national arbitration forum




SmartPros Ltd. v., CLE Inc. / David Schurman /

Claim Number: FA1308001515835



Complainant is SmartPros Ltd. (“Complainant”), represented by Govinda M. Davis of COLLEN IP, Intellectual Property Law, P.C., New York, USA. Respondent is, CLE Inc. / David Schurman / (“Respondent”), represented by Michele A. Richman of FurtherEd, Inc., New York, USA.



The domain names at issue are <>, registered with NETWORK SOLUTIONS, LLC. and <>, registered with GODADDY.COM, LLC.



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.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received payment on August 21, 2013.


On August 21, 2013, NETWORK SOLUTIONS, LLC., confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with NETWORK SOLUTIONS, LLC and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC, has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 August 22, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 September 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2013 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 September 4, 2013, 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 September 23, 2013.


Complainant submitted an Additional Submission, which was deemed compliant on September 30, 2013. Respondent submitted an Additional Submission which was deemed compliant on October 1, 2013. The Panel took both of these submissions into consideration.


On October 2, 2013, 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.


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 domain names be transferred from Respondent to Complainant.



  1. Complainant makes the following contentions:


Complainant alleges that it owns the KEEPSMART trademark, and uses the mark in connection with videotape production, educational services in various fields of study, and distribution of course material services offered online and through seminars. Complainant’s business is a publically traded corporation that has existed since 1981. Complainant is a leader in providing professional education for various technical industries, such as accounting, financial services, law, ethics, human resources, compliance, engineering, health and safety, and information technology. Complainant offers online education courses, as well as courses in a physical classroom setting. Complainant registered its KEEPSMART trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,149,042 filed August 8, 2000, registered September 26, 2006).


Respondent registered the <> and <> domain names, which both incorporate Complainant’s mark in its entirety, rendering the domains confusingly similar to Complainant’s mark. Both of the disputed domain names resolve to inactive websites. The <> domain name leads to a webpage that displays the statement, “We have encountered an error. We are in the process of fixing it.” The <> domain name displays a placeholder. Respondent registered the <> domain name on November 9, 1999, and the <> domain name on May 3, 2012.


Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, and Respondent is not commonly known by the KEEPSMART mark, or either of the domain names in dispute. Respondent demonstrates bad faith registration and use of both the <> and <> domain names, due to its use of Complainant’s mark in the domain names for the purpose of attracting Internet users to the resolving websites for commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent was also well aware of Complainant’s exclusive rights to the KEEPSMART mark, due to Complainant’s USPTO registration, and Respondent’s effort to register the same mark, which was rejected by the USPTO.


  1. Respondent makes the following contentions:


Respondent does not dispute Complainant’s valid claim to the KEEPSMARK trademark in connection with educational services; however, Respondent makes no admission regarding the validity of Complainant’s trademark registration. Respondent also does not dispute that the <> and <> domain names are identical to Complainant’s KEEPSMART mark. However, Respondent has a legitimate business interest in the disputed domain names. Respondent operates a television show, FurtherEd TV, which is separate from Complainant’s education business. Respondent works to create new methods to generate revenue on a daily basis, and intends to use the disputed domain names for its television program directed toward children in the kindergarten through twelfth grade (“K-12”) age range. Respondent did not register the domain names in bad faith, nor does it use the domain names in bad faith. Respondent originally registered the <> domain name on November 9, 1999, prior to any claim of rights by Complainant in the KEEPSMART mark. Complainant’s CEO offered to purchase the <> domain name from Respondent for $10,000 in 2001, which Respondent declined. Respondent was never interested in selling the disputed domain names to Complainant—rather, Respondent was willing to enter into reasonable negotiations with Complainant for the rights to the mark, and Complainant stated it would sell the mark for the amount of $264,000. Respondent withdrew its petition to cancel the trademark, and offered Complainant the disputed domain names for the same price as Complainant asked for the mark, $264,000, then lowered the price to $100,000 after Complainant refused. Respondent contends its offered prices suggest a reasonable estimate of the domain names’ worth for legitimate business purposes. Complainant rejected the offer. Respondent did not register the <> domain name in bad faith, as Respondent has registered thirty-one other domain names with an “x” in the name, as a strategy to promote businesses that provide free educational services over the Internet. The purpose of registering the <> domain names is wholly unrelated to Complainant and was not meant to interfere with Complainant’s continuing education business.


  1. Complainant’s makes the following allegations in its Additional Submission:


Complainant reiterates its contentions with regard to the identical nature of both domain names to the KEEPSMART mark, and points out that Respondent does not refute that fact. Respondent’s claim that it works on new methods of generating revenue with relation to the <> and <> domain names is merely vague and speculative, and Respondent itself admits that it has no concrete plans for the domain names. Respondent claims to be associated with a company by the name of FurtherEd, which offers services identical to Complainant, and using the domain names to offer those services would infringe upon Complainant’s rights in the mark and would defeat a finding of bona fide use of the domain names. Respondent registered the domain names in bad faith after a business meeting between the parties, wherein Respondent participated with the purpose of assisting Complainant in selecting a new name for Complainant’s company. This demonstrates that Respondent knowingly registered the <> domain name after Complainant adopted the name for itself.


Respondent mischaracterizes Complainant’s initial request to purchase the <> domain name for $10,000—Respondent did not accept Complainant’s request, and counter-offered with prices in excess of $100,000, which Complainant considers extortion and turned the offer down.


Respondent’s claim that it registers domain names ending in the letter “x” is unavailing, as it nonetheless registered the <> domain name with prior knowledge of Complainant’s rights in the KEEPSMART mark, upon which the <> domain name is based.


Records indicate that Respondent abandoned all applications for the KEEPSMART mark before the USPTO, demonstrating that Respondent has no further interest in or use of for the disputed domain names, leading to the conclusion that Respondent maintained registration of both domain names in bad faith.


D. Respondent makes the following allegations in its Additional Submission:


Respondent basically sets up its intended use for the disputed domain names and takes factual issue with the content of the negotiations referred to by Complainant.



Preliminary Issue: Business/Contractual Dispute and Trademark Dispute Outside the Scope of the UDRP


Respondent argues that one of its employees coined the KEEPSMART name in 1999, which is reflected in the <> domain name, registered on behalf of Respondent. Respondent states that Complainant, in fact, believed that Respondent was the actual owner of the <> domain name, as Complainant made an offer to purchase the domain from Respondent for $10,000, which Respondent declined. Respondent makes no claims as to a business dispute with Complainant, arguing, rather, that the domain name was registered by Respondent for its own benefit.


In so far as the trademark dispute, Respondent claims that it learned of Complainant’s alleged rights in the mark in September of 2011, at which time Respondent hired the Marksman company to determine whether Complainant used the mark to market or sell goods. Respondent states that Marksman’s findings include that in 2011, Complainant failed to use the KEEPSMART name to market any goods or services. Respondent asserts that in January of 2012, Respondent filed a trademark application for the KEEPSMART mark, which was denied on the basis of similarity to Complainant’s mark. Respondent claims that it then filed a petition to cancel Complainant’s mark, arguing that Complainant abandoned its mark, based on non-use for at least three years and demonstrated no intent to resume use. It was only after Respondent filed its petition to cancel, Respondent argues, that Complainant began using the KEEPSMART on its website. Respondent denies that its petition to cancel Complainant’s trademark was unsuccessful; rather, Respondent withdrew the petition and chose the name “FURTHERED” as its brand for its Continuing Education Program.


Complainant alleges that it had a business history together with Respondent—Complainant and Respondent held meetings around the year 1999 regarding Complainant’s acquisition of Respondent’s company, during which the parties discussed use of the KEEPSMART mark to promote services that Complainant offered. At that time, Complainant claims it registered the Keepsmart, Inc. corporation, as an umbrella corporation to house the companies it owned, as well as other companies it planned to acquire. Complainant asserts that Respondent then registered the <> domain name on behalf of Complainant, listing Complainant’s employee Joseph Fish as the technical contact in the WHOIS information. Complainant argues that it owned and operated the <> domain name until 2008, when Respondent discontinued the content associated with the domain name, and began to use the resolving website to market services that competed with Complainant.


With regard to the trademark dispute, Complainant alleges that Respondent abandoned any rights it could claim in the KEEPSMART mark, as Respondent filed an intent-to-use application with the USPTO on December 3, 1999, seeking registration of the mark, and then abandoned the application on February 7, 2002. Complainant states that Respondent re-applied for the mark on January 5, 2012, and then again abandoned the application on October 5, 2012, after the USPTO refused registration due to Complainant’s priority in the KEEPSMART mark for similar services. Complainant alleges Respondent registered a corporation under the KEEPSMART name on December 8, 2011, but has since abandoned that effort, as the corporation was dissolved on April 16, 2013.  Complainant argues that the dispute reached a climax in 2012 when Respondent filed a petition to cancel Complainant’s trademark registration, which was denied by the USPTO, which dismissed Respondent’s opposition with prejudice. Since that time, according to Complainant, Respondent has not hosted any content at either of the disputed domain names, as doing so would constitute infringement on Complainant’s trademark.


In this instance, the Panel finds that this is a business or contractual dispute, as well as a trademark dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:


A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.


In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:


When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.


The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:


[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.


Further, since Complainant and Respondent both assert rights to the KEEPSMART mark, the Panel additionally determines that this dispute falls outside the scope of the Policy, and therefore elects to dismiss the Complaint. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:


The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.


Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark and business disputes between the parties. See, e.g., Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also 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.”). Therefore, the Panel has determined to dismiss the instant Complaint.



For the reasons set forth above, the Panel concludes that relief shall be DENIED.


Accordingly, it is Ordered that the <> and <> domain names REMAIN WITH Respondent.


James A. Carmody, Esq., Panelist

Dated: October 7, 2013





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