Fluid Filled Insoles Inc. v.
Best Sole, Inc.
Claim Number: FA0610000825628
PARTIES
Complainant is Fluid Filled Insoles Inc. (“Complainant”), represented by Robert
H. Thornburg, of Allen Dyer Doppelt Milbrath & Gilchrist
P.A., The Citrus Center,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <happyfeet.net>, registered with Network
Solutions.
PANEL
The undersigned certifies that he or she 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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 23, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 1, 2006.
On October 26, 2006, Network Solutions confirmed by e-mail to the
National Arbitration Forum that the <happyfeet.net> domain name is
registered with Network Solutions and
that the Respondent is the current registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions 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 November 8, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 28, 2006 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@happyfeet.net by
e-mail.
On November 28, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of time to respond to the Complaint due to extenuating circumstances. The National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of December 18, 2006 for a filing of a Response.
A timely Response was received and determined to be complete on December 18, 2006.
An Additional Submission from Complainant was received by the National
Arbitration Forum on December 20, 2006 and was determined to be complete
pursuant to Supplemental Rule 7.
On December 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
A timely Additional Submission from Respondent was received by the
National Arbitration Forum on December 27, 2006, which was also considered by
the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <happyfeet.net> domain name is confusingly similar to Complainant’s HAPPY FEET mark.
2. Respondent does not have any rights or legitimate interests in the <happyfeet.net> domain name.
3. Respondent registered and used the <happyfeet.net> domain name in bad faith.
B. Respondent makes the following assertions:
1.
There is
a Petition for Cancellation pending for Complainant’s mark HAPPY FEET for gel
insoles.
2.
Respondent
acquired the exclusive right to utilize the “Happy Feet” trademark and the
subject domain name, and has done so since 2002.
3.
This is
a contract dispute between Respondent and Complainant.
C. Additional Submissions
1.
Complainant
emphasizes its rights through assignment and explains the termination of
Respondent’s contractual permission to use the mark HAPPY FEET.
2.
Respondent
states that Complainant’s trademark rights should not cancel its ownership of
the domain name. Respondent also
implores the Panel to defer to the Court hearing the pending Civil Action
between the parties on the same subject matter.
PRELIMINARY ISSUES
Complainant has sued Respondent for
trademark infringement in the United States District Court for the Middle
District of Florida, Orlando Division.
The suit involves claims for willful infringement of Complainant’s
registered HAPPY FEET trademark and seeks damages, injunctive relief, and
attorneys’ fees pursuant to the Lanham Act, 15 U.S.C. §§ 1114-1117. Complainant also seeks damages for trade
dress infringement pursuant to the Lanham Act, 15 U.S.C. § 1125. Respondent claims that the <happyfeet.net>
domain name is part of the court proceeding and requests that the Panel dismiss
this proceeding. Under Rule 18 of the
Policy, a Panel may decide not to proceed with this matter at the present time
and instead have the parties either litigate the dispute along with the other
issues in a court of law, or have Complainant wait until the outcome of the
litigation to bring this domain name dispute.
See AmeriPlan Corp. v. Gilbert FA 105737 (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 a decision regarding the
domain name will have no practical consequence); see also Lutton Invs., Inc. v. Darkhorse Distrib.,
Inc., FA 154142 (Nat. Arb. Forum June 4, 2003) (stating that “[t]he pending
arbitration between the parties to this dispute, touching on matters directly
relevant to the resolution of a claim under the UDRP, justifies terminating the
present administrative proceeding” and dismissing the complaint without
prejudice).
In addition, both parties
acknowledge an underlying contract dispute.
Prior decisions under the Policy have held that certain issues exceed
the scope of the Policy and are more properly resolved in courts of law. Among these issues are contractual disputes,
breaches of fiduciary duties, employer/employee disputes, and other business
disputes. See Discover
Accordingly,
this Panel declines to decide this case at present due to pending court
proceedings, as well as the nature of the dispute, a dispute which falls
outside the UDRP.
DECISION
It is Ordered that the Complaint be DISMISSED
without prejudice.
Sandra J. Franklin, Panelist
Dated: January 4, 2007
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