Christopher Copeland v. Michael Silver
Claim Number: FA1312001533298
Complainant is Christopher Copeland (“Complainant”), represented by John M. Bray of Moreno & Bray Law Firm, Texas, USA. Respondent is Michael Silver (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insurance.pro>, registered with Encirca, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, Hector Ariel Manoff, Esq., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2013; the National Arbitration Forum received payment on December 11, 2013.
On Decemeber 6, 2013, Encirca, Inc. confirmed by e-mail to the National Arbitration Forum that the <insurance.pro> domain name is registered with Encirca, Inc. and that Respondent is the current registrant of the name. Encirca, Inc. has verified that Respondent is bound by the Encirca, Inc. 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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2014 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@insurance.pro. Also on December 17, 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 January 6, 2014.
Complainant attempted to file an untimely Additional Submission. The Forum found this item to be deficient, and it was not considered by the Panel.
On January 15, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, Hector Ariel Manoff, Esq., and James A. Carmody, Esq., (Chair) as Panelists.
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 name be transferred from Respondent to Complainant.
Complainant asserts the following:
Respondent asserts the following:
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
It appears to the Panel that the instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in another forum such as a court of mutual jurisdiction or before the USPTO. Respondent offers three arguments as to why the instant dispute is outside the scope of the UDRP. First, Respondent asserts that Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a gTLD that has not yet been officially launched by ICANN. Second, Respondent argues that there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013. Finally, Respondent asserts that there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services. Respondent concludes that substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and that the parties should determine the matter in another forum. The Panel agrees.
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 disputes. 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 Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). Therefore, the Panel opts to dismiss the instant Complaint because it finds that the determination of whether Complainant has rights in the INSURANCE.PRO mark, whether or not Complainant committed fraud on the USPTO and whether or not Complainant abandoned the INSURANCE.PRO mark must be established in another forum.
For an excellent discussion of this issue, see Courtney Love v. Brooke Barnett, FA944826 (Nat. Arb. Forum May 14, 2007):
The two parties present very different accounts of the facts, and use those accounts to support their claims for common law trademark rights in the disputed domain names. The written evidence submitted by the parties is inconclusive. 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.
Further, the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at:http://www.wipo.int/amc/en/processes/process1/report/index.html ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
Thus, according to the majority, 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 Panel unanimously concurs with this reasoning.
This controversy having been found not to be appropriately resolved within the mandate of the UDRP, the Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered Arbitrator
Hector Ariel Manoff, Esq.
James A. Carmody, Esq., Chair
(for the Panel)
Dated: January 31, 2014
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