Hayter Limited v. Domain Admin / Tucows.com Co
Claim Number: FA1605001674172
Complainant is Hayter Limited (“Complainant”), represented by Linda M. Byrne of The Toro Company, Minnesota, USA. Respondent is Domain Admin / Tucows.com Co (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hayter.com>, registered with Tucows Domains Inc.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016.
On May 11, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hayter.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 May 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2016 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 email@example.com. Also on May 12, 2016, 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 May 30, 2016.
On June 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr . Katalin Szamosi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 argues that Respondent’s <hayter.com> domain name is identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that
· it holds a trademark registration for the HAYTER mark with the Office for Harmonization in the Internal Market (Registry No. 1393990, registered May 15, 2001);
· <hayter.com> domain name is identical to the HAYTER mark because it contains the entire mark, and is altered by only the addition of the generic top-level domain (“gTLD”) “.com.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· the WHOIS information for the disputed domain name does not show, and there is no further evidence on record showing, that the Respondent is commonly known by the disputed domain name;
· Respondent’s use of <hayter.com> domain name does not constitute a bona fide offering of goods or services.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent registered and used the disputed domain name in bad faith under both Policy ¶¶ 4(b)(iii) and (iv) because it resolves to a website that offers leasing services, which disrupts Complainant’s business while netting Respondent commercial gain.
Respondent asserts that the present UDRP was commenced on May 12, 2015, with a response due from the Respondent before June 1, 2016. On May 25, 2016, - prior to the submission of the response - Respondent filed a civil action against the Complainant in the Ontario Superior Court of Justice seeking a declaration that the Respondent’s use of the domain name at issue is non-infringing. Among the other relief sought in Respondents’ Statement of Claim, Respondent seeks a declaration that he has rights and legitimate interests in the domain name <hayter.com> and that he neither registered nor uses the domain name in bad faith.
Respondent argues that, the court in Ontario, Canada will address and resolve the same issues now before the Panel. Because the ruling of the Ontario court will take precedence over any ruling by this Panel, this Panel should exercise its discretion to suspend or terminate the administrative proceeding.
In the response and Request for Dismissal the Respondent attached a copy of the Complaint No. CV-16-553435 filed with the Ontario Superior Court of Justice.
Respondents firstly requests that the Panel dismiss or suspend the current proceeding under UDRP Rule 18(a), until such time as a final judgment is issued in the pending Ontario litigation.
Additionally Respondent argues that its <hayter.com> domain name is not identical or confusingly similar to Complainant’s mark, in support of this Respondent asserts that
· “Hayter” is a common surname without distinctive character;
· his use of the disputed domain is separate from Complainant’s use of the HAYTER mark to offer lawnmowers, and therefore its use of the disputed domain name is not confusingly similar.
Furthermore Respondent argues that he has rights and legitimate interests in the disputed domain name. In support of this Respondent asserts that
· he and his predecessors have used the disputed domain name for surname-based email, which is legitimate and non-infringing;
· a domain name that is identical to a user’s surname is a legitimate use of a name;
· he provides sub-domain names to its customers which allows them to have personalized emails.
Respondent also argues that he did not register and does not use the disputed domain names in bad faith. In support of this Respondent contends that
· he operates in a different context/industry than the leasing context in which Respondent operates;
· HAYTER name is a common surname therefore they had no knowledge of any rights Complainant asserts in the mark.
For the reasons set forth below, the Panel finds that the Complaint should be dismissed without prejudice.
Rule 18 of the Policy provides that:
“[…] (a) 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[…]”
Applying Rule 18, the Panel finds this matter should not be decided until the court proceeding is resolved. See AmeriPlan Corp. v. Gilbert FA105737 (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 as here, a decision regarding the domain name will have no practical consequence.”).
Accordingly, the Panel orders that the Complaint is DISMISSED without prejudice to Complainant bringing a further proceeding in the event the pending court action does not resolve the dispute over the domain name
Dr. Katalin Szamosi, Panelist
Dated: June 21, 2016
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