International Watchman, Inc. v. Scott herz / Barton Watch Bands / Scott Herz
Claim Number: FA2009001911775
Complainant is International Watchman, Inc. (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, United States of America (“United States”). Respondent is Scott herz / Barton Watch Bands / Scott Herz (“Respondent”), represented by Liane H Rousseau of Dinsmore & Shohl LLP, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <natowatchband.com>, <natowatchbands.com>, and <natowatchstrap.com> (the “disputed domain names”), registered with eNom, LLC (the “Registrar”).
The undersigned certifies 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.
Darryl Wilson, David Sorkin, and Lynda M. Braun (Chair), as Panelists.
Complainant submitted a Complaint to the Forum electronically on September 10, 2020; the Forum received payment on September 10, 2020.
On September 10, 2020 the Registrar confirmed by e-mail to the Forum that the <natowatchband.com>, <natowatchbands.com>, and <natowatchstrap.com> disputed domain names are registered with eNom, LLC and that Respondent is the current registrant of the disputed domain names. The Registrar has verified that Respondent is bound by the eNom, LLC 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 September 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 2020 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, firstname.lastname@example.org, email@example.com. Also on September 18, 2020, 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 October 8, 2020.
On October 14, 2020, Complainant submitted a Supplement to the Complaint pursuant to Rule 7 of the Forum’s Supplemental Rules, arguing that the Panel should render a decision on the UDRP proceeding and not dismiss the Complaint as urged by Respondent in its Response.
On October 15, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Darryl Wilson, David Sorkin, and Lynda M. Braun (Chair) as Panelists.
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 disputed domain names be transferred from Respondent to Complainant.
Complainant designs, produces, and markets bands, straps, tools, cases and other watch-related products. Complainant asserts that it has rights in the NATO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,907,646, registered Jan. 18, 2011) (the “NATO Mark”).
Complainant argues that the disputed domain names are confusingly similar to the NATO Mark because they incorporate combine the Mark in its entirety with the dictionary terms “watch,” “band,” “bands,” and/or “strap.” Moreover, Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the domain names, is not authorized to use the NATO Mark, and does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Finally, Complainant maintains that Respondent registered and is using the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain.
Respondent contends that Complainant does not have rights in the NATO Mark since it is or has become generic, suggests a false connection with a well-known intergovernmental alliance, and was obtained through fraud. Moreover, Respondent has petitioned the USPTO to cancel Complainant’s NATO Mark and believes there is a high likelihood that it will prevail in the cancellation proceeding. Respondent also argues that the Panel should dismiss the Complaint pending resolution of the federal court proceedings that are ongoing in the United States District Court for the Northern District of Ohio (see below). Finally, Respondent argues that it has rights and legitimate interests in the disputed domain names and uses the disputed domain names in good faith.
For the reasons set forth below, the Panel finds that the Complaint should be dismissed without prejudice.
The parties have informed the Panel through their submissions that the following legal proceedings are either pending or suspended. The Panel finds that the proceedings address the same subject matter as the Complaint.
Int’l Watchman Inc. v. Barton Watchbands Holdco, LLC, et al.
United States District Court, Northern District of Ohio, Case No. 1:19-cv-02310 (trademark infringement lawsuit filed by Complainant against Respondent).
Barton Watchbands Holdco, LLC d/b/a Barton Watch Bands v. Int’l Watchman, Inc.
USPTO Trademark Trial and Appeal Board, Proceeding No. 92073789 (cancellation proceeding filed by Respondent against Complainant, arguing that the NATO Mark is or has become generic). This TTAB proceeding has been suspended pending the resolution of the above-referenced federal court action.
Watching Time, LLC v. Int’l Watchman, Inc.
USPTO Trademark Trial and Appeal Board, Proceeding No. 92067341 (cancellation proceeding filed by third party Watching Time, LLC against Complainant, arguing that the NATO Mark is or has become generic). This TTAB proceeding is pending.
Rule 18 of the Policy provides in pertinent part:
Effect of Court Proceedings
(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 that this matter should not be decided until the aforementioned court proceeding is resolved. See AmeriPlan Corp. v. Gilbert, FA 105737 (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.”).
Previous panels have also chosen to dismiss UDRP complaints when an action regarding the same subject matter was pending in federal court. See Enerflex Ltd. v. Ryan Garvey, FA2007001904623 (Forum Aug. 26, 2020); Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Martin Higgins / HARVEST, FA1901001823636 (Forum Feb. 26, 2019); Holley Performance Products, Inc. v. Tucows.com Co., FA1007001333239 (Forum Aug. 19, 2010); Sun Ray Chinese School, Inc. v. Hui Chiu / MEI HSU, FA1604001668860 (Forum May 16, 2016).
Therefore, the Panel concludes that the best course of action in the present proceeding is to defer to the United States District Court and dismiss the UDRP proceeding without prejudice of any filing of a future UDRP complaint as appropriate after the conclusion of the proceedings in the federal court.[i]
Pursuant to UDRP Rule 18(a), the Complaint of International Watchman, Inc. with respect to the disputed domain names <natowatchband.com>, <natowatchbands.com>, and <natowatchstrap.com> is hereby DISMISSED without prejudice.
Darryl Wilson, David Sorkin, and Lynda M. Braun (Chair), Panelists
Dated: October 21, 2020
[i] When the federal court action has concluded, the TTAB will decide whether to resume the cancellation proceeding filed by Respondent, continue the suspension, or dismiss it.
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