez, FA 105930 (Nat. Arb. Forum May 15, 2002) (finding that because prior to the commencement of the administrative proceeding, a legal proceeding had already resulted in a judgment determining the very issue raised for decision by the panel, the panel should exercise its discretion and terminate the proceedings). Both Complainant and Respondent have asked the Panel to suspend this current UDRP proceeding due to the concurrent court proceeding in Missouri. Based on the evidence in the record that the federal court case is likely to resolve the issues before this Panel, the Panel concludes that the current UDRP case is dismissed without prejudice pursuant to Rule 18.
The Complaint, with respect to the domain names <stlouisphotobooth.com> and <saintlouisphotobooth.com>, is hereby dismissed without prejudice.
Hon Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 12, 2010
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