CRM Info Tech, LLC, d/b/a CRMIT.COM v. c/o CRMIT.COM; c/o CRMPLUSPLUS.COM
Claim Number: FA1211001472279
Complainant is CRM Info Tech, LLC, d/b/a CRMIT.COM (“Complainant”), represented by Ernest W. Leonard of FRIEDMAN & FEIGER, LLP, Texas, USA. Respondent is c/o CRMIT.COM; c/o CRMPLUSPLUS.COM (“Respondent”), represented by Rakesh Prabhu of ALMT Legal, India.
REGISTRARS AND DISPUTED DOMAIN NAMES
The two domain names at issue are: 1) <crmit.com>, registered with Domainducks, Inc. d/b/a personalnames.com; and 2) <crmplusplus.com>, registered with Domain.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2012; the National Arbitration Forum received payment on November 26, 2012.
On November 20, 2012, Domainducks, Inc. d/b/a personalnames.com confirmed by e-mail to the National Arbitration Forum that the <crmit.com> domain name is registered with Domainducks, Inc. d/b/a personalnames.com and that Respondent is the current registrant of the name. Domainducks, Inc. d/b/a personalnames.com has verified that Respondent is bound by the Domainducks, Inc. d/b/a personalnames.com 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 November 20, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <crmplusplus.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2012, 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@crmit.com, postmaster@crmplusplus.com. Also on December 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 21, 2012.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the two domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the service mark on which the complaint is based is “CRMIT,” which is an acronym for “customer relationship management information technologies.” The Complainant alleges that this acronym is used to identify Complainant’s “services in customizing and configuring Oracle’s customer relationship management software solutions.”
Complainant, which is located in the U.S. and which is led by Mr. Nallanthi, alleges that it registered the two domain names <crmit.com> and <crmplusplus.com>, and that Respondent’s representative, Mr. Reddy, was authorized to have access to the Domain Names only for limited administrative purposes. However, Complainant alleges that Respondent and/or Mr. Reddy have claimed ownership of the domain names without the permission of Respondent.
Complainant alleges that “1) the Domain Names, which CRMIT-India [Respondent] wrongfully uses and controls, are identical or confusingly similar to the service mark used by CRMIT.COM, in which the Complainant has rights; 2) CRMIT-India has no rights or legitimate interest in respect of the Domain Name [sic]; and 3) the Domain Names are being used by CRMIT-India in bad faith.”
B. Respondent
The full name of the Respondent Company is CRMIT Solutions India Pvt Ltd. The latter company controls the two disputed domain names through two affiliated trade names: “c/o CRMIT.COM and “CRMPLUSPLUS.COM.” As a result, Respondent is affiliated with the two entities listed as the domain name registrants. Respondent is located in India and is led by Mr. Reddy.
The Response states that, during July 2007, Mr. Reddy coined the terms “CRMIT” and “CRM++” and changed the name of his company to CRMIT Solutions India Pvt Ltd. with no objection from Complainant, since Respondent was performing authorized “back office” services on behalf of Complainant. In July 2007, “Mr. Nallanthi [Complainant’s representative] contacted one Mr. Mike and bought the [www.crmit.com] domain name for US$500 and also purchased the domain name www.crmplusplus.com for and on behalf of the Respondents.”
Respondent alleges that it owns trademark registrations for “CRMIT” and “CRM++” in India and the United States for “providing Information Technology and related services.” The Respondent states, “As of today, Mr. Nallanthi, (who heads the Claimant Company) continues to carry on its business by illegally using the domain name www.crmit.us, whose trademark rights are actually owned by the Respondent herein.”
According to the Respondent, Complainant “has breached the terms of business with the Respondents and owes more than US $140,000 to the Respondents.”
Beginning around 2007, the Complainant and Respondent decided to establish a business together to promote solutions to Oracle’s customer relationship management software applications. Complainant and Respondent were to form separate companies. Complainant was to establish a brand name and be responsible for business development, and Respondent was to manage the back office operations in India.
In 2007, the Texas Secretary of State’s Office issued a Certificate of Formation and a Certificate of Assumed Name in favor of “CRM Info Tech LLC” (Complainant). The record does not contain any information about any trademark registration or application for the terms “CRMIT” or “CRMPLUSPLUS” in the name of the Complainant or Mr. Nallanthi. Moreover, the record does not contain any samples of promotional materials showing either party’s use of a trademark containing the acronyms “CRMIT” or “CRMPLUSPLUS.”
The record for this UDRP proceeding includes the following:
1. An Indian trademark registration for “CRMIT” (stylized) for “information technology services, consulting services, software customization, technical support services and computer software development services.” This registration is in the name of CRMIT Solutions Pvt, Ltd. (Respondent)
2. An Indian trademark registration for “CRM++” (stylized) for “information technology services, consulting services, software customization, technical support services and computer software development services.” This registration is in the name of CRMIT Solutions Pvt, Ltd. (Respondent)
3. A U.S. trademark registration for “CRM++” (stylized) for “software pluggable products which enhance business experience of cloud-based solutions for sales, marketing and service automation, namely, computer software to integrate business operations, track problems and generate production reports, and computer software for use in customer relationship management.” This registration claims a date of first use of August 1, 2007. The registrant is “CRM Infotek India Private Ltd.” (Respondent claims to own this U.S. registration, evidently on the basis that “CRM Infotek India Private Ltd.” is a predecessor in interest to Respondent.)
Following Respondent’s assurance that CRMIT Solutions India Pvt Ltd. would manage the websites, domains, and e-mail accounts associated with <crmit.com> and <crmplusplus.com>, Complainant gave Respondent administrative access to Complainant’s domain account at <dotster.com>. The record contains no evidence as to whether Respondent was given any ownership rights to the <crmit.com> and <crmplusplus.com> domain names, directly or indirectly.
Sometime during June 2011, Respondent locked Complainant out of the <crmit.com> and <crmplusplus.com> domain names, changed the logins, and deleted the e-mails for Complainant’s employees and consultants.
The deterioration of the relationship between Complainant and Respondent eventually resulted in this UDRP proceeding and a law suit between the parties before a court in Texas: CRMIT Solutions India Pvt. Ltd. v. CRM Info Tech LLC. In this law suit filed by Respondent, the Respondent alleged that it had performed services for which the Complainant, CRM Info Tech LLC, had collected payment from its customers, but that defendant failed to compensate plaintiff for the services that it had performed. The record for this UDRP proceeding contains a copy of the Complaint, which makes no specific mention of the <crmit.com> and <crmplusplus.com> domain names. However, it is possible that the law suit will address the domain names in the context of related issues to be addressed in the Texas litigation. The complaint references objectionable “acts and omissions” of CRM Info Tech, LLC [Complainant], which could relate to the parties’ rights in the two domain names at issue. This law suit was filed in 2012 and remains pending.
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."
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.”
This Panel concludes that a single entity controls the two domain names at issue: Mr. Vinrod Reddy through his company CRMIT Solutions Pvt. Ltd. As such, the Complaint properly relates to two domain names, both of which are registered by the same entity.
Concurrent Court Proceedings
Complainant asserts that Complainant and Respondent are involved in litigation (Case No. 2012-09479), currently pending in the 295th District Court, Harris County, Texas. Although the Complaint filed by Respondent in the Texas court does not specifically mention any domain names, the record for this UDRP proceeding does not contain the Answer, any counterclaim, other pleadings, briefs and other documents related to the Texas litigation.
Whether control of the disputed domain names is an issue in the litigation is unclear. The Complaint merely states that the dispute is based upon failure to settle invoices and breach of contract between the parties. However, the acquisition of the disputed domain names may be related to one of the alleged contract breaches or “acts or omissions” which are the subject of the pending litigation.
Several panels have chosen not to proceed with the UDRP because of 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.”).
UDRP Rule 18 relates to the effect of concurrent court proceedings. The Rule provides, in relevant part, that the Panel has the discretion to choose whether to suspend or dismiss the adminstrative proceeding or to make a decision on the merits of the dispute when legal proceedings are initiated prior to or during an administrative proceeding in respect to a domain name that is the subject of the complaint. Generally, UDRP panels defer to the courts to make a decision regarding the disputed domain name(s). The five cases below illustrate this deferrence.
· Salba Corp. N.A., William A. Ralston & Richard L. Ralston v. X Factor Holdings, FA 1443427 (Nat. Arb. Forum June 25, 2012) (holding that a UDRP arbitration should not proceed where there is pending litigation involving the same issues and requesting similar relief);
· Your Baby Can, LLC v. Edmonds, FA 1439429 (Nat. Arb. Forum May 29, 2012) (dismissing the complaint based on concurrent court proceedings that the complainant filed against the respondent that directly relates to the relationship between the parties);
· The Gap, Inc. v. G.A.P Adventures Inc., FA 1419226 (Nat. Arb. Forum Feb. 13, 2012) (refusing to make a decision on the merits of the dispute under the UDRP when litigation involving the parties’ various claims to trademark rights was active and relating to how those rights might affect, among other more significant issues, ownership of the disputed domain name);
· Bluemile, Inc. v. McCockin, FA 1411110 (Nat. Arb. Forum Nov. 28, 2011) (finding that it was appropriate to have the issue be revisited and resolved within the court system where there was ongoing litigation in the U.S. District Court in Ohio relating to the disputed domain name where, despite the respondent not being a named defendant in the case, the complainant alleged that a respresentative of the defendant transferred the disputed domain name to the respondent in an attempt to circumvent the court order); and
· Acumen Enters., Inc v. Morgan, FA 1381503 (Nat. Arb. Forum May 17, 2011) (finding that the dispute should be dismissed given that the complainant had filed a lawsuit in the U.S. District Court for the Northern District of Texas requesting the same relief requested of the Panel, and where the Panel noted that the relief of transfer of the domain name sought before the U.S. Court was essentially the same as the relief sought in the UDRP proceeding).
In this situation, in view of the existence of pending litigation between the parties, this Panel chooses to dismiss the Complaint. As a result, it is unnecessary for the Panel to analyze the three elements of the Policy.
For the reasons set forth above, the Panel concludes that relief shall be DENIED.
Accordingly, at least until such time as the concurrent litigation is resolved, it is Ordered that the <crmit.com> and <crmplusplus.com> domain names REMAIN WITH Respondent.
Linda M. Byrne, Panelist
Dated: January 16, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page