Clear!Blue Holdings, L.L.C.
v. NaviSite, Inc.
Claim Number: FA0701000888071
PARTIES
Complainant is Clear!Blue Holdings L.L.C. (“Complainant”), represented by Jeffrey
P. Thennisch, of Dobrusin & Thennisch, P.C., 29 W.
Lawrence Street, Suite 210, Pontiac, MI 48342. Respondent is NaviSite, Inc. (“Respondent”), represented by Kenneth
L. Wilton, of Seyfarth Shaw LLP, 2029 Century Park East,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clearblue.com>, registered with Network
Solutions, Inc.
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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 12, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 16, 2007.
On January 12, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <clearblue.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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”). This decision is being
rendered in accordance with the Policy, the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s
UDRP Supplemental Rules (the “Supplemental Rules”).
On January 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 12, 2007 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@clearblue.com by e-mail.
A hard copy of the Response was received on February 13, 2007, after
the deadline for Response. As a result,
the National Arbitration Forum has determined the Response to be deficient
pursuant to Supplemental Rule 5(a).
On February 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Clear!Blue Holdings, L.L.C.,` contends that it is a
Complainant contends it has used the CLEAR BLUE marks since
2000, and lists various clients for its services. Complainant contends that it has advertised
and promoted those marks in various media, including newspapers, magazines,
other print advertisements, radio and television advertisements, and the World
Wide Web, and lists numerous awards and recognitions for its services. In 2006, Complainant contends that it had
revenues of approximately $14,000,000.
Complainant contends that it has owned the domain name <clearblue.biz> since March 2002, and that its uses of the Internet and that
domain name have been central to the success of Complainant’s business.
Complainant contends that the CLEAR BLUE marks are the subject
of U.S. Trademark Registrations Nos. 3,008,129 and 3,030,978, owned by
Complainant, which protect the CLEAR BLUE marks for Complainant’s
services. These registrations were
issued on applications filed on July 11, 2001.
Complainant contends that the CLEAR BLUE marks have acquired
special and particular significance and very valuable goodwill in identifying
Complainant’s services, and that the use and recognition of the CLEAR BLUE
marks provides them with protection under the laws of the U.S. and other
countries.
Complainant contends that Respondent was formerly known as Clear
Blue Technologies, that Respondent changed its name from BJK Investments, Inc.
to Clear Blue Technologies, Inc. on March 20, 2002, and that Clear Blue
Technologies, Inc. forfeited its existence on April 22, 2004 for failure to
designate a registered agent.
Complainant contends that Respondent is an online service
provider for customers with managed application and CDN needs, and that
Respondent is using the domain name at issue for commercial purposes by
redirecting Internet users to a web site maintained by Respondent using the
domain name <navisite.com> even though Respondent is no
longer known as Clear Blue Technologies.
Complainant contends the domain name at issue is confusingly
similar to the CLEAR BLUE marks, pointing out its
Complainant contends that Respondent has no rights or legitimate
interests in the domain name at issue.
Complainant contends that it has not authorized Respondent to use the
CLEAR BLUE marks. Complainant contends
that Respondent’s former use of the CLEAR BLUE marks did not begin until 2002,
well after Complainant’s first use of the CLEAR BLUE marks in 2000. Complainant contends that Respondent could
not have used the domain name at issue before 2002, and that Respondent has no
present rights in the CLEAR BLUE marks or the domain name at issue, since the
CLEAR BLUE marks have not been used since 2004.
Complainant contends that Respondent cannot assert rights in the
domain name at issue under any of the circumstances of paragraph 4(c) of the
Policy.
Complainant contends that Respondent has used and is using the
domain name in bad faith. Complainant
contends that without any current rights in the CLEAR BLUE marks, it may be
assumed that Respondent has adopted, registered and used the domain name at
issue in bad faith because of the reputation and goodwill associated with the
CLEAR BLUE marks. Complainant contends that
bad faith is also shown by Respondent’s use of the domain name at issue to
provide a link to the web site operated by Respondent at <navisite.com> on
which the Respondent offers its own services.
Complainant contends that both parties provide technological support in
conjunction with computer services and the World Wide Web, and that given the
fame of the CLEAR BLUE marks, Respondent must be well aware of Complainant’s
current rights and use of those marks.
Complainant contends that with such knowledge, its continued passive
holding of the domain name at issue evidences an obvious intent to disrupt Complainant’s
business and to confuse consumers.
Complainant supports these contentions by copies of government
information as to its corporate existence, WHOIS records for the domain name <clearblue.biz> and the domain name at issue, its U.S. trademark
registrations, a Google search for “clear blue,” and government information as
to the corporate existence of Clear Blue Technologies, Inc.
B. Respondent
Respondent has submitted a
deficient Response in accordance with ICANN Rule 5(a). The Panel has no obligation to consider the
Response. See Talk City Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no
weight would be afforded to the facts alleged in the respondent’s deficient
submission, partly because it “did not contain any certification that the
information contained in the e-mail was, ‘to the best of Respondent’s knowledge
complete and accurate’” in accordance with Rule 5(b)(viii)); see also Bank of Am. Corp. v. NW Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept Respondent’s
deficient Response that was only submitted in electronic form because it would
not have affected the outcome had the Panel considered it). The Panel has decided, nonetheless, to
consider the Response because it provides information that is quite helpful to
the Panel in its decision. See Strum
v. Nordic Net
Respondent Navisite, Inc. contends that it is a high technology company
that was formed in 1997. Respondent
contends that it provides a variety of technology services that allow its
client corporations to quickly create a secure, expandable, information
technology infrastructure that allows for transparent application management
over multiple locations. Respondent’s
services include hosting services that provide support for hardware and
software through multiple data centers, and consulting services relating to
various software applications.
Respondent claims revenues of approximately $109,000,000 in 2006.
Respondent contends that Complainant is an advertising and public
relations agency that does not, at any level, compete with Respondent.
Respondent contends that it has conducted a large portion of its
business since 2002, particularly its hosting services, through entities that
use “ClearBlue Technologies” trade names.
Respondent sets forth a very complicated set of corporate acquisitions
relating to those entities. Respondent
contends that the domain name at issue was first registered in 1996 by a third
party, and acquired by one of these entities on or about May 29, 2002, and
eventually transferred to Respondent.
Respondent contends that its uses the domain name at issue in various
ways: in e-mail addresses for
established web-related functions and as the contact for anti-SPAM
organizations; in the e-mail addresses of at least 60 employees since 2002. Respondent contends that the acquisition of
the domain name at issue in 2002 was without knowledge of Complainant, and that
Respondent has been using the domain name at issue as an integral and
legitimate part of its business continuously since that time.
Respondent contends that the Complaint is meritless, both factually and
legally, and was filed by Complainant in bad faith under paragraph 15(e) of the
Policy.
Respondent contends that Complainant has failed to prove that
Respondent has prior rights in the CLEAR BLUE marks. Respondent admits that the domain name at
issue is similar to the CLEAR BLUE marks.
Respondent contends that it is axiomatic that the complainant must have
acquired trademark rights before the domain name at issue was registered. Respondent contends that the domain name at
issue was first registered on July 22, 1996, prior to Complainant’s unsupported
claimed date of first use, the filing dates of its applications for
Respondent contends that Respondent adopted the trade name “ClearBlue”
one week before registration of Complainant’s domain name <clearblue.biz>
and five months before Complainant was incorporated. Respondent contends that Complainant’s own
evidence fails to show any rights in the CLEAR BLUE marks before Respondent’s
adoption of the trade name “ClearBlue” and acquisition of the domain name at
issue.
Respondent also contends that Complainant does not have exclusive
rights to the phrase “clear blue.” Respondents
points to third party
Respondent contends that it has rights and a legitimate interest in the
domain name at issue. Respondent
contends that the phrase “clear blue” is a generic term, as evidenced by uses
found on the Internet and web pages whose owners use the phrase as part of
their trade name. Respondent argues that
it has as much right to use the phrase as Complainant.
Respondent contends that it has been using the domain name at issue
since 2002 in 60 private e-mail addresses (subject to an offer of proof) and
specific public e-mail addresses, and to access its primary web site. Respondent contends that the domain name at
issue was acquired because it corresponded with the name of Respondent’s
predecessor, and the domain name at issue continues to be used because it
corresponds with the name of Respondent’s subsidiaries and remains an integral
part of its day-to-day operations.
Respondent contends that it has used and registered the domain name in
good faith. At the time of registration,
Respondent contends that it was not aware of Complainant or the CLEAR BLUE
marks. Respondent contends that it has
never attempted to sell the domain name at issue to Complainant, and that there
is no evidence that Respondent is using the domain name at issue primarily for
the purpose of transferring it to Complainant.
Respondent also contends that there is no evidence that Respondent even
knew about Complainant until this proceeding was filed, let alone that
Respondent registered the domain name at issue to keep Complainant from using
the domain name, or that Respondent has engaged in a pattern of such
activity. Respondent contends that
Complainant and Respondent are not competitors, with Complainant being public
relations and advertising company and with Respondent providing complex
technology solutions for major corporations.
Respondent contends that there is no evidence that the original
registrant of the domain name at issue knew about Complainant or that
Respondent knew about Complainant when Respondent acquired the domain name at
issue.
Respondent contends that the phrase “clear blue” is generic and that
there is no evidence that anyone would assert the domain name at issue with
Complainant to the exclusion of other hundreds of user of “clear blue” –
formative domain names.
Respondent contends that it is perfectly natural for Respondent to use
a domain name that corresponds with the names of the subsidiary entities that
operate a large portion of its business, and that it is not engaged in passive
holding of the domain name at issue as contended by Respondent.
Respondent supports these contentions by copies of: a revenue statement
from its 10-K filing; pages from Respondent’s web site accessed through <clearblue.com> or
<navisite.com>; pages from Complainant’s web site accessed through <clearblue.biz>;
an archive page from a ClearBlue Technologies web site dated March 29, 2002; a
press release relating to the change of name to ClearBlue Technologies; a WHOIS
record for the domain name at issue; a list of Respondent’s subsidiaries; a
compilation of government information relating to the change of names of
Respondent’s subsidiaries; an appeal brief filed by Complainant before the TTAB
of the USPTO; pages from third party web sites where the domain name being used
and the name of the party both include the phrase “clear blue;” an Internet
definition of “out of a clear blue sky;”
and, a report of “clear blue” – formative domain names registered in the
gTLDs .com, .net, and .org.
FINDINGS
All factual contentions of the parties are deemed admissible, relevant and material by the Panel under the provisions of paragraph 10(d) of the Rules, except as specifically noted below.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds
that Complainant has established trademark rights in the CLEAR BLUE marks
through introduction of the certificates for its
The Panel finds
that the domain name at issue is confusingly similar to the CLEAR BLUE
marks. First, the domain name at issue
is identical to those marks, except for addition of the generic and top-level
domain “.com.” See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc.,
D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"). Second, the services
being provided by Respondent at its web site include “content delivery
services” which are specifically included in the listing of services in Complainant’s
Although the domain name in dispute was first registered in 1996, four
years before Complainant’s alleged first use of the mark, the Panel finds that
Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶
4(a)(i). See AB Svenska Spel v.
Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the Policy
does not require a complainant to have registered its trademark prior to the
respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may
prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software
Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2,
2007) (holding that a complainant need not show that its rights in its mark
predate the respondent’s registration of the disputed domain name in order to
satisfy Policy ¶ 4(a)(i)). That point is
particularly apt here, where Respondent has failed to introduce any evidence as
to use of the domain name prior to the time when Respondent acquired the domain
name at issue after Complainant filed
its applications for
The Panel finds
that Complainant has failed to prove common law trademark rights in the CLEAR
BLUE marks. Complainant has introduced
no evidence whatsoever of trademark use, other than the unsupported contentions in its Complaint (as to services provided,
offices, advertisements, awards, recognitions, and sales). The only evidence of use comes from
Respondent, who has introduced a web page of Complainant’s showing trademark
use of the CLEAR BLUE marks in conjunction with advertising agency and public
relations services. Nonetheless, Complainant’s
The Panel thus finds that Complainant
has met its burden of proof under paragraph (a)(i) of the Policy.
Rights
or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and the burden then shifts to
Respondent to show it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb. Forum
Feb. 13, 2007) (finding that once a prima facie case has been
established by the complainant under Policy ¶ 4(c), the burden then shifts to
the respondent to demonstrate its rights or legitimate interests in the
disputed domain name); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent.”);
see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances that
would promote its rights or legitimate interests in the subject domain name
under Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has made such a prima facie case in its Complaint. Respondent has not been authorized by
Complainant to use the domain name at issue or the CLEAR BLUE marks. Respondent had notice of the dispute as of
the filing date of the applications for registrations of the CLEAR BLUE marks
in 2001, before its claimed first use in 2002.
Respondent is not now known by the domain name at issue, and Respondent
is using the domain name for commercial purposes.
Respondent counters this case by contending that
Complainant does not have prior rights in the CLEAR BLUE marks. The Panel has dismissed this contention, as
discussed above. See Digital Vision, Ltd. v. Advanced Chemill
Systems, D2001-0827 (WIPO Sept. 23, 2001); AB Svenska Spel v. Andrey Zacharov, D2003-0527
(WIPO Sept. 27, 2003); Iogen Corporation
v. Iogen, D2003-0544
(WIPO Oct. 2, 2003); Madrid 2012, S.A. v.
Scott Martin-MadridMan Websites, D2003-0598
(WIPO Oct. 8, 2003).
Respondent also contends that “clear blue” is a generic
term, and that Respondent has as much right to use the term as
Complainant. Complainant’s trademark
registrations, however, withdraw the term “clear blue” from the public domain,
insofar as the services that are covered by the registrations.
Respondent is clearly using the domain name at issue for
commercial purposes.
Thus, Respondent has not proved the circumstances of
paragraphs 4(c)(i) and 4(c)(iii) of the Policy.
Respondent’s best case for rights and legitimate interests
arises from its contentions of use of the domain name at issue in e-mail
addresses, in a URL redirecting to Respondent’s web site, and in the names of
its subsidiaries, leading to the conclusion that Respondent has been commonly
known by the domain name at issue.
Respondent’s evidence to support these contentions is lacking. The name of Respondent is NaviSite, Inc. Respondent has failed to submit evidence of
any e-mail addresses including “clear blue.”
The 60 private e-mail addresses subject to an offer of proof by
Respondent are not sufficient in any event to establish common knowledge of the
domain name. The mere existence of
corporate entities whose names include “clear blue” is immaterial without proof
that those entities are or have been engaged in the conduct of any trade or
business using the name. A single
archived web page using the domain name is insufficient to establish that
Respondent is commonly known by the domain name. A single URL that redirects users to
Respondent’s web site is also insufficient to establish that Respondent is commonly
known by the domain name. See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Thus, Respondent has not proved the circumstance of
paragraph 4(c)(ii).
The Panel finds that Complainant has met its burden of
proof under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy reads:
[T] he following circumstances, in particular
but without limitation, if found by the Panel to be present, shall be evidence
of the registration and use of a domain name in bad faith:
(i)
circumstances indicating that you have registered or
you have acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name; or
(ii)
you have registered the domain name in order to
prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that you have engaged in a pattern of
such conduct; or
(iii)
you have registered the domain name primarily for the
purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally
attempted to attract, for commercial gain, Internet users to your web site or
other on-line location, by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship, affiliation, or endorsement
of your web site or location or of a product or service on your web site or
location.
Complainant’s contentions regarding bad faith are assumptions and conclusions, without any supporting evidence. Complainant has not contended that Respondent is a trafficker in domain names as required by paragraphs 4(b)(i) and 4(b)(ii). The Panel particularly notes that although Respondent had knowledge of Complainant and its CLEAR BLUE marks, such knowledge does not rise to the level of the intent required for a finding of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). That finding could be made in this case if the CLEAR BLUE marks were indeed famous and widely used, but Complainant has made no showing of use whatsoever. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
The Panel finds that Complainant
has failed to carry its burden of proof under paragraph 4(a)(iii) of the
Policy.
Reverse
Domain Name Hijacking
Respondent contends that Complainant has
filed the Complaint in bad faith under paragraph 15(e) of the Rules. Moreover, the doctrine of reverse domain name
hijacking, has been recognized and applied in UDRP
proceedings. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that
the respondent's registration of the <aspengrove.com>
domain name two years before the complainant's incorporation justified a
reverse domain name hijacking ruling); see also NetDeposit,
Inc. v. NetDeposit.com, D2003-0365 (WIPO July 22, 2003) (finding reverse domain name hijacking
because “Respondent's domain name registration preceded the Complainant's
creation of its trademark rights”).
The Panel does not find reverse
domain hijacking to be present in this case.
Complainant has proved paragraphs 4(a)(i) and 4(ii) of the Policy, and
accordingly has proceeded in good faith.
See EU Property Portfolio Ltd. v. Salvia Corp., FA
873726 (Nat. Arb. Forum Feb. 7, 2007) (finding insufficient evidence to support
a finding of reverse domain name hijacking where the panel found that the
complainant had no obvious interest in obtaining the respondent’s domain name
for its own use and the complainant had raised some plausible arguments).
DECISION
Complainant not having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the COMPLAINT BE DISMISSED.
Bruce E. O’Connor, Panelist
Dated: March 5, 2007
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