Phase Forward Incorporated v. Noel Adams individually and d/b/a Phase Forward

Claim Number: FA0307000167920

 

PARTIES

Complainant is Phase Forward Incorporated, Waltham, MA (“Complainant”) represented by M. Kelly Tillery, of Leonard, Tillery & Sciolla, LLP.  Respondent is Noel Adams individually and d/b/a Phase Forward, San Fransisco, CA (“Respondent”) represented by Matthew Stavish, of Liniak Berenato & White.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <phaseforward.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 3, 2003; the Forum received a hard copy of the Complaint on July 7, 2003.

 

On July 7, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <phaseforward.net> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 July 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@phaseforward.net by e-mail.

 

A timely Response was received and determined to be complete on July 31, 2003.

 

An Additional Submission was timely received from Complainant and was determined to be complete on August 6, 2003.

 

An Additional Submission was timely received from Respondent and was determined to be complete on August 11, 2003.

 

On August 13, 2003 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

 

PROCEDURAL ORDER

 

The Panel notes that the Respondent filed an application for a United States Trademark registration for PHASEFORWARD in international class no. 35 on October 1, 2002 (Response Exhibit 3).  The Complainant  filed a Protest and a Notice of  Opposition to the Respondent’s trademark application on February 26, 2003 (Complaint Exhibits L and M).

 

At p.8 of the Complaint, the Complainant states that its Opposition “[set]forth substantially the same facts which have been listed in this Complaint.”  At Exhibit N of the Complaint, the Complainant has exhibited a letter from the United States Trademark Trial and Appeal Board dated June 23, 2003 that gives a detailed schedule for the Opposition proceeding (No. 91156778) that will lead to a decision on whether the Respondent may register PHASEFORWARD as a trademark.  The Panel notes that, in its letter, the Trademark Trial and Appeal Board projects that Opposition No. 91156778 will run through the summer of 2004.

 

 In its Response, at p.2, the Respondent also informed the Panel, per paragraph 5(b)(vi) of the Rules, that this related legal proceeding, Opposition No. 91156778, was in progress.

 

The Panel is guided by paragraph 18(a) of the Rules which provides:

 

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.

 

Based on this provision, the Panel has decided to terminate this proceeding.  The Panel believes this Policy proceeding substantially duplicates the ongoing Opposition involving the Complainant and the Respondent before the United States Trademark Trial and Appeal Board.  That Opposition, once resolved, should also clarify the parties’ respective rights to the disputed domain name, <phaseforward.net>.

 

Therefore, it is ORDERED that the complaint be dismissed without predjudice.

 

  

 

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Dennis A. Foster, Panelist
Dated: September 3, 2003

 

 

 

 

 

 

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